WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SOCI�T� DES PRODUITS NESTL� SA v. Mustafa Yakin / Moniker Privacy Services
Case No. D2008-0016
1. The Parties
The Complainant is SOCI�T� DES PRODUITS NESTL� SA, Vevey, Switzerland, represented by Studio Barbero, Milan, Italy.
The Respondent is Mustafa Yakin, Istanbul, Turkey / Moniker Privacy Services, Pompano Beach, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2008. On January 4, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 8, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notice by the Center of a change in registrant information, the Complainant filed an amendment to the Complaint on January 15, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2008.
The Center appointed Ian Blackshaw as the sole panelist in this matter on February 26, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a Swiss limited liability company, founded in 1866 by Henri Nestl�. The Complainant sells products and services all over the world in various industries, 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, the company has activities in the pharmaceutical and the pet-care industry.
The company has over 250,000 employees and more than 470 factories around the world.
The Complainant is the owner of the following trademark registrations:
- US Registration COFFEE-MATE (word mark) N. 838490 registered on November 7, 1967 in class 30
- US Registration COFFEE-MATE (word mark) N. 969734 registered on October 2, 1973 in class 29
- US Registration COFFEE-MATE (word mark) N. 2979065 filed on May 20, 2004 and registered on July 25, 2005 in class 29
Copies of the above registrations have been provided to the Panel.
The Complainant is also the owner of numerous other trademark registrations for COFFEE-MATE for many years, a full list of which has been provided to the Panel. The Complainant could provide copies of trademark registrations in other countries upon the request of the Panel.
The Complainant has been using the trademark COFFEE-MATE for over forty-five years for non-dairy powdered creamer and non-dairy liquid creamer; and is now one of the Complainant’s most important brands for coffee creamer.
In 2003, NESTL� COFFEE-MATE coffee creamer was awarded the prestigious “Gold Taste Award” from the American Tasting Institute. In 2006, NESTL� COFFEE-MATE was selected as one of America's Greatest Brands, identified as being among the strongest and most valuable brands in America. Evidence of this has been provided to the Panel.
More particularly, COFFEE-MATE is a leading brand in the United States with 67 percent of the market in 2007, which translates into NESTL� COFFEE-MATE being used in 1 out of every 6 cups of coffee consumed at home.
To provide the Panel with some figures indicative of the volumes of COFFEE-MATE products present in the market, the sales at the end of 2002 were of about $524 million in the United States and $835 million in 2005. COFFEE-MATE is now a billionaire brand with 17% of growth in 2006. Again, evidence in support of all these claims has been provided to the Panel.
In the light of the Complainant’s significant investments in R&D, marketing, sales and distribution channels, as well as the existence of an impressive client base for these products, COFFEE-MATE is undisputedly a widely known trademark worldwide.
In order to further protect its trademark COFFEE-MATE also on the Internet, the Complainant has registered over seventy domain names consisting of or comprising the word “Coffee-Mate” as domain names under several different TLDs; the list of domain names registered by Complainant and its subsidiaries includes, amongst others, , , , , , , evidence of which has been provided to the Panel. Under these domain names, the Complainant and its subsidiaries operate websites where the products and services offered under the COFFEE-MATE trademark are promoted.
When the Complainant became aware of the registration of the disputed domain name, the registrant was Chris Deluge from Webmartketing Inc. Since the domain name was inactive, the Complainant decided to monitor further developments of it in order to ascertain if there was any bona fide intention.
In 2006, the disputed domain name was transferred to an alleged Coffe Mate AG which, according to the data available, was indicated to be based in Germany. The Complainant carried out detailed searches, but it seemed that this company did not exist. In the meantime, the disputed domain name was transferred to the present Respondent.
The Complainant attempted to get in touch with the registrant and also the Registrar on October 19, 2006 / November 9, 2006 via email, to the addresses displayed on the Whois, requesting the transfer of the contested domain name and/or the disclosure of the identity of the registrant if any behind the present current domain name holder. A reminder was sent on November 28, 2006 to the same address and to Moniker Online Services, LLC. A last reminder was sent on March 5, 2007 via email to Moniker Online Services, LLC. Copies of these e-mails have been provided to the Panel. To date, the Complainant has not received any reply from any party.
Furthermore, the Complainant received an e-mail on June 23, 2007 from an alleged customer stating: “Screen shot of your website with the porn link attached!” bringing the focus of the Complainant from the monitoring of the activities pursued by the various owners on the corresponding website and the following communications to the Registrant / Registrar, to the present procedure according to the UDRP.
Presently, the disputed domain name is, in fact, redirected to a website where Internet users can find a number of sponsored links to various websites including some of the Complainant’s competitors such as Starbucks. Evidence of this has been provided to the Panel.
By definition, a “sponsored link” generates revenues for the registrar and/or for the domain name holder. More particularly, by clicking on the sponsored links, Internet users are redirected to non-official websites offering alleged Complainant’s products for sale such as “”. Evidence again has been provided to the Panel.
It should be noted that the website also triggers pop up advertising, copies of which have also been provided to the Panel.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The domain name registered by the Respondent is identical to trademarks in which the Complainant has rights, as shown by the copies of trademark registrations provided to the Panel.
In X-Copper Legal Services Inc. v. Majid Hashemi,WIPO Case No. D2007-0251 about the domain names and , the Panel stated that “the Panel read the relevant sections of the decisions submitted by the Complainant. They indeed support the Complainant’s contention about the existence of precedents to the effect that hyphens and gTLD extension are in general differences without legal significance in comparing domain names to trademarks. On its own, the Panel would have reached the same conclusion in this case”.
Likewise, the Complainant’s trademark COFFEE-MATE and the disputed domain name are confusingly similar since the deletion of the hyphen between the words “COFFEE” and “MATE” is not sufficient to eliminate confusion.
Indeed, it is well established, that the addition or the deletion of the hyphen to a trademark is insufficient in itself to remove the confusing similarity between the trademark and the disputed domain name. Among many others, in HUK-COBURG haftpflicht-Unterst�tzungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM),WIPO Case No. D2006-0439, the Panel found that “the omission of the hyphen does nothing to avoid the confusing similarity between the domain name and the trademark of the Complainant”. See also Deutsche Telekom AG v. Dexcom Holdings B.V.,WIPO Case No. DTV2006-0001 (T-Mobile v. ) Chernow Communications, Inc. v. Jonathan D. KimballWIPO Case No. D2000-0119 (C-Com v. ).
Since the top level “.com” is merely instrumental to the use on the Internet, as found inter alia in Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015, Soci�t� G�n�rale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760, the domain name is confusingly similar to the Complainant’s trademark.
In the light of the above, the Complainant concludes that the domain name is confusingly similar to the prior registered trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
A2. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)).
The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
Indeed, the Respondent’s typosquatting does not constitute a legitimate, non-commercial or fair use of the disputed domain name as found inter alia in Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller,WIPO Case No. D2006-0536; Time Warner Entertainment Company, L.P., and Hanna Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol and the Cupcake Patrol,WIPO Case No. D2001-0184; Playboy Enterprises International, Inc. v. Hector Rodriguez,WIPO Case No. D2000-1016 and Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205.
The domain name points to a website consisting of a page displaying sponsored links which are generating revenues via the pay per click system also for the present domain name holder. More particularly, some sponsored links are links to commercial websites offering inter alia coffee products in direct competition with the Complainant’s ones.
Such use can be considered neither as a bona fide offering of goods or services nor as a legitimate non commercial or fair use of the disputed domain name. Such willful conduct clearly shows, to the contrary, that the Respondent was not interested in using the disputed domain name in connection with any legitimate purpose (Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; F. Hoffmann-La Roche AG v. Titan Net,WIPO Case No. D2006-0424).
Furthermore, the website triggers pop up advertising. Also such a utilization can be considered neither as a bona fide offering of goods or services nor as a legitimate non commercial or fair use of the disputed domain name (see i.a. Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini,WIPO Case No. D2000-0928; Ticketmaster Corporation v. Amjad Kausar,WIPO Case No. D2002-1018; Cox Holdings, Inc. v. Gary Lam,WIPO Case No. D2004-0931).
Upon information and belief, the Respondent is not commonly known by the domain name as an individual, business or other organization and “Coffee-Mate” is not the family name of the Respondent. The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark COFFEE-MATE. As stated i.a. in Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134 “the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed domain name”. Along these lines, see also National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a ,WIPO Case No. D2000-0118; N.C.P. Marketing Group, Inc. v. Entredomains,WIPO Case No. D2000-0387.
Moreover, the Respondent, or whoever is attempting to hide its identity via the use of a privacy shield, has not shown that it is commonly known by the disputed domain name as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435.
As a final remark on the issue of rights or legitimate interest, it is a clear principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to Rule 4 (a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that Complainant shows prima facie evidence in order to shift the burden of proof onto the Respondent (see i.a. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Sampo plc v. Tom Staver,WIPO Case No. D2006-1135).
The Complainant, therefore, concludes that the Respondent has no rights or legitimate interests in respect of the domain name, in accordance with paragraph 4(a)(ii) of the Policy.
A3. The domain name was registered and is being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
As to the assessment of the Respondent’s bad faith at the time of registration, in the light of the use of the trademark since as early as 1961, the amount of advertising and sales of the Complainant’s products worldwide and, in particular, in the United States of America - where the Respondent is apparently based - use that has made the trademark COFFEE-MATE certainly well known, the Respondent could not have possibly ignored the existence of the trademark registration confusingly similar to the disputed domain name when it was registered, as held in The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran,WIPO Case No. D2002-0770 “this Panel concludes that Respondent knew or should have known of the existence of Complainant, Complainant’s trademark being widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith”.
Moreover, it should be noted that the Complainant’s trademark COFFEE-MATE but also NESTL�, NESCAF�, MILO, CRUNCH, all registered trademarks of the Complainant, are used on the corresponding website. Therefore, it is not conceivable that the Respondent could not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
With reference to the use of the domain name in bad faith, the disputed domain name is currently linked to the web page where, as described above, banners are published and Internet users can find a number of sponsored links to various websites, many of which are attempting to sell products of competitors of the Complainant. As a result, also the Respondent earns commission whenever an Internet user visits the website and clicks on one of the sponsored links. Such conduct where the Respondent sought or realized commercial gain indicates the Respondent’s bad faith as stated in many previous WIPO UDRP decisions, such as: Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung,WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator,WIPO Case No. D2006-0387; Gianfranco Ferre’ S.p.A. v. Unasi Inc.,WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beaut� & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc.WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings,WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc.,WIPO Case No.D2005-0383.
Moreover, sponsored links to non official websites offering – most probably counterfeited – Complainant’s products for sale are provided on the website. The Respondent may derive revenues from the sales of such products. As held in Sanofi-Aventis v. Juntech, Inc,WIPO Case No. D2005-0606: “This clearly shows that the Respondent uses the domain name for commercial gain, by attracting users to its website, where the AMBIEN product is offered for sale, but also competing products are offered for sale.” As stated in Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690: “Even if the users who access the Respondent’s website may conclude that it is not what they were originally looking for, the Respondent has already succeeded in its purpose of using the Complainant’s mark to attract users for commercial gain, see for example the panel’s observations in Red Bull GmbH v. Unasi Management Inc.,WIPO Case No. D2005-0304” (see also Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar,WIPO Case No. D2006-0068).”
As an additional element evidencing bad faith, as held in Cox Holdings, Inc. v. Gary Lam,WIPO Case No. D2004-0931: “when the disputed Domain Name resolved to an active website, visitors were subjected to a “pop up” advertisement that appeared in front of the content of the website. Such activity is additional evidence of bad faith.”
Also the clear typosquatting pursued by the Respondent constitutes additional evidence of bad faith (National Association of Professional Baseball Leagues v. Zuccarini,WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller,WIPO Case No. D2006-0536 stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed.”).
As a further additional circumstance evidencing bad faith, the Respondent is apparently using a Whois protection service for the registration which, if per se does not constitute a bad faith use, is certainly a clear indication as to the intentions of a domain name holder. In HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062, the Panel stated that “the Panel does not consider the Respondent’s use of a privacy service in and of itself to constitute bad faith under the Policy, but privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. The Panel finds substantial indication of such manipulation in the record of this case”.
Prior panels have also held that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Any such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the disputed domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.
In the light of the foregoing, the Complainant submits to have established also the existence of the Respondent's bad faith at the time of the registration of the disputed domain name and in the use thereafter, in accordance with paragraph 4(a)(iii) of the Policy.
B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.
6. Discussion and Findings
To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous WIPO UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also K�stritzer Schwarzbierbrauerei v. Macros-Telekom Corp,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garc�a Quintas,WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s trademark COFFEE-MATE. The only difference between the disputed domain name and the Complainant’s COFFEE-MATE trademark consists in the mere omission by the Respondent of the hyphen between the words “COFFEE” and “MATE”. This difference is immaterial for trademark distinguishing purposes. See Yahoo! Inc. v. Eitan Zviely, et al.,WIPO Case No. D2000-0273 (finding that the combination of the complainant’s mark YAHOO with a number of generic words such as a city name or single and two letter abbreviations for a country name, gave rise to a domain name which was confusingly similar to the registered mark of the complainant); see also, eBay, Inc. v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (applying the same principle and finding that was confusingly similar to ); see further Group Kaitu, LLC v. Sergei VasilievWIPO Case No. D2006-1229 (finding that was confusingly similar to ).
Indeed, this difference in the representation by the Respondent of the Complainant’s trademark COFFEE-MATE, in the absence of any explanation to the contrary by the Respondent, of which none has been offered, appears to be calculated to mislead and cause confusion to anyone surfing the Internet seeking information about the Complainant and its products and constitutes, in the opinion of the Panel, not only a case of ‘cybersquatting’ but also a case of so-called ‘typosquatting’. See Boehringer Ingelheim Pharma GmbH & Co. KG v. G Design,WIPO Case No. D2007-0569 and also the other WIPO UDRP cases therein cited.
The Panel would also agree with the Complainant’s contention that the addition of the suffix “.com” is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy. See The Bank of the Pacific v. Digi Real Estate Foundation,WIPO Case No. D2006-1112; Columbia Insurance Company v. G Design,WIPO Case No. D2006-1617; and Alliant Credit Union v. Mark Andreev,WIPO Case No. D2007-1085.
In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark COFFEE-MATE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration and use in commerce for many years prior to the registration of the disputed domain name by the Respondent.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely known trademark COFFEE-MATE and its widespread use around the world, the Respondent must in all likelihood have known, when registering the disputed domain name, that the Respondent could not have - or, indeed, claimed - any such rights or interests. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors),WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s widely known and widely-used trademark COFFEE-MATE when registering the disputed domain name. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design,WIPO Case No. D2006-0977.
Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark COFFEE-MATE in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its widely known trademark COFFEE-MATE and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its trademark through extensive advertising, promotion and marketing, as well as the commercial use over many years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that contains commercial links to other websites offering goods competing with those of the Complainant. See QVC, Inc. and ER Marks, Inc. v. ActiveI,WIPO Case No. D2005-1303, in which it was held that “[t]he use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to paragraph 49(c)(i)”.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”
Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its widely known and widely-used trademark COFFEE-MATE. Furthermore, the fact that the Respondent’s website contains links to other websites offering competing products with those of the Complainant suggests that the Respondent must have been aware of the Complainant’s trademark and, as such, amounts to bad faith on the part of the Respondent. See TAG HEUER v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2005-0133. In the circumstances of the present case, the Panel takes the view that it was unlikely that the registration of the disputed domain name by the Respondent was coincidental but intentional.
Again, by registering and using the disputed domain name incorporating the Complainant’s widely known and widely-used trademark COFFEE-MATE, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the widely known and widely-used registered trademark of the Complainant, registered by the Complainant many years before the Respondent registered the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the position in the present case.
Again, the Panel would agree with the Complainant’s contentions and for the reasons given above and also taking into account the previous WIPO UDRP cases cited above by the Complainant that the use by the Respondent of pop-up advertising and a Whois protection service providing the Respondent with a measure of anonymity and thus concealing the true identity of the Respondent are, prima facie, further indications of bad faith on the part of the Respondent. Also, as mentioned above, the representation by the Respondent of the Complainant’s widely known trademark COFFEE-MATE comprising the disputed domain name by omitting the hyphen between the words “COFFEE” and “MATE”, in the absence of any explanation by the Respondent, of which none has been forthcoming, leads to the clear inference that this was done deliberately to mislead consumers seeking information on the Internet concerning the Complainant and its products by mistyping the Complainant’s name, which constitutes ‘typo-squatting’. As such, this may be construed as a further indication of bad faith on the part of the Respondent. See Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller,WIPO Case No. D2006-0536.
Likewise, the failure by the Respondent to reply to the Complainant’s e-mails requesting information and also the request for the transfer of the disputed domain name to the Complainant and furthermore to answer the present Complaint or otherwise take any part in these proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking everything into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: March 11, 2008
Full & Egal Universal Law Academy