WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société des Produits Nestlé S.A. v. Belize Domain WHOIS Service Lt Case No. D2009-0392 1. The Parties
The Complainant is Société des Produits Nestlé S.A., Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Belize Domain WHOIS Service Lt, Belize, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2009. On March 25, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On March 25, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 20, 2009.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 14, 2009. 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 Nestlé. It sells products and services all over the world in various industries, particularly in the food industry, including baby foods, breakfast cereals, chocolate and confectionery, beverages, bottled water, dairy products, ice cream, prepared food and food services. Furthermore, the Complainant is active in the pharmaceutical and pet-care industries.
Purina is a very renowned brand for products related to animal food, veterinary and pet-care products.
The company related to the trademark PURINA was originally founded in January 1894 in St. Louis, Missouri, by Dr. William H. Danforth, by the name of Robinson-Danforth Commission Company. The company started commercializing the food concentrate “Omolene”, the first commercial ration for horses and mules. Maud Purina, the mule of smiling teeth, became the popular mark for “Omolene”. In 1902, the company name was changed for Ralston Purina Company, adopting the traditional and world-renowned chess red logo (the headquarters of Purina, based in St. Louis, is popularly known as Checkerboard Square).
In 1926, the Ralston Purina Company launched the first dry food for dogs called “Dog Chow Checkers”. This product was extremely well known in the 1960s due to a large advertising campaign with slogans such as “Flavor so rich, nutrition so complete, all you ad is love” and “It's gotta be the Dog Chow”. In 1962, “Cat Chow” was launched and instantly became the world's best selling food for cats. In 1986, the company launched Purina O.N.E., a line of food for cats and dogs developed and produced with natural ingredients.
In 2001, Ralston Purina Company was acquired by Nestle SA and it was renamed the Nestlé Purina PetCare Company (and the record of the assignment of the trademarks is still ongoing). Currently, it is the leading brand in the industry of dry foods for animals and a pioneer in research and studies on nutrition, health and animal behaviour. The new company operates 26 factories around the world (13 of them in the United States), with over 14,000 thousand employees and sells its products in more than 150 countries.
The Complainant is the owner of the following trademark registrations:
- PURINA, Registration Certificate N° 772457 of June 30, 1964 (and Renewals), in United States of America, in class 31;
- PURINA, Registration Certificate N° 240697 of June 26, 1979 (and Renewals), in Mexico, in class 31;
- PURINA, Registration Certificate N° 2348.04 of May 04, 2004, in Belize, in class 31;
- PURINA, Registration Certificate N° 20041992 of August 11, 2004, in Guatemala, in class 31.
The Complainant is also the owner of several other trademarks registrations for PURINA, which are registered in many countries.
The Complainant also registered the word PURINA as domain name under several gTLDs and ccTLDs, as for example:
- , registered on January 2, 1996;
- , registered on August 15, 2001;
- , registered on June 1, 2006;
- , registered on October 10, 2005.
The Respondent registered the domain name on May 6, 2005. 5. Parties' Contentions A. Complainant 1. Identity and similarity
The Complainant contends that the domain name registered by the Respondent is confusingly similar to its PURINA trademarks.
The disputed domain name differs from the Complainant's trademark only by the interchanging of a single letter in the domain name , where the “R” has been placed before the “U”. 2. Rights or legitimate interests in the domain names
The Respondent has no right or legitimate interest in the PURINA trademark. He is not affiliated in any way with the Complainant. He uses the domain name without authorization to generate a profit by linking to various online websites that sell products directly competing with the Complainant's products.
The disputed domain name points to a website consisting of a page that displays sponsored links which generate revenues to the Respondent via the pay-per-click system, and at the same time tarnishes the Complainant's trademark.
The Respondent has not provided the Complainant with any evidence of 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.
Furthermore, there is no evidence showing that the Respondent might be commonly known by the domain name as an individual, business or other organization, or that PRUINA is the family name of the Respondent.
In addition, the Respondent did not reply to the cease and desist letters sent by the legal representative of the Complainant.
On the issue of rights and legitimate interests, the burden of proof lies with the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests with respect to the domain name according to Rule 4 (a) of the Policy requires proving a negative circumstance. Accordingly, the Complainant is of the opinion that it is sufficient that he shows prima facie evidence in order to shift the burden of proof to the Respondent. 3. Registration and use in bad faith
The Complainant asserts that the Respondent's bad faith is assessed by the fact that at the time of registration, in light of the fact that the registered PURINA trademark is certainly well known and has been used since 1902 – also in the Belize, where the Respondent is apparently based – the Respondent could not possibly have been unaware of the existence of the trademark registration for PURINA (including the national registration in Belize, n. 2348.04 of May 4, 2004), confusingly similar to the disputed domain name.
Given the widespread publicity and fame of the PURINA trademark, it is indisputable that the Respondent had knowledge of the Complainant's famous trademark at the time of the registration of the domain name.
Regarding the use in bad faith, the Complainant notes that the disputed domain name gives access to a web page providing sponsored links to various web sites promoting products of its competitors. As a result, the Respondent at least earns commission whenever an Internet user visits the website and clicks on one of the sponsored links.
In view of the above, the Complainant considers that the conditions stated by paragraph 4(b) (iv) of the Policy are fulfilled, since the Respondent is intentionally attracting Internet users to the Respondent's website for commercial gain.
As further evidence of the Respondent's bad faith, the Complainant alleges that the Respondent has been involved in numerous prior UDRP proceedings, in which the transfer of the disputed domain name was decided. See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0626 (transfer); TV Globo Ltda. v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0714; Above All Advertising Inc. v. Belize Domain Whois Service Lt,WIPO Case No. D2007-0775; Scandic Hotels AB v. Great Camanoe Investments Ltd / Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0813; Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt,WIPO Case No. D2007-0819; The Sans Institute v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0881; Natura Cosméticos S.A., Industria e Comércio de Cosméticos Natura Ltda. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1165; Frontier Distribution LLC v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-1203; Moen Incorporated v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-1253; Kforce Inc. v. Belize Domain Whois Service Lt,WIPO Case No. D2007-1317; Fredericia Furniture A/S v. Belize Domain Whois Service Lt,WIPO Case No. D2007-1515; Iron Mountain Incorporated v. Belize Domain Whois Service Lt,WIPO Case No. D2007-1651; First Allied Securities, Inc. v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-1780; AIDA Cruises German Branch of Società di Crociere Mercurio S.r.l. v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-0109; Luc Vets, Luc Vets Diamonds NV v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-0337; Bazarchic SA v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-0839; Levantur, S.A. v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-0858; The Guardian Life Insurance Company of America v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-1087; Mäurer + Wirtz GmbH & Co. KG v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-1107; Danfoss A/S v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-1274 and Pension Benefit Guaranty Corporation v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-1371.
Therefore, in light of the pattern of the Respondent's conduct which is described as a “serial cybersquatter”, the Complainant concludes that the disputed domain name has been clearly registered and is being used in bad faith, pursuant to paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to 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.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainant's trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the respondent's rights to or legitimate interests in a domain name for the purpose of paragraph 4(a) (ii) above. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a) (i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name is . It differs from the Complainant's PURINA trademark only by the interchanging of a single letter, since the only difference is that the “R” has been placed before the “U”. The disputed domain name is composed of a predictable typographical error of the Complainant's PURINA trademark. It is a typical case of “typo-squatting”.
“Typo-squatting” has been disapproved in several prior decisions in which the Panel had found that a disputed domain name and a Complainant's trademark – when directly compared – are confusingly similar when the Respondent's domain name constitutes common mistyping of the Complainant's trademark. See, inter alia, Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale,WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd.,WIPO Case No. D2000-1293.
Therefore, the disputed domain name is confusingly similar to the Complainant's registered PURINA trademark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests with respect to the domain name.
Paragraph 4(c) of the Policy provides that:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.
The Complainant has trademark rights in the mark PURINA. The Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to register any domain name incorporating the Complainant's PURINA trademark. The Complainant has not granted any license or otherwise permitted the Respondent to use its trademark.
Furthermore, the Respondent is not known under the name PURINA or any similar name.
The Panel takes into consideration the fact that the Respondent did not answer the Complaint.
As exposed by the Complainant, the PURINA trademark had been registered before the registration of the disputed domain name.
Pursuant to the status of the website “www.” on March 24, 2009, the disputed domain name was pointing to a website consisting of a landing page that displays four categories, namely “Pet food company”, “Healthy pet food”, “Raw pet food” and “Electronic dog training collars”. Each category consists of sub-categories, such as “pet bird”, “pet shop”, “purina”, “pet foods” for “Pet food company”.
The second page is the result of a search for “purina”. It provides on its left side links to “sponsored results for Purina”. These sponsored results consist of links to websites. Among these websites is the Italian website “Animali Pet Shop”, which is an online “supermarket for animals”. On the right side of the webpage, is a list of “related searches” which consist of a list of generic terms such as “dog”, “cat”, “pet”, “dog food” (…) “Purina dog”, “Purina dog chow”, “Purina dog food”.
The disputed domain name was actually used to give access to a parking page offering sponsored results in relation with the PURINA trademark.
The Complainant sent a cease and desist letter to the Respondent on January 9, 2009. After having received this letter, the Respondent removed its website since, on March 30, 2009, the disputed domain name resolved to a webpage stating “Domain no longer valid”.
The disputed domain name has been used to resolve to a website which was clearly devoted to pet products and which even reproduced the PURINA trademark to reference companies' websites that sell products directly competing with the products offered by the Complainant under the PURINA trademark. It has generated revenues to the Respondent via the pay-per-click system.
The Panel concurs with the allegation that the Respondent is well aware of the fame of the Complainant's PURINA trademark and is just seeking to take advantage of this reputation.
This kind of use does not constitute a “legitimate non-commercial or fair use of the domain name”.
On the issue of rights and legitimate interests, the burden of proof lies with the Complainant.
The Panel is of the opinion that it is sufficient to show prima facie evidence of the absence of rights or legitimate interests with respect to the disputed domain name, in order to shift the burden of proof on the Respondent.
Since the Respondent removed its website after having received a cease and desist letter and did not submit any response either to the cease and desist letter or to the Complaint, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights to or legitimate interests in the disputed domain name and that the condition set out in paragraph 4(a) (ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP Policy sets out examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 or service on your web site or location.”
Considering that the PURINA trademark is protected worldwide, that ninety-three PURINA domain names have been registered by the Complainant, that the Respondent has engaged in a pattern of repeated cyber-squatting conduct and that his only reaction has been to remove its website after having received a cease and desist letter, it is inconceivable that the Respondent was unaware of the Complainant's PURINA trademark when he registered the domain name .
The Respondent registered the disputed domain name to take advantage of the confusion between the domain name and the Complainant's PURINA trademark.
As explained above, the disputed domain name has then been used to give access to a website devoted to pet products and the PURINA trademark was even reproduced on this website and was used as a link to websites competing with the Complainant's PURINA website.
The Respondent aimed to take advantage of typographical errors made by Internet users who wanted to visit the Complainant's website.
The Respondent intentionally attempted to divert them to his website for commercial gain, by creating a likelihood of confusion with the Complainant's PURINA trademark as to the source, sponsorship, affiliation, or endorsement of his web site or location of a product or service on his web site or location.
This practice, known as “typo squatting” takes unfair advantage of business reputation, is clearly unfair and is unfairly detrimental to the Complainant's PURINA trademark.
This is evidence of the Respondent's bad faith use pursuant to Policy paragraph 4(b)(iv).
The Panel is of the opinion that, considering the Complainant's allegations and the absence of any response to the Complaint, there is ample evidence for a finding of bad faith in this case.
Therefore, the condition set out by Paragraph 4(a) (iii) of the Policy has been met by the Complainants. 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.
Marie-Emmanuelle Haas
Sole Panelist
Dated: June 2, 2009
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