Complainant is Société Des Produits Nestlé S.A. (“Complainant”), a corporation with a principal place of business located in Vevey, Switzerland.
Respondent is Abdool Gafoor (“Respondent”), an individual residing in Scarborough, Ontario, Canada.
2. The Domain Name and Registrar
The domain name at issue is <nestle.tv> (the “Domain Name”). The registrar is Schlund + Partner AG (the “Registrar”), located in Karlsruhe, Germany.
3. Procedural History
On December 19, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On December 23, 2008, the Center received the hardcopy of the Complaint.
On December 23, 2008, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Name is registered in Respondent's name.
On December 25, 2008, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On January 5, 2009, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
Between January 5 and 12, 2009, the Center received a series of emails from Respondent which appear to be intended as a Response to the Complaint.
On January 26, 2009, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.
4. Factual Background
Complainant is a Swiss limited liability company, founded in 1866 by Henri Nestlé. Complainant sells products and services all over the world in various industries, more in particular in the food industry, including baby foods, breakfast cereals, chocolate and confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services; furthermore, Complainant is active in the pharmaceutical and the pet-care industry.
Complainant is the owner of a broad range of trademark registrations worldwide for NESTLÉ, alone or in combination with other word and/or device elements. NESTLÉ has been in use as a trademark for Complainant for more than one hundred years. Complainant is the owner of the over 100,000 international and national trademark registrations worldwide including the consistent use of the term “Nestle” (the “NESTLÉ Mark”).
The company has over 276,000 employees and commercializes its products in 130 countries throughout the world.
In Canada, NESTLÉ products have a well established presence. Canadians first saw the NESTLÉ name on canned milk products imported from Europe in 1887. The manufacturing of NESTLÉ products began in Canada in 1918 with the purchase of a small milk factory in Chesterville, Province of Ontario. Four years later, the company was incorporated as Nestlé's Food Company of Canada Limited. Today, Nestlé Canada Inc. employs approximately 3,500 people in 21 manufacturing, sales and distribution sites across the country. It is a wholly-owned subsidiary of Nestlé S.A. and its annual Canadian sales in 2007 were approximately CAD2.1 billion.
Complainant has registered the word “nestle” in domain names under several different TLDs. The list of domain names registered by Complainant and its subsidiaries includes, without limitation, <nestle.com>, <nestle.org>, <nestle.info>, <nestle.mobi> and <nestle.ca>. A comprehensive list limited to some identical registrations shows that Complainant has registered over 5000 domain names. Complainant's websites “www.nestle.com” and “www.nestle.ca” are both generating a substantial number of visits by Internet users.
Complainant has made significant investments in R&D (research and development). The amount of such research amounts to approximately CHF1.5 billion each year in research, marketing and sales and has regularly used the NESTLÉ Mark for over 140 years.
Respondent registered the Domain Name on October 5, 2007, without authorization of Complainant. Respondent is currently hosting an active webpage, which among other statements offers the Domain Name <nestle.tv> for sale at the price of USD50,000.
5. Parties' Contentions
A. Complainant's contentions
(i) Complainant contends that it has numerous worldwide registrations of the NESTLÉ Mark. Complainant further contends that the NESTLÉ Mark is a famous trademark enjoying a worldwide reputation and goodwill, identifying one of the leading manufacturers, among other things, of food products.
(ii) Complainant argues that the Domain Name is identical or confusingly similar to the NESTLÉ Mark, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the term “Nestle” with only the addition of the non-distinctive extension “.tv”. Complainant continues that the Domain Name <nestle.tv> is therefore identical (as the addition of the top level “.tv” is merely instrumental to the use in Internet) to the registered trademark in which Complainant has rights. Complainant cites Carlsberg A/S v. Brand Live Television,
WIPO Case No. DTV2008-0003; Hugo Boss A.G. v. Abilio Castro,
WIPO Case No. DTV2008-0001, to demonstrate that the Domain Name <nestle.tv > is identical to the prior registered trademarks in which Complainant has rights, according to paragraph 4(a)(i) of the Policy, since the top level “.tv” is merely instrumental to the use in Internet and top level domain names lack distinctive character and cannot be considered elements capable of reducing confusing similarity between a trademark and a second level domain name when these are identical.
(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that the Domain Name <nestle.tv> (after the cease and desist letter) was pointed to an active webpage containing - besides some imaginative allegations and a surreal disclaimer based on the coincidental generic meaning of the NESTLÉ Mark with a dictionary word - an open offer for sale of the disputed domain name at the price of US$50,000.
Complainant further contends that as soon as it became aware of such a registration of the Domain Name identical to its registered and well-known NESTLÉ Mark, a strategy to reclaim the Domain Name was planned. Since the pages published on the website to which the Domain Name resolved at the time were different from the above, Complainant instructed a web agency to confidentially contact the Domain Name holder in order to ascertain the real intention of Respondent. The Domain Name <nestle.tv> was in fact redirected to the website of “Red Lion Television” (www.gtrl.tv), related to a domain name also owned by Respondent.
Besides the various commercial banners to which reference is made hereinafter, this website is also linked – by clicking on the “about us” section - to “www.mainlandgate.com”, related to another domain name of Respondent offering for sale different products and services and that depict Respondent as a “businessman of the beauty industry”. Therefore, an email was sent on August 6, 2008, by the web agency requesting from Respondent which project was related to the Domain Name and the possible availability and conditions to assign the Domain Name to the web agency. Respondent answered to this email on the same day, requesting a “decent” offer in order to purchase the Domain Name <nestle.tv>.
Complainant alleges that Respondent sent another email to the web agency on August 7, 2008, requesting USD14,000 for the Domain Name, not only indicating another email through which to address future correspondence, which is different from that one used for the WhoIs Registry, but also reiterating the offer of other “great names” for sale. On August 8, 2008, the web agency offered the reimbursement of the out-of-pocket costs directly related to the Domain Name in an amount of about €300. To such an email Respondent replied on the same day, again clearly indicating that an amount equivalent to the out-of-pocket costs was not sufficient and also mentioning the alleged plan to develop the Domain Name into a pornographic site later that year.
Complainant further alleges that in light of the fact that the intentions of Respondent as to the Domain Name clearly emerged from the initial exchange of communications, Complainant instructed its legal representative to draft and send to the domain name holder a cease and desist letter dated September 10, 2008. Such letter was addressed to the known address of Respondent, indicated in the WhoIs Registry, via email and registered mail, requesting that Respondent transfer the Domain Name. Respondent replied to the cease and desist letter on the same day, stating, inter alia, that the <nestle.tv> Domain Name was for sale at the price of USD14,000 and that the price could go much higher if the matter received a lot of media coverage during a possible court procedure.
Complainant contends that, based upon the circumstances stated above, Respondent has not offered any bona fide or legitimate goods and services. Therefore, Respondent cannot meet the criteria for rights or legitimate interests set forth under Paragraph 4(c)(i) of the Policy.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the NESTLÉ Mark in a domain name or in any other manner.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because Respondent is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.
Complainant points to further evidence that the actions of Respondent are not bona fide or legitimate. Complainant alleges the redirection of the Domain Name to another website managed by Respondent (www.gtrl.tv), with a number of commercial banners (including an advertising of a car dealer and a food shop) and a link to another website of Respondent (“www.mainlandgate.com”), where Respondent's activities and profile were advertised and products offered for sale was far from being a noncommercial or fair use of the Domain Name, without intent for commercial gain. Such willful conduct clearly shows that Respondent was and is not interested in using the Domain Name in connection with any legitimate purpose and clearly confirms Respondent's main intention to misleadingly divert consumers, tarnish Complainant's trademark and also offer the Domain Name for sale.
Complainant alleges that Respondent has deliberately registered the Domain Name containing the NESTLÉ Mark with the intent to derive commercial gain and to attract the attention of Internet users searching for Nestlé products.
(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Complainant relies in part upon the allegations set forth above that the actions of Respondent are not bona fide or legitimate business practices.
In addition, Complainant alleges that, in light of the distinctiveness of Complainant's NESTLÉ Mark and the fact that the NESTLÉ Mark is certainly well-known, Respondent obviously chose the Domain Name with the intention to sell to the legitimate owner and to take advantage of the distinctive character of the NESTLÉ Mark.
Complainant argues that Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to Complainant or one of its competitors for valuable consideration in excess of the registrant's out-of-pocket costs.
Complainant further argues that Paragraph 4(b)(i) of the Policy supports a conclusion of bad faith if Complainant has shown:
…circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
Complainant further alleges violations of Paragraphs 4(b)(ii) and (iii) based upon the facts set forth above.
B. Respondent's contentions
While Respondent has not filed a formal Response, he did submit a series of emails to the Center between January 5 and 12, 2009. The Panel finds that the arguments presented by Respondent (without the aid of legal counsel) were articulate and logically consistent. The content of these emails has been considered by the Panel as though it constituted a formal Response to the Complaint.
(i) Respondent does not dispute that Complainant has registrations of the NESTLÉ Mark.
(ii) Respondent asserts that the Domain Name is not identical or confusingly similar to the NESTLÉ Mark because the Domain Name is for “nestle” and not “nestlé”. Respondent argues that “nestle” is an English word listed in the Oxford English Dictionary, and its meaning is “to snuggle” or “to cuddle”. It is just a coincidence that his Domain Name is spelt the same way as Complainant's NESTLÉ Mark. “Nestle” is not a unique word, such as “Nissan” or “Toyota”, that was made up by Complainant. Respondent further argues that no one can have rights to a word that is part of the English vocabulary.
Respondent also argues that Complainant's trade name is not just “Nestle”, but NESTLÉ with an accent over the “E”, and it is pronounces as “nestlee”, but because there is no character to represent an accent over a letter in our current computing system, the word “nestle” without the accent over the “E” tends to be chosen.
Furthermore, Respondent is not into food manufacturing as Complainant, nor is Respondent impersonating Complainant. Respondent's business is web designing and hosting.
In addition, Respondent points out that there are numerous other domain names not owned by Complainant that use the word “nestle” and have not been acknowledged in the Complaint.
Finally, Respondent asserts that Complaintant has exerted undue influence over the Center.
(iii) Respondent does not specifically argue that he has specific rights and legitimate interests as set forth in paragraphs 4(c)(i)-(iii) of the Policy. Respondent does rely on the generalized statements of its intent as set forth in the emails described above.
(iv) Respondent implicitly denies that he registered or used the Domain Name in bad faith. While Respondent does not specifically argue against the provisions of paragraphs 4(b)(i)-(iv) of the Policy, he does assert his general intent that he never intended to harm or damage the rights of Complainant in the NESTLÉ Mark.
Respondent implicitly argues that there is no evidence of bad faith based on paragraphs 4(b)(i)-(iv) of the Policy because Respondent lacks the intent to injure Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent has indicated that he is willing to negotiate with Complainant to resolve the claims set forth in this proceeding. The Panel is not authorized to act as a facilitator or mediator of such claims. Therefore, the Panel will proceed to rule on the issues set forth in this arbitration.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has numerous worldwide registrations of the NESTLÉ Mark. Complainant further contends that the NESTLÉ Mark is a famous trademark enjoying a worldwide reputation and goodwill, identifying one of the leading manufacturers, among other things, of food products.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
Respondent has not contested the assertions by Complainant that it has valid registrations of the NESTLÉ Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the NESTLÉ Mark.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to the NESTLÉ Mark pursuant to paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the term “Nestle” with only the addition of the non-distinctive extension “.tv”. Complainant continues that the Domain Name <nestle.tv> is therefore identical (as the addition of the top level “.tv” is merely instrumental to the use in Internet) to the registered trademark in which Complainant has rights. Complainant cites Carlsberg A/S v. Brand Live Television,
WIPO Case No. DTV2008-0003; Hugo Boss A.G. v. Abilio Castro,
WIPO Case No. DTV2008-0001, to demonstrate that the Domain Name <nestle.tv > is identical to the prior registered trademarks in which Complainant has rights, according to paragraph 4(a)(i) of the Policy, since the top level “.tv” is merely instrumental to the use in Internet and top level domain names lack distinctive character and cannot be considered elements capable of reducing confusing similarity between a trademark and a second level domain name when these are identical.
Respondent asserts that the Domain Name is not identical or confusingly similar to the NESTLÉ Mark because the Domain Name is for “nestle” and not “nestlé”. Respondent argues that “nestle” is an English word listed in the Oxford English Dictionary, and its meaning is “to snuggle” or “to cuddle”. It is just a coincidence that his Domain Name is spelt the same way as Complainant's NESTLÉ Mark. “Nestle” is not a unique word, such as “Nissan” or “Toyota”, that was made up by Complainant. Respondent further argues that no one can have rights to a word that is part of the English vocabulary.
Respondent also argues that Complainant's trade name is not just “Nestle”, but “Nestlé” with an accent over the “E”, and it is pronounces as “nestlee”, but because there is no character to represent an accent over a letter in our current computing system, the word “nestle”without the accent over the “E” tends to be chosen. In addition, Respondent argues he is not into food manufacturing as Complainant, nor is Respondent impersonating Complainant. Respondent's business is web designing and hosting. Respondent points out that there are numerous other domain names not owned by Complainant that use the word “nestle” and have not been acknowledged in the Complaint. Finally, Respondent asserts that Complaint has exerted undue influence over the Center.
Respondent has presented a coherent argument that his use of the word “nestle” is coincidental and not intended to, or in fact does, interfere with Complainant's trademark rights.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
The Panel finds that while Respondent has presented a coherent argument, the argument is not supported by the weight of the evidence in this proceeding. Especially the email correspondence between Complainant's web agency and Respondent regarding sale of the Domain Name weighs in favor of Complainant. The Panel further notes that the entirety of the NESTLÉ Mark is included in the Domain Name. Finally, the Panel finds no evidence of undue influence by Complainant over the Center.
Therefore, the Panel finds that the Domain Name is confusingly similar to the NESTLÉ Mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii). Complainant alleges numerous facts (as set forth above) that Respondent is not engaging in legitimate business practices and has no rights or legitimate interest in the Domain Name.
Respondent indirectly asserts that he has specific rights and legitimate interests as set for in paragraphs 4(a)(i)-(iii) of the Policy. Respondent relies upon the generalized statements of is intent as set forth in the emails described above.
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270 (WIPO June 6, 2000).
The facts prove that Respondent has no relationship with or permission from Complainant for the use of the NESTLÉ Mark.
The Policy paragraph 4(c) provides three nonexclusive examples from which the Panel may conclude that Respondent has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has sustained its burden of proving that Respondent lacks rights to or legitimate interests in the Domain Name. Although Respondent asserts that the Domain Name is being used for commercial activity unrelated to Complainant's business, Respondent has failed to come forward with sufficient evidence of use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of such services.
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). Complainant relies in part upon the allegations set forth above that the actions of Respondent are not bona fide or legitimate business practices.
Complainant alleges that Respondent's action meet the criteria for bad faith set forth in paragraphs 4(b)(i)-(iii) of the Policy.
Respondent implicitly denies that he registered or used the Domain Name in bad faith. While Respondent does not specifically argue against the provisions of paragraphs 4(b)(i)-(iii) of the Policy, he does assert his general intent that he never intended to harm or damage the rights of Complainant in the NESTLÉ Mark.
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product
Without making any finding regarding the other potential bases for bad faith, the Panel finds that the evidence presented by Complainant is sufficient to meet the criteria of paragraph 4(b)(i) of the Policy. Therefore, the Panel finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Domain Name <nestle.tv> is identical with or confusingly similar to Complainant's registered NESTLÉ Mark; (b) that Respondent has no rights or legitimate interest in the Domain Name; and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Richard W. Page Sole Panelist
Dated: February 15, 2009
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