The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero of Italy.
The Respondent is Zhenghui / hang zhou yinli elec of Hangzhou, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On November 11, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details.
The Center has verified that the Complaint satisfies 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”).
On November 11, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On November 11, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the due date.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 8, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on December 9, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on December 14, 2010. 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 A. Complainant
The Complainant is a company incorporated in Switzerland and the owner of numerous international registrations worldwide for the trade mark NESTLÉ (the “Trade Mark”). The Complainant is also the owner of numerous domain names comprising the Trade Mark. B. Respondent
The Respondent is an individual apparently with an address in China. C. Disputed Domain Name
The disputed domain name was registered on September 28, 2010. 5. Parties’ Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint.
The Complainant was founded in 1866 by Henri Nestlé. The Complainant sells products and services all over the world primarily in the food industry, including baby foods, breakfast cereals, chocolates and confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services. The Complainant is also very active in the pharmaceutical and pet-care industries. The Complainant has over 283,000 employees and markets its products in over 200 countries. It is the world's largest food consumer products company in terms of sales and the 44th largest company in the world according to Fortune Magazine’s 2010 ranking of the world’s 500 largest companies. According to Interbrand’s annual Best Global Brands ranking for 2010, the Trade Mark is worth USD6.548 million making it the 57th most valuable trade mark in the world. The Trade Mark is accordingly a famous and well-known trade mark worldwide.
On September 27, 2010, at a global press conference, the Complainant announced the creation of Nestlé Health Science along with a new research institute, the Nestlé Institute of Health Sciences. On that day the Complainant formally announced its previously confidential plans “to pioneer a new industry between food and pharma,” with plans to develop nutritional products to treat and help prevent grave health conditions such as diabetes, obesity, cardiovascular disease, and Alzheimer’s disease.
The Respondent registered the disputed domain name without the Complainant’s authorisation on September 28, 2010, the day after the Complainant’s global press release.
In response to a letter of demand from the Complainant’s legal representatives, the Respondent stated he is well aware of the Complainant, described himself as a professional domain name investor, and offered to sell the disputed domain name to the Complainant for USD11,000.00.
The disputed domain name is identical to the Complainant’s prior registered Trade Mark.
The Respondent has held the disputed domain name passively since its registration. Such non-use is insufficient to establish a legitimate interest in respect of the disputed domain name. By his own admission, the Respondent is a professional domain name investor who apparently seeks to profit solely from the registration and sale of domain names incorporating the trade marks of others.
The Complainant has not in any way authorised or approved the Respondent’s use of the Trade Mark or registration of the disputed domain name and the Respondent is not commonly known by the disputed domain name.
The Respondent has registered the disputed domain name solely for the purpose of selling it to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to its registration. The disputed domain name has therefore been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) Requiring the Complainant to translate the Complaint and all documents into Chinese would cause unnecessary delay and significant costs; and
(2) The Respondent has demonstrated that he has an excellent command of the English language. The Respondent replied in English to the cease and desist letter sent by the legal representative of the Complainant in English. This response and the subsequent correspondence sent by the Respondent to the legal representative of the Complainant was written in a high level of English without any confusion or lack of comprehension.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by over 100 years the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names may be found identical or confusingly similar to a trade mark for the purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The Panel has no hesitation in finding the disputed domain name is confusingly similar to the Complainant’s widely-known Trade Mark. The addition of the generic words “health” and “science” does not serve to distinguish the disputed domain name from the Trade Mark in any way1.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint has fulfilled the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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 organisation) have been commonly known by the domain name even if you have acquired no trade mark 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 100 years. The Complainant has therefore shown a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, it is clear that the disputed domain name has been registered solely for the purpose of selling it to the Complainant or a third party.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain. The Panel finds on the record that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds the disputed domain name has been registered and used in bad faith under paragraph 4(b)(i) of the Policy, by the Respondent’s conduct in offering to transfer the disputed domain name to the Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs directly related to the registration of the disputed domain name; and under paragraph 4(b)(ii) of the Policy, in that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name and has, by the Respondent’s own admission, been engaged in a past pattern of such conduct as a “professional domain name investor”.
It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds, in the circumstances of this proceeding, the Respondent’s passive use of the disputed domain name provides further evidence of bad faith.
The Panel also considers that, in the circumstances of this case, the failure of the Respondent to file a Response further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian Hughes
Sole Panelist
Date: December 28, 2010
1 The Panel further notes that the disputed domain name is identical to the Complainant’s new trade mark NESTLÉ HEALTH SCIENCES (Annex 3.13 to the Complaint).
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