The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Mohammadreza Radmanesh of Tehran, Islamic Republic of Iran ("Iran"). 2. The Domain Names and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. The disputed domain name is registered with Tucows Inc. The disputed domain names are both referred to hereafter as the "Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 14, 2017. On the same day, the Center transmitted by email to the registrars a request for registrar verification in connection with the Domain Names. On December 14 and December 15, 2017, respectively, the registrars transmitted by email to the Center their verification responses 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 December 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 15, 2018. On January 6, 2018, the Respondent sent an email communication to the Center. The Complainant responded to the Respondent's communications of January 9, 2018. The Respondent did not submit a formal Response. On January 16, 2018, the Center notified the Parties that it was proceeding to appoint the Administrative Panel.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 24, 2018. 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 wholly owned subsidiary of Nestlé S.A., a publicly traded Swiss company that is one of the largest consumer food companies in the world, according to published sources cited in Wikipedia. The Complainant owns most of the trademarks used under license by the Nestlé Group of companies, which has numerous brands with annual sales of over USD 1 billion each. One of these is "Nespresso", a brand of coffee brewing machines designed for coffee bars and home use, with associated single-use capsules or pods of ground coffee beans. The Complainant sells "Nespresso" products in 64 countries through a website at "" (the "Complainant's website") and through some 450 boutique "Nespresso" shops in major cities. It appears from the Complainant's website that the Complainant does not operate a retail outlet in Iran, nor does it currently offer the delivery of "Nespresso" products or services to customers in Iran.
The Complainant holds numerous registered NESPRESSO trademarks, including the following:
MARK
JURISDICTION
REGISTRATION NUMBER
REGISTRATION DATE
NESPRESSO
International Trademark
499589
December 10, 1985
NESPRESSO
European Union Trade Mark
2793792
July 13, 2006
NESPRESSO
International Trademark (extended to Iran)
777873
March 14, 2002
NESPRESSO
(figurative)
International Trademark
(extended to Iran)
1054554
September 13, 2010
The Domain Names and were registered respectively on March 7, 2017 and August 7, 2016 in the name of the Respondent. The registration details for the two Domain Names vary slightly (the spelling of the street name in the postal address of the registrant differs), but the same registrant is named, the same domain name servers are used, and both Domain Names resolve to the same website, the "Respondent's website". The Panel accepts that it is probable that both Domain Names are under the control of the same person and that it is appropriate to deal with both Domain Names in this proceeding.
Both Domain Names redirect to a website in the Persian language at "" (spelled with one "s" less than the original), which advertises "Nespresso" coffee machines, coffee pods, and related products and services to customers in Iran. The website is headed with the trademarked NESPRESSO figurative logo and marked with the Complainant's favicon (the same shortcut icon that appears on browser tabs when users visit the Complainant's website). The "About Iran Nespresso" page states that in the year 1395 (2016 in the Western calendar) the Sarah Ghahre Parsian (Private Joint Stock) company "was the first company in Iran to receive the exclusive representation of Nespresso Company" and in May 1396 (2017) registered "a Nespresso Iran brand". The Complainant denies any such arrangement.
The Respondent's website has similar graphics and design elements to the Complainant's website. Its content consists largely of product descriptions, images, and videos copied from the Complainant's website. The Respondent seems to aim at building a substantial, ongoing business, presumably as an unauthorized reseller in Iran of the Complainant's "Nespresso" products. In addition to sales and delivery of "Nespresso" products, the Respondent's website offers warranty and support services and includes a recruiting page for positions at its central and branch offices in Tehran.
The Complainant sent the Respondent two cease-and-desist letters concerning the Domain Names, the Respondent's website, and related social media sites. The letters were delivered, but according to the Complainant there was no reply from the Respondent. The Complaint includes evidence that the Respondent has also used several other domain names, which are not the subject of this proceeding, to redirect Internet users to the Respondent's website at """: , , , and . The Complaint summarizes the Complainant's efforts over the course of 2017 to track and close the Respondent's successive website hosting and social media accounts with similar content. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Names are confusingly similar to its registered and well known NESPRESSO trademark, which they incorporate in its entirety. The Complainant denies authorizing such use of the mark and contends that the Respondent fails the tests for fair use of a mark by a reseller and thus has no rights or legitimate interests in using the Complainant's trademark in the Domain Names.
The Complainant infers that the Respondent registered and used the Domain Names in bad faith, in an effort to misdirect Internet users for commercial gain. Copying design and content from the Complainant's website and passing itself off as the Complainant's exclusive representative in Iran, the Respondent gives the false impression that it is associated with the Complainant and that its services and warranties are backed by the Complainant in a national market that the Complainant does not, in fact, serve. The Complainant also argues that the Respondent engaged in a pattern of registering abusive domain names and evinced bad faith in failing to respond to cease-and-desist letters. B. Respondent
After receiving notice of the current UDRP Complaint, the Respondent sent an email to the Center and counsel for the Complainant characterizing himself as "a legitimate representative of NESPRESSO" and stating that he had received no official letter of complaint from Société des Produits Nestlé S.A. He demanded proof that counsel for the Complainant is a "true and legitimate representative" of Nestlé. The Center acknowledged his communication, and counsel for the Complainant forwarded a duly executed power of attorney, as well as citations to other UDRP proceedings in which counsel has represented the Complainant.
The Respondent did not communicate further and submitted no substantive Response to the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." A. Identical or Confusingly Similar
The Complainant indisputably holds registered NESPRESSO trademarks. The Domain Names incorporate this mark in its entirety and add the dictionary word "world", which does nothing to avoid confusion.
The first element of a UDRP complaint "serves essentially as a standing requirement" and entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies authorizing the Respondent to use the NESPRESSO mark in the Domain Names, so the burden falls to the Respondent to demonstrate rights or legitimate interests in the Domain Names. The Respondent has failed to do so, and a review of the record does not suggest that such rights or legitimate interests exist. The Respondent's use of the Domain Names is clearly commercial, for example, and it does not appear that the Respondent is known by a corresponding name. Such a name does not appear in the Domain Name registration details, and an entirely different company name is mentioned on the "About Iran Nespresso" page of the Respondent's website. Using "Nespresso" in the Domain Names themselves does not suffice to establish rights or legitimate interests for purposes of paragraph 4(c)(ii) of the Policy. See WIPO Overview 3.0, section 2.3.
The Respondent's website and correspondence with the Center make the claim of acting as a "representative" in Iran for the Complainant, but it is not evident on this record that the Respondent could conceivably make a case for fair use of the Complainant's NESPRESSO mark in the Domain Names under the Policy, paragraph 4(c)(i), in connection with a "bona fide offering of goods or services", as a reseller of trademarked goods. See WIPO Overview 3.0, sections 2.4, 2.5, 2.8, and the leading decision, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. These decisions emphasize the need to balance some limited "nominative fair use" – naming the brand that the unaffiliated party distributes, resells, or repairs, for example – against the obvious risk of creating confusion as to source or affiliation. Thus, one of the conditions established in Oki Data Americas is that the respondent's site must accurately and prominently disclose the registrant's relationship with the trademark holder.
Here, the Respondent's website not only lacks a disclaimer of affiliation, it actually claims to be operated by the Complainant's exclusive representative in Iran. According to the Complainant, the Respondent falsely claims a relationship it has never enjoyed. The Panel accepts the Complainant's representation of this fact, which is made in the Complaint that is signed by counsel under the certification of accuracy and completeness required by paragraph 3(b)(xiii) of the Rules. The Panel notes that this representation is consistent with the statement in the Complainant's website indicating that the Complainant does not currently offer products and services in Iran. The Panel discounts the Respondent's claim to the contrary, because it was made in an uncertified communication and on a website filled with misappropriated content, and because there is no substantive Response offering evidence of any such authorization from the Complainant.
Other decisions cited in the WIPO Overview 3.0 support a finding against the Respondent on this point. Domain names including a categorically distinguishing term (such as "distributor", "supplier", "repairs") are more likely to be found as legitimate purposes of the Policy (see WIPO Overview 3.0, section 2.8.2), while those including a geographic term are more likely to be seen as affiliated with the trademark owner (id., section 2.5.1). The current case (adding "world" to the mark) is an example of the latter, not the former.
The Panel finds that an Internet user is all too likely to be confused as to source and affiliation, both initially when confronted with this Domain Name, and subsequently when viewing the Respondent's website. The Panel concludes that this is not an instance of legitimate fair use of the Complainant's trademark in connection with a bona fide offering of goods or services, and that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following cited by the Complainant (in which "you" refers to the registrant of the domain name):
"(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
(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."
The facts readily fit the example of paragraph 4(b)(iv) of the Policy. The Domain Name itself suggests affiliation with the Complainant, and the look and feel of the Respondent's website, with the Complainant's favicon appearing on many popular browser tags and a high volume of content taken directly from the Complainant's website, seem to support the website's explicit claims of association with the Complainant. This is likely meant to engender confidence and promote sales and customer loyalty. As there is no relationship between the parties, the Respondent is misleading Internet users for commercial gain.
The inference of bad faith is further warranted by the Respondent's use of multiple domain names and social media accounts, similarly misleading as to source and affiliation (but in the opinion of the Panel on the record, probably intended simply to expand the Respondent's customer base, rather than to deprive the Complainant of useful domain names). Bad faith can also be inferred from the Respondent's evasive conduct in the face of communications from the Complainant and the Center.
The Panel concludes that the Complainant has established the third element of the Complaint. 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 Domain Names, and , be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: February 7, 2018
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