The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Sonia de Ferrero of Lima, Peru. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2016. On June 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2016.
The Center appointed Neil J. Wilkof as the sole panelist in this matter on July 27, 2016. 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, which is primarily active in the food industry, inter alia is registered as the owner of the following trademarks:
- International Registration No. 400,444 for NESTLÉ (word and figurative elements), registered on July 16, 1973 in classes 1, 5, 29, 30, 31, 32, 33;
- International Registration No. 479,337 NESTLÉ (word mark), registered on August 12, 1983, in classes 1, 5, 29, 30, 31, 32, 33.
(Hereinafter: "the NESTLÉ Mark")
The disputed domain name, (the "Disputed Domain Name") was registered on February 8, 2016. Although the Disputed Domain Name was inactive when the Complaint was filed, it previously resolved to a website that reproduced the look and feel of the Nestlé corporate website for Mexico, and also advertised and offered for sale pre-owned cars. 5. Parties' Contentions A. Complainant
The Complainant is the world's largest food consumer products company, with more than 330,000 employees and 436 factories in more than 80 countries. As of 2015, Fortune Global 500 ranked the company as the 70th largest company in the world. The Complainant alleges that is the owner of more than 100,000 national and international trademarks around the world. It operates the website "" as its primary web portal for global promotion of its products.
The Complainant's activities date back to the 19th century. In 1867, the founder of the Complainant, Henri Nestlé, launched his "farine lactée" product, a combination of cow's milk, wheat flour and sugar on a site in Vevey, Switzerland, which remains the site of the company's headquarters. The company first sold products in Peru in 1919 and its commercial presence in Mexico began in 1930. Today, the company engages in the production and sale of baby foods, breakfast cereals, chocolate and confectionary, beverages, bottled water, dairy products, ice cream, prepared foods, and pharmaceutical and pet-care products, all under the NESTLÉ Mark.
Previous UDRP panels have found the NESTLÉ Mark to be a famous mark.
The Complainant became aware of the Respondent's registration of the Disputed Domain Name by virtue of receipt of a written communication sent by a consumer to the Complainant on April 7, 2016. The website under the Disputed Domain Name advertised and offered for sale pre-owned cars. As well, the Disputed Domain Name was redirected by the Respondent to a website that imitated the look and feel of the Nestlé corporate website for Mexico and which displayed the Complainant's trademarks and other protected content.
On April 15, 2016, the Complainant sent a cease and desist letter to the Respondent, demanding that the Respondent immediately stop all use of the Disputed Domain Name and that it transfer the Disputed Domain Name to the Complainant. The Disputed Domain Name was deactivated by April 16, 2016. However, the Respondent did not transfer the Disputed Domain Name to the Complainant as requested. A reminder communication was sent to the Respondent on May 5, 2016, to transfer the Disputed Domain, but no reply was received by the Complainant,
The Complainant then filed the instant UDRP Complaint, requesting the transfer of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
According to paragraph 4(a) of the Policy, the Complainant must prove the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. A. Identical or Confusingly Similar
It is well-established that "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP" (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888). The only difference between the NESTLÉ Mark and the first (and dominant) portion of the Disputed Domain Name is the presence of the "accent aigu" in the NESTLÉ mark. This difference is immaterial to the purpose of the comparison.
Further, a domain name that includes the Complainant's trademark in its entirety, together with a generic or highly descriptive term, is not sufficient to avoid a finding of confusion between the disputed domain name and the trademark (Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins,WIPO Case No. D2004-0943; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
The Spanish word "negocios" can mean either "shops" or "business" in English1. In either sense, it is a descriptive term that has no distinctive power. The use of the hyphen in connecting between the words of the Disputed Domain Name is merely an artifact of punctuation. It is well-established that the addition of the generic Top-Level Domain ("gTLD") ".com" typically lacks any distinctive power in determining whether a mark is confusingly similar to a disputed domain name. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 ("[…] the addition of the generic top-level domain (gTLD) name '.com' is … without legal significance since use of a gTLD is required of domain name registrants").
These principles apply in the instant case.
The registration of each of the NESTLÉ Mark substantially predates the registration of the Disputed Domain Name, being February 8, 2016.
The Disputed Domain Name wholly incorporates the NESTLÉ mark. Neither the addition of the generic or highly descriptive term "negocios", nor a hyphen nor the gTLD ".com" to the Disputed Domain Name changes the conclusion that there is a confusing similarity between the NESTLÉ Mark and the Disputed Domain Name. As stated by the panel in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, supra, "neither the addition of an ordinary descriptive word nor the suffix '.com' detracts from the overall impression of the dominant part of the name, namely the trademark SONY". Having regard to the NESTLÉ Mark, the same conclusion applies to the instant situation.
Based on the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the NESTLÉ Mark. B. Rights or Legitimate Interests
There is no evidence that the Respondent has registered any mark that consists of, or contains, the NESTLÉ Mark, or any material portion thereof. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the NESTLÉ. Mark. The name of the Respondent does not bear any resemblance to the Disputed Domain Name, nor is there any basis to conclude that the Respondent is commonly known by the NESTLÉ Mark or the Disputed Domain Name.
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use of the Disputed Doman Name in connection with a bona fide offering of goods or services nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name.
Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the respondent, as follows:
"(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's web site or location or of a product or service on the respondent's web site or location. "
Previous UDRP panels have found NESTLÉ Mark to be a famous mark. See, e.g., Société des Produits Nestlé SA v. Telmex Management Service,WIPO Case No. D2002-0070. Noteworthy are the words of the panel in the case of Société des Produits Nestlé SA v. Kayvan Sadeghi,WIPO Case No. DIR2007-0002: "Even without evidence of the Complainant's registered rights, it is apparent that the Complainant's mark is so famous that, as such, the Panel could legitimately take the equivalent of 'judicial notice' of that fact. Judicial notice is a rule of evidence that allows a matter to be taken as proven, because it is so well-known that it cannot reasonably be contested."
Under the circumstances, the Respondent's selection of the NESTLÉ Mark as the dominant part of the Disputed Domain Name supports the conclusion that the Respondent has acted in bad faith. The Respondent registered the Disputed Domain Name only in 2016, well over a century after the Complainant first began to use the NESTLÉ Mark and many years after the registration of the NESTLÉ Mark. As stated by the Panel in Société des Produits Nestlé SA v. Telmex Management Service, supra, "Complainant's trademarks are famous, and have evidently been known to Respondent when registering the contested domain name. Said domain name is highly unlikely to have been registered if it were not for Complainant's trademarks".
These words apply equally in the instant situation.
Further, the use of the Disputed Domain Name by the Respondent indicates an intention to attract Internet users to its website for commercial gain by taking advantage of the Complainant's reputation in connection with the NESTLÉ Mark. Until the Respondent deactivated the Disputed Domain Name in April, 2016, the website under the Disputed Domain Name had advertised and offered for sale pre-owned cars. As well, it was redirected to a website that imitated the look and feel of the Nestlé corporate website for Mexico and which displayed the Complainant's trademarks and other protected content. There was a reasonable likelihood, therefore, that an Internet user would have been confused into thinking that there was a connection between the Complainant and this website under the Disputed Domain Name.
As stated by the Complainant, following receipt of a cease-and-desist letter, the webpage to which the Disputed Domain Name was redirected, was deactivated. This does not change the conclusion that the Respondent has acted in bad faith. Prior panels have recognized that, under appropriate circumstances, the requirements of paragraph 4(a)(iii) of the Policy are satisfied when there is passive holding. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2, sets out the Consensus View as follows:
"3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity."
Applying this view to the facts of the instant case supports the conclusion that the Respondent has acted in bad faith with respect to the Disputed Domain Name. The NESTLÉ Mark has been found by previous panels to be a well-known mark. No response to the Complaint was filed by the Respondent.
Based on all of the foregoing, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Neil J. Wilkof
Sole Panelist
Date: August 10, 2016
1 The Complainant alleges in the Complaint (paragraph 12) that the term means "shops". The Panel takes "judicial notice" that the term can also be translated as "business" ("").
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