WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société des Produits Nestlé S.A. v. Po Ser Case No. D2009-1344 1. The Parties
The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland represented by Barbero & Associates Ltd. of Italy.
The Respondent is Po Ser of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the “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 October 9, 2009. On October 12, 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 Domain Name. On October 21, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 October 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2009.
The Center appointed Michelle Brownlee as the sole panelist in this matter on November 18, 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 owns several registrations in the United Kingdom for the trademarks ROWNTREE'S and ROWNTREES and design in connection with goods in International Classes 29, 30, and 31, including candy and confectionery. These include U.K. Registration Nos. 1320432, 1450751, 1450752, and 2306650. The Complainant also owns U.K. Registration No. 2492185 for the mark RANDOMS in connection with a variety of goods in International Classes 29 and 30, including confectionery and candies. 5. Parties' Contentions A. Complainant
The English chocolate company Rowntree's was founded in 1862, and produced fruit gums and pastilles. In 1962, the company merged with a competitor, Mackintosh's, to be Rowntree Mackintosh. The Rowntree Company went public in 1987, and was acquired by the Complainant in 1988.
In May, 2009, the Complainant launched Rowntree's Randoms, a new jelly sweet, in the United Kingdom. To date, the Complainant has sold more than 5 million pounds of the product, and has spent 4 million pounds advertising the product. As part of its advertising of this new product, the Complainant registered the domain name and maintains a web site using this domain name.
The Domain Name was registered on September 1, 2009 without the Complainant's authorization. When the Complainant discovered the Domain Name, it was being used in connection with a web site with pay-per-click links to web sites offering adult content. The Complainant sent a cease and desist letter to the registrant listed in the WhoIs records at that time. No response was received, but a few days later, the content of the site had been changed to a parking page displaying sponsored links to less offensive third party web sites. The Domain Name was also being offered for sale on SEDO. A new search of the WhoIs records for the Domain Name showed that it had been transferred to a new owner name and email address, but the mailing address and telephone number were identical to the original registrant.
A party with a nearly identical mailing address also registered other domain names including the Complainant's trademarks, and , and used them in connection with web sites with identical images and layout to that of the site. The Complainant also won a decision in a UDRP proceeding against a respondent with the same mailing address as the Respondent. See Société des Produits Nestlé S.A. v. Shuai Nian Qing, WIPO Case No. D2009-0865.
The Complainant contends that the Domain Name is confusingly similar to its ROWNTREE'S and RANDOMS trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 second level of the Domain Name pairs the Complainant's ROWNTREE trademark with the Complainant's RANDOMS trademark. The Complainant uses these two trademarks together, and their use together in a domain name is likely to create confusion with the Complainant's trademarks. See, e.g., Mastercard International, Incorporated. v. Michael J. Yanda, Indy Web Productions,WIPO Case No. D2007-1140. Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's ROWNTREE and RANDOMS trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a right or legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue
The Respondent has not presented evidence that it used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that it is commonly known by the Domain Name or that it is making a noncommercial or fair use of the domain name. The Respondent's use of the Domain Name simply to provide links to web sites in order to collect click-through referral fees cannot under the circumstances be considered a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent's use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to the Respondent's site by creating confusion as to source and results in commercial gain to the Respondent.
The evidence that the Complainant has submitted also demonstrates that the Respondent has registered and used in bad faith other domain names that have incorporated the Complainant's trademarks. This further reinforces the conclusion that the Domain Name was registered and used in bad faith in this case. See, e.g., Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington,WIPO Case No. D2003-0501 . 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.
Michelle Brownlee
Sole Panelist
Dated: November 29, 2009
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