WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société des Produits Nestlé SA v. Wolf Internet Services LDC, Wolfgang Sauer Case No. D2008-1626 1. The Parties
Complainant is Société des Produits Nestlé SA, of Vevey, Switzerland, represented by Studio Barbero, Italy.
Respondent is Wolf Internet Services LDC; Wolfgang Sauer, of Belize City Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2008. On October 27, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 30, 2008, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 31, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 4, 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 Respondent of the Complaint, and the proceedings commenced on November 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 26, 2008.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 9, 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
As Respondent failed to respond to Complainant's contentions, the Panel finds that the assertions of fact in the Complaint are uncontested.
Complainant is a large, multi-national company selling goods and services in the food industry, the pharmaceutical industry, and the pet-care industry. Complainant purchased Davigel SAS and its associated trademarks in 1988. Davigel SAS currently operates as a business-to-business catering company.
Complainant is the owner of France Trademarks No. 1295365, 1392410, and 95603339, registered respectively in 1965, 1987, and 1995. Complainant also owns International Trademark No. 494357, registered in 1985, covering Australia, Austria, Benelux, Germany, the European Community, Italy, Portugal, and Switzerland. Finally, Complainant owns Spain Trademarks Nos. 1530699 and 1530700, registered in 1992 and 1993. All registrations are for marks containing the word “Davigel” and used in connection with goods and services provided in the catering industry.
Complainant has also registered the domain names , , , , , and for use in promoting Davigel's activities. is Complainant's main website in France and is Complainant's main website in Spain.
Respondent registered the domain name with eNom on June 21, 2006. The domain name resolves to a website with “sponsored links,” which include links to various websites, including some with adult content. The website also has a link to , a gambling website owned by Respondent. Finally, the website also triggers pop-up advertising.
Respondent operates a business website at , which describes Respondent's business as “acquiring and managing domain names to develop into websites or to use for direct navigation advertising.” 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to its mark DAVIGEL. Complainant claims that Respondent has made no change to its valid mark except adding “.com” to the end. In addition, Complainant notes that is identical to Complainant's registered domain names and . Complainant further contends that the current use of the disputed domain name is tarnishing the DAVIGEL mark because it may confuse customers and associate “Davigel” with gambling and pornography.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain. Complainant asserts that Respondent is not an authorized user of the DAVIGEL mark or the disputed domain name.
Complainant asserts that there is no evidence that Respondent was, before the notice of this dispute, using the disputed domain or preparing to use the domain for a bona fide offering of goods and services.
Complainant claims, upon information and belief, that Respondent is not commonly known by the domain name, whether as an individual, business or other organization, and that “Davigel” is not the family name of the Respondent.
Complainant contends that Respondent's use of the disputed domain name should not be considered fair use as it is for a commercial purpose. Complainant alleges that the disputed domain name is intended primarily to divert customers to Respondent's website in order to attract traffic to his pay-per-click advertising website. In addition, the disputed domain contains a prominent link to Respondent's gambling website, which Complaint's claims is intended to divert customers to this website for Respondent's financial benefit.
Complainant further alleges that Respondent had constructive notice of Complainant's mark, by virtue of its registrations with patent offices throughout Europe. In addition, Complainant alleges that Respondent had, or should have had, actual notice of Complainant's use of “Davigel” as a mark due to Davigel's prominent presence on the Spanish-language Internet that Respondent would have had access to in Belize. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain is identical to Complainant's mark. The only difference between Complainant's trademark DAVIGEL and Respondent's disputed domain name is the addition of “.com.” The Panel concludes that the addition of “.com” does not prevent a disputed domain from being identical or confusingly similar. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain. Complainant asserts, unrebutted, that it has not authorized Respondent in any way to use the DAVIGEL mark.
At the time of the filing, Respondent was using the disputed domain name as a “pay-per-click” advertising site. Generally, panels have found that “pay-per-click” websites are not a bona fide offering of goods and services within the meaning of the Policy. See Educational Testing Service (ETS) v. International Names Ltd.,WIPO Case No. D2007-0449. In addition, no evidence has been presented that Respondent was making demonstrable preparations to use the disputed domain for a bona fide sale of goods and services.
No evidence has been presented before the Panel to show that Respondent has been commonly known by the domain name. Respondent's business has a separate website under the domain name , where Respondent indicates that he “operates thousands of generic internet properties,” suggesting that Respondent was not associated with the present disputed domain name at any time prior to this dispute arising.
Respondent also does not appear to be making legitimate, non-commercial fair use of the disputed domain name. Respondent uses the disputed domain as a “pay-per-click” advertising site and as an advertising forum for his “www.” gambling website. Both of these uses are commercial in nature as they produce economic benefit for Respondent. C. Registered and Used in Bad Faith
The Panel concludes that Respondent has registered and is using the disputed domain name in bad faith. In order to register a mark in bad faith, a Respondent must have actual or imputed knowledge of Complainant's mark. See Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. In this case, there is sufficient evidence to allow the Panel to infer actual knowledge on the part of Respondent. DAVIGEL is a distinctive mark that has been used by Complainant in connection with a large, multi-national catering service since 1988, and the company bearing that name existed independently before that since 1963. Davigel has a substantial Internet presence.
In addition, although respondents generally have no duty to conduct a trademark search to determine if a potential domain name is infringing, some panels have held that if a company or individual conducts a significant business in registering domain names it must “make reasonable efforts to ensure that they are not infringing on the rights of others.” See Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666. In the present case, a simple Internet search would have revealed the existence of a major company with the identical, unique name as the disputed domain name.
Paragraph 4(b) of the Policy defines the circumstances which constitute bad faith. Though these circumstances are representative, they are not exhaustive. Paragraph 4(b)(iv) states that bad faith shall be found if “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.” Complainant has presented evidence that Respondent is using the disputed domain name as a “pay-per-click” revenue generating website. According to the unrebutted evidence, at least some of these links were to companies operating in competition with Complainant. Panels generally find this behavior to be evidence of bad faith. See Educational Testing Service (ETS) v. International Names Ltd., id., WIPO Case No. D2007-0449.
In addition, panels have also generally found that when a disputed domain name associates a distinctive trademark with gambling or pornography, such use provides additional evidence of bad faith. See AltaVista Company v. Alt Pile Co., WIPO Case No. D2002-0933; and Barry Diller v. Internetco Corp.,WIPO Case No. D2000-1734. In the present case, Respondent included advertising links on the disputed domain name for both such types of material, potentially creating the misimpression that Complainant endorsed such content, which could tarnish the goodwill associated with Complainant's trademark. 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 Complainant.
Michael A. Albert
Sole Panelist
Dated: December 22, 2008
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