WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société des Produits Nestlé S.A. v. Shuai Nian Qing Case No. D2009-0865 1. The Parties
Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
Respondent is Shuai Nian Qing of Shanghai, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2009. On June 30, July 6, and July 8, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On July 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 11, 2009. 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” 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 3, 2009.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on August 6, 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 trademark upon which the Complaint is based is NESTLÉ. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the NESTLÉ trademark around the world, including the International Registrations Nos. 400444 of July 16, 1973, 479337 of August 12, 1983, and 638768 of June 28, 1995, 649928 of January 4, 1996, 651791 of February 19, 1996, 653196 of March 29, 1996, 655463 of March 13, 1996, 655692 of January 25, 1996 and 704989 of November 12, 1998 duly extended to People's Republic of China (“China”), where Respondent resides, for a variety of goods and services.
Complainant is a Swiss company founded in 1866 by Henri Nestlé, and sells products and services all over the world in various industries, more particularly in the food industry. According to the documentary evidence and contentions submitted, Complainant directly and through subsidiaries has a long-standing presence in over 200 countries, including in China, where the first sales office was opened in Shanghai in 1908. The Panel notes that the notoriety of the NESTLÉ trademark has been confirmed in at least three previous UDRP decisions. See Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070; Société Des Produits Nestlé SA v. Myongjin Kim, WIPO Case No. D2005-0509; Société Des Produits Nestlé SA v. Kayvan Sadeghi,WIPO Case No. DIR2007-0002. The Panel also accepts that the NESTLÉ trademark may be regarded as a well-known trademark in China.
Complainant has registered the word “nestle” in domain names under several different TLDs, including , and . Complainant has also registered the domain names and , and maintains a website dedicated to the recruitment of personnel for its offices around the world (“www.careers.”).
According to the documentary evidence and contentions submitted, the disputed domain name was registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR on February 1, 2006. The Panel has conducted an independent research and has noted that the disputed domain name points to a website where Internet users can find several sponsored links redirecting mainly to third parties websites, many of which with job offers (access on August 19, 2009).
Complainant sent a cease and desist letter to the domain name holder indicated in the WhoIs service at the time the letter was prepared (May 4, 2009). The addressee replied on May 5, 2009 and proposed to transfer the disputed domain name for USD 950. The parties reached no agreement and subsequently the domain name holder was changed to Respondent. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name incorporates the whole of the Complainant's NESTLÉ trademark and the fact that it includes the descriptive word “careers” does not exclude the confusingly similarity. Complainant relies on previous UDRP domain name decisions holding that a domain name that wholly incorporates a trademark is found to be confusingly similar for the purposes of the Policy, and that the addition of descriptive terms is insufficient in itself to remove the confusing similarity between the trademark and the domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has not provided 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; (ii) the current use of the domain name in connection with a website displaying sponsored links cannot be considered neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name; and (iii) there is no evidence showing that Respondent might be commonly known by the disputed domain name.
Finally, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith because (i) the NESTLÉ trademark is well-known, has been used since 1887 (in China since 1908), and could not have been ignored by Respondent; (ii) Respondent is using the website to which the disputed domain name resolves for the purposes of displaying sponsored links to services connected to the descriptive word careers, and also to websites where products of Complainant's competitors are advertised and sold; and (iii) Respondent is using the disputed domain name to attract for commercial gain Internet users to its website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
The disputed domain name incorporates the NESTLÉ trademark in its entirety (except for the accent on the second “e”).
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark, as in the instant case.
The addition of the descriptive term “careers” does not affect a finding that the disputed domain name is confusingly similar to the NESTLÉ registered mark. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive mark name is to be considered confusingly similar to the mark. See, e.g., Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253. Moreover, in this type of combination it is clear that the NESTLÉ trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
The likelihood of confusion between the disputed domain name and the NESTLÉ trademark is reinforced by the fact that Complainant had registered other domain names using the combination of the NESTLÉ trademark with the word “careers”.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC, supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the NESTLÉ trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The Panel accepts Complainant's contention that there is no evidence showing that Respondent has been commonly known by the disputed domain name.
According to the documentary evidence and contentions submitted, the disputed domain name resolves to a website which is a simple sponsored link page related to different areas of interest, including websites with job offers.
The Panel concurs with the prior UDRP decisions holding that, in circumstances similar to the instant case, there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; F. Hoffmann-La Roche AG v. Titan Net,WIPO Case No. D2006-0424; and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. Similarly, the panel in Gene Kelly Image Trust v. BWI Domain Manager,WIPO Case No. D2008-0342, has found that “[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.”
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. This holding is consistent with WIPO Panel Views on Selected UDRP Questions, para. 2.1., pursuant to which “once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
Complainant's first contention that Respondent was aware of the existence of the NESTLÉ trademark and that registration of a domain name confusingly similar was intentional is clearly warranted. The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a clear indication of bad faith in itself. See PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
In addition, given the extensive and worldwide reputation of the NESTLÉ trademark and the presence of Complainant in the China market since 1908, as determined by the documentary evidence and contentions submitted, the Panel sees no plausible explanation for Respondent's adoption and use of the term “nestle” in conjunction with the term “careers” in the disputed domain name other than to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. That circumstance is evidence of registration of a domain name in bad faith under paragraph 4(b) of the Policy.
There is a further element which is relevant in the resolution of this dispute. As indicated earlier, Complainant has registered the domain names and , and maintains a website dedicated to the recruitment of personnel for its offices around the world (“www.careers.”). Therefore, the disputed domain name was created not only to take advantage of the fame of the NESTLÉ trademark in general but also to benefit from particular activities carried out by Complainant by creating a likelihood of confusion with Complainant.
The Panel also finds that in this case the content of the website is relevant in the finding of bad faith use. As indicated before, Respondent's website contains sponsored links. The Panel concurs with the understanding of several other UDRP panels that in circumstances similar to this case the use of a domain name to point to a website that offers sponsored links to other websites is an evidence of bad faith, particularly if, as in the instant case, complainant had registered and used long before the disputed domain name. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS COM DOM),WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and is still being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: August 20, 2009
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