WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A v. Matthew Harper
Case No. D2001-0278
1. The Parties
The Complainant in these administrative proceedings is Société des Produits Nestlé S.A., a company incorporated under the laws of Switzerland and registered in the Commercial Register in CH-1800 Vevey, Switzerland, whose head office and principal place of business is also located in Vevey, Switzerland.
The Respondent in these administrative proceedings is Mr. Matthew Harper, 32 Boyd Court, Bracknell, Berks RG42 1 PX, England.
2. The Domain Name and Registrar
The Domain Name at issue is . The registrar with which the domain name registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA. ("the Registrar").
3. Procedural History
On February 22, 2001 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and the hard copy was received on February 23, 2001.
On February 27, 2001 the Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail.
On February 27, 2001 the Center sent a request for Register Verification to the Registrar. On March 5, 2001 the Registrar responded to the Center by e-mail and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name , confirmed that the Respondent was at that time the registrant of the said domain name, provided contact details for the Respondent including the administrative contact, the technical contact and the billing contact for the said domain name, and confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration and that the said registration had "active" status.
The Center reviewed the Complaint and was satisfied that the Complainant as amended complied with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On March 8, 2001 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on March 8, 2001 and that the Respondent was required to submit a Response to the Center on or before March 27, 2001.
On March 29, 2001 the Center received an e-mail from the Respondent, details of which are discussed infra, inter alia requesting the Administrative Panel to suspend or postpone the decision in these Administrative Proceedings.
On March 29, 2001 as no Response had been filed by the Respondent, the Center sent a Notification of Respondent Default to the Respondent by post/courier and email. A copy of said Notification was at the same time sent to the Complainant.
On April 4, 2001 the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On April 6, 2001 having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member. On the same date, the case file was transferred to the Administrative Panel.
In the view of this Administrative Panel, the proper procedures were followed and the panel was properly constituted.
On April 6, 2001 the authorised representatives of the Complainant sent an e-mail directly to this Administrative Panel. As this communication was in breach of paragraph 8 of the Rules and this Administrative Panel did not consider this communication.
On April 20, 2001, having considered the Complaint and the Response and having ascertained that there was a significant conflict between the submissions and the evidence submitted by the Complainant on the one hand and the statements made by the Respondent in his said e-mail to the Center on March 29, 2001, this Administrative Panel issued a Procedural Order, pursuant to Rule 12 of the Rules directing that the Complainant furnish to the Center for consideration by this Administrative Panel, print-outs of all original e-mails received by the Complainant, its servants or agents from the Respondent; that the Respondent furnish to the Center for consideration by this Administrative Panel certain documentation referred to in the Respondent's e-mail of March 29, 2001 relating to legal action allegedly taken by the Complainant. Each Party was given seven (7) days to submit the aforesaid documentation to the Center. Each Party was further directed to send copies of the said documentation by recorded delivery to the other Party. Additionally each Party was given liberty to furnish further written submissions limited strictly to the content of the aforesaid documentation within five (5) days of receipt of the said documentation.
On April 25, 2001 the authorised representatives of the Complainant furnished the additional documentation as directed. The Respondent failed to furnish the documentation within the deadline. The Respondent, however, submitted two e-mails, on April 28 2001 and May 15, 2001 respectively. According to paragraph 14 (a) of the Rules, unless there are exceptional circumstances, late filings shall not be considered by the Administrative Panel.This Administrative Panel did not consider the said e-mails from the Respondent.
4. Factual Background
The Complainant is the owner of a number of trademark registrations worldwide for the trademarks and , alone or in combination with other word and/or device elements.
The trademark originated as an element of the company name H.I. Rowntree & Co, which was established as early as 1869 and the trademark was first registered in the United Kingdom by the predecessor in title to the Complainant on
January 23, 1908 under No. 299.838.
The core class of goods for which said trademarks are registered is Class 30 in respect of confectionery. Since the 1870's, the trademark has been used continuously in the United Kingdom for confectionery products.
A subsidiary of the Complainant operates a www site accessible via the domain name . This is a promotional www site which is particularly designed to attract possible customers of the Complainant's confectionery products. The www site allows individuals to participate in a computer-game designed as "A Search for The Rowntree" The winners of the game, i.e. those which obtain the highest scores when playing, receive a backpack full of confectionery products.
The Respondent registered the said domain name on
February 1, 2000. In the absence of any Response in these Administrative Proceedings, there is very little further information available regarding the Respondent, except for the registration details on the Registrar's database containing the Respondent's name and address and the technical, administrative and billing contact for the domain name registration.
5. Parties� Contentions
A. Complainant
The Complainant has submitted a detailed list of all current trademark registrations and applications for said trademarks and alone or in combination with other word and/or device elements, owned by the Complainant.
The Complainant has further provided copies of UK trademark registration and renewal certificates in respect of the said trademarks including evidence of that the said trademark was first registered on 23rd January 1908 as registration number 299.838.
The Complainant submits that the said trademark has been used continuously for confectionery and related goods in the United Kingdom since the 1870's.. It has also been used in many other countries, and given the English origin of the company, the trademarks have been used most extensively in the Commonwealth countries. The Complainant submits that the Complainant's said trademarks have become extremely well-known in the United Kingdom, and in certain other jurisdictions due to this extremely long and extensive use.
The Complainant submits that it is the parent company of Rowntree PLC, having acquired said Rowntree PLC on 25 June 1988. The Complainant states that the said trademarks are commercialised by a division of Nestlé UK Ltd., the UK affiliate and licensee of the Complainant. In support of its claims to such long established use by itself and its predecessors in title, the Complainant has submitted a number of documents outlining the history of the brand of confectionery.
The Complainant submits that its said subsidiary Nestlé UK Ltd operates a www site under the domain name . This is a promotional www site which is particularly designed to attract possible customers of the Complainant's confectionery products. The Complainant states that the said www site allows individuals to participate freely in a computer-game entitled "A Search for The Rowntree". The winners of the game, i.e. those which obtain the highest scores when playing, receive a backpack full of the Complainant's brand confectionery products.
The Complainant submits that this has become a very popular game, in particular among children. The Complainant submits that this www site has become extremely well known and frequently visited, having been promoted by television advertising and in the months of December 2000 and January 2001, the said www site, logged 22,923 and 26,269 visitor sessions respectively "whilst by the end of December 2001 (sic) over 7,000 visitors had registered to play the game." [It should be stated here that this Administrative Panel has interpreted this as a reference to the year 2000].
In support of its claim that the said domain name is identical or confusingly similar to the Complainants trademark, the Complainant submits that the absence of an apostrophe in the domain name does not make any relevant difference. Neither is the apostrophe noticed at all by the public at large, nor does it result in a phonetic difference, nor can an apostrophe be part of a domain name. The domain name is essentially identical with the Complainant's trademarks and .
The Complainant submits that the Respondent has no rights or legitimate interests in the said domain name. In support of this assertion, the Complainant submits that because the said trademark is so well known in the United Kingdom, the Respondent has always been aware that the domain name corresponds to the Complainant's trademark. The Complainant further submits that the Respondent has admitted in his e-mail correspondence (infra) that he acquired the said domain name because of the nuisance value which it could have to the Complainant should it fall into the wrong hands.
Finally the Complainant submits that the said domain name was registered and is being used in bad faith.
The Complainant submits that the domain name is linked to a www site at the domain name . The Complainant states that this is a www site containing a section enlisting various domain name registrations which are for sale. The Complainant has submitted that the said domain name domain is being explicitly offered on this site and in support of this claim the Complainant has furnished this Administrative Panel with a print-out of part of this www site which contained the text: "If you are interested in any of the domain names then please call Mr. Harper on ..."
The Complainant submits that on June 26, 2000, the Respondent sent an e-mail to the said www site. The e-mail was addressed to "Professor Peel", the comic character of the said computer-game "A Search for the Rowntree",. It was received by Pilot Interactive Limited, the company which was engaged by Nestlé UK Ltd to design and operate the www site on its behalf. In this e-mail, a copy of which has been furnished to this Administrative Panel, the Complainant submits that the Respondent offered to "sell" the said domain name. In the said e-mail the Respondent claimed to have "merely saved the name from being bought by unscrupulous people outside England who wanted to auction off to the highest bidder�Please let me know how I can help you and how you can help me and my family."
Having duly consulted with Nestlé UK Ltd, Pilot Interactive Limited requested more information from the Respondent but did not enter into any negotiation about the acquisition of the said domain name and the Complainant states that nothing further happened until January 29, 2001.
The Complainant submits that on January 29, 2001, Respondent again sent an e-mail to Pilot Interactive Limited regarding the said domain name . The Complainant has furnished this Administrative Panel with a copy of this e-mail. In this e-mail, the Complainant submits that the Respondent urged Pilot Interactive Limited to acquire the domain name on behalf of the Complainant. The Complainant submits that the Respondent openly threatened that unless the Complainant agreed to enter into negotiations, the Respondent would place a variety of advertising banners on this site, "some of which may not be suitable for younger children to look at" because of their "adult content". The Complainant submits that in this e-mail the Respondent effectively threatened to transform the www site accessible via the domain name into a pornographic site.
The Complainant submits that these threats by the Respondent are all the more menacing in that the Respondent claims that he has tens of thousands hits on his site, evidently by people who are looking for the www site displaying Nestlé UK's promotional game "A Search for the Rowntree" but erroneously assuming that this is located on a www site accessible via the said domain name . The Complainant submits that further pressure is exercised by the Respondent by saying that unless the Complainant responds to his "offer" to sell the domain name, his "only other option would be to sell it to XXX (pornographic) websites who have been offering (him) a lot of money."
The Complainant submits that at the end of his said e-mail of January 29 2001, the Respondent demonstrates unabashed cynicism by purporting to condemn as "morally wrong" any internet practices by which young audiences are misled to sites displaying pornographic content.
The Complainant states that in his e-mails, the Respondent has admitted to have acquired the domain name because of the nuisance value which it could have to the Complainant should it fall into wrong hands. From very start, the Respondent has been aware of the identity or "quasi-identity" between the disputed domain name and the well-known trademark , whose notoriety has further grown thanks to the promotional computer-game to be found on the www site .
The Complainant further submits that the Respondent's e-mail communications demonstrate very clearly that his sole purpose for registering the domain name has been and remains to use it as a means of extortion against Complainant. He is aware that Complainant's www site enjoys great popularity among many consumers of confectionery and, in particular, among young people. He recognizes that any threat to "pollute" the www site with pornographic banners and the like could affect Complainant's goodwill and reputation very negatively and indeed cause an irreparable damage to the Complainant's trademarks. He sees, therefore, that the Complainant must be extremely concerned about this risk. The situation can only be described as pure extortion. The Complainant submits that this "is a typical case of domain name squatting, but much worse than most cases, as it is combined with a threat to harm Complainant unless Complainant agrees to pay an yet unspecified sum to Respondent."
The Complainant submits that the registration and use of the said domain name by the Respondent is merely intended to extort from the Complainant by threatening to disrupt the business of Complainant unless the Complainant buys the said domain name.
The Complainant furnished a number of print-outs of e-mails received from the Respondent in support of these claims.
B. Respondent
Although the Respondent has not filed a Response, he has sent an e-mail to the Center requesting that these Administrative Proceedings be suspended or postponed pending the outcome of legal proceedings in the United Kingdom.
The essential points made in this e-mail are that the Respondent had withdrawn a Response to these Administrative Proceedings on the advice of his solicitor. He was awaiting a further consultation with his solicitor and in the meantime he was not in a position to respond fully in these Administrative Proceedings.
The said e-mail inter alia contains the following statement:
"I must confirm however, that I never have or threatened to put ANY pornographic material on ANY website that uses the domain name IN ANY WAY. The information supplied to you by the complainant is not the truth and has been deliberately taken out of context and 'twisted' completely out of proportion to benefit their case in this dispute.
I can also confirm that I have NOT blackmailed the complainant or tried to extort money from them in anyway shape or form.
I must bring it to the URGENT attention of the Administrative Panel (based on the panelists designated by the Complainant) that the information the complainant supplied to you, is indeed incorrect and completely out of context. The complainant HAS taken severe legal action against me, (which they say they haven't BUT this CAN be proved with full legal documentation) and I had to withdraw my initial reply to the Administrative Panel because of this."
6. Discussion and Findings
In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and(iii) the said domain name has been registered and is being used in bad faith.The Complainant has established that it is the owner of numerous registered trademarks for the word dating back to a United Kingdom registration on January 23, 1908.It is clear that the domain name is identical or confusingly similar to the Complainant's trademark and the Complainant has in the view of this Administrative Panel succeeded in establishing the first element of the test in paragraph 4(a) of the Policy. In reaching this conclusion this Administrative Panel accepts the Complainant's submission that the absence of the apostrophe in the domain name is not significant.Furthermore this Administrative Panel is satisfied that the Complainant has satisfied the second element in the test and that the Respondent has no right or legitimate interest in the said domain name.The Complainant has furnished prima facie evidence that the Respondent contacted the Respondent by e-mail at the address professorpeel@ on June 24, 2000. The said e-mail was sent from the Respondent's e-mail address but signed "Joshua". It stated inter alia: " Hello Professor Peel, Can you put me in touch with your marketing department as I have a journey that will benefit your company - www.. I am not looking to try and make a fortune from your company - I merely saved the name from being bough by unscrupulous people outside England who wanted to auction off to the highest bidder. Please let me know how I can help you and how you can help me and my new family - . Thank you for your time. I hope we can talk sensibly in the near future. Joshua." It is clear that the Respondent was aware of the Complainant's rights and interests in the trademark when he registered the said domain name and his abovementioned statements in the view of this Administrative Panel are effectively an admission that his reason for registering the said domain name was not based on any rights or legitimate interest of his own. It is implicit that the Respondent claimed to have registered said domain name to protect the Complainant's rights and reputation. As it appears from the subsequent e-mail correspondence, this was not true and in fact the Respondent threatened to carry out rather "unscrupulous" actions himself.This Administrative Panel is further satisfied that the Complaint has established that the said domain name was registered and is being used in bad faith.The Complainant has submitted that the Respondent has registered and is using the said name for the purposes of extortion. This Administrative Panel is only concerned with the question of whether the Respondent acted in bad faith in registering and using the domain name. The Complainant has furnished prima facie evidence of the e-mail message sent by the Respondent to the representative of the Complainant on January 29, 2001 and this Administrative Panel is satisfied that this piece of correspondence establishes that the Respondent registered and is using said domain name in bad faith. The subject line on the message stated "RE: R" and the significant parts of the message read as follows:"Hello David, If you can remember - we had a chat a while ago now about the above domain name.As you are probably aware - Rowntrees have greatly increased their advertising strategy.You would probably be able to tell this from your site 'hit counter' or whatever web trends or monitoring system you use on your site.On the same note - I can tell you that I have had tens of thousands of hits on my site as well !! - Along with many phone calls with people asking me questions I cannot answer. This surprised me - as your adverts on TV clearly show a . suffix - BUT the people I have spoken to say they can only remember the 'name' Rowntrees and guess at it as a .com whilst under the impression that you are a multi-national company. (and of course .com is much easier to remember than .). I appreciated your help - last time we spoke - but would feel it is in your employer's best interest to now acquire this domain name from me - to make the most of their marketing budget. Unfortunately, they turned down my reasonable offer and said I can keep it.In the mean time whilst they think about it - I am now forced to place a variety of advertising banners on my site - some of which may not be suitable for younger children to look at. Unfortunately I have recently been made redundant through long-term illness and am now looking for as many ways as possible to support my family - as the only breadwinner in the house. My condition has deteriorated since we last spoke and I am now unable to look after our 1 year old son, which means my partner can no longer work., herself.Whilst I did make you and your employers a very fair offer - last time for this domain name - I was in a much more comfortable financial position, Now this of course has changed dramatically.Please mail me back ASAP after talking to your employers (if you don�t mind) as the banners (some with Adult Content0 will be up in a couple of days. I am very sorry to take up your time again by offering this domain name to you for the 2nd time (for a mutually agreed price) but look forward to your urgent reply. This only other option would be to sell it to the XXX (pornographic) websites who have been offering me a lot of money - via auction sites - so they can acquire a lot of 'traffic' for themselves by using your name. I myself, feel that it would be morally wrong to have thousands of children across the UK seeing your TV advert and then ending up on some 'pretty disgusting' and 'perverted' WebPages full of pornographic ads and bestiality - But at the end of the day I must think of my children and partners health and security.Please understand that I am not trying to blackmail you or your employer -but am hoping to come to some mutual arrangement - so as not to subject young minds to some of the heinous filth on the Internet AND support my family in our greatest time of need. Many thanks and kind Regards, Mr M. Harper". The Respondent did not file a Response in these Administrative Proceedings but he did make a number of assertions in his e-mail to the Center and there was a number of points of conflict between the allegations of the Complainant in the Complaint and the allegations and denials of the Respondent in this e-mail.The first of these conflicts was the Respondent's assertion that he has never posted nor has he threatened to post any pornographic material on any www site that uses the said domain name whereas the Complainant had submitted evidence to the effect that the Respondent had threatened to put a number of advertising banners on the www site "some of which may not be suitable for younger children to look at because of their "adult content". To clarify these conflicts, in the interests of fair procedures this Administrative Panel sought further statements and documents in accordance with paragraph 12 of the Rules. Following consideration of the submissions and the documents furnished, this Administrative Panel is satisfied that while there is no evidence that the Respondent posted pornographic material on his www site, the Complainant has established that he did threaten to put "adult content" which "may not be suitable for young children" on his www site. Furthermore while there is no evidence that the Respondent threatened to post pornographic material on the www site himself, the Complainant has established that the Respondent has threatened to sell the domain name to "the xxx pornographic websites".The second point which needed clarification was the Respondent's allegation that the Complainant had initiated proceedings in the United Kingdom against the Respondent. The Respondent stated as follows in his said e-mail to the Center:
" I must bring it to the URGENT attention of the Administrative Panel (based on the panelists designated by the Complainant) that the information the complainant supplied to you, is indeed incorrect and completely out of context. The complainant HAS taken severe legal action against me, (which they say they haven't BUT this CAN be proved with full legal documentation) and I had to withdraw my initial reply to the Administrative Panel because of this."
This Administrative Panel directed that the Respondent furnish copies of the said documentation, however the Respondent has failed to comply with the directions and the documents were not furnished.
In the view of this Administrative Panel, the Complainant has made out a prima facie case that the Respondent has registered the said domain name primarily for the purpose of selling, renting, or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the said domain name. In accordance with the guidelines set out in paragraph 4(b)(i) of the Policy, such activity amounts to evidence that the said domain name was registered and is being used in bad faith.
7. Decision
With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name confusingly similar to the Complainant's trademark mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: May 16, 2001
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