The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Rubin, Leslie of Bronx, New York, United States of America ("US"), self-represented. 2. The Domain Name and Registrar
The disputed domain names and 1 are registered with Network Solutions, LLC (the "Registrar"). They are referred to in this decision as respectively the First Disputed Domain Name and the Second Disputed Domain Name, or together as the Disputed Domain Names. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2018 in connection with the First Disputed Domain Name. On May 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Disputed Domain Name. On the same date, 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 June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. On June 18, 2018, the Respondent requested an automatic four-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed that the new deadline for the Response was June 25, 2018, pursuant to the Rules, paragraph 5(b).
On June 22, 2018, the Complainant submitted a supplemental filing to the Center by email, requesting the addition of the Second Disputed Domain Name to the proceeding. The Center informed the Complainant that it would be at the Panel's discretion whether to accept the addition of a new domain name.
On June 24, 2018, the Respondent requested a further extension of the Response due date. The Respondent submitted an informal email communication to the Center on June 26, 2018, but did not submit any formal response. On June 27, 2018, the Center declined the Respondent's request for a further extension of the Response due date and informed the Parties that it would proceed to panel appointment.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 18, 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.
On August 10, 2018, the Panel issued a Procedural Order No. 1 which requested the Center:
(i) to obtain registrar verification for the Second Disputed Domain Name from the concerned Registrar; and
(ii) following registrar verification, to notify the Respondent that the Second Disputed Domain Name has been added to the proceeding.
The Respondent was provided with five calendar days from the date of this Panel Order, to submit any comments in relation to the Second Disputed Domain Name. No further comments were submitted by the Respondent. 4. Factual Background
The Complainant is a wholly owned subsidiary of Nestlé S.A., a Swiss corporation. This company and its subsidiaries are referred to in this decision as the Nestlé Group. The Complainant owns the majority of the trademarks used under license by the Nestlé Group. The Nestlé Group sells products and services all over the world in various industries, primarily in the food industry, including baby foods, breakfast cereals, chocolate and confectionery, beverages, bottled water, dairy products, ice cream, and prepared foods, food services. In 2017 its sales were 89.8 billion USD worldwide, out of which about 27 billion USD was in the US.
The Complainant is the owner of over 2000 international and national trademark registrations worldwide for NESTLÉ (or variations thereof), including for example International Registration. No. 400444 (word and device mark) of July 16, 1973. These trademarks are referred to in this decision as the NESTLÉ trademark.
Recently the Complainant reached an agreement with Starbucks Corporation, "granting the company [Nestlé] perpetual rights to market Starbucks consumer and foodservice products globally, outside of the company's coffee shops". As stated by the President and CEO of Starbucks Corporation, "This global coffee alliance will bring the Starbucks experience to the homes of millions more around the world through the reach and reputation of Nestlé". The agreement is subject to customary regulatory approval and is expected to close by the end of 2018. Starbucks Corporation owns the well-known international chain of coffee shops. It also has various registered trademarks for the word STARBUCKS. These are referred to in this decision as the STARBUCKS trademark.
The First Disputed Domain Name was registered on May 7, 2018. This was one day after the agreement described above was publicly announced. It has been linked to a "parking page" containing automatically generated click through links. The Second Disputed Domain Name was registered on June 10, 2018, after the Complaint had been notified to the Respondent. It too has been linked to a "parking page" containing automatically generated click through links.
The Complainant sent a "cease and desist" letter to the Respondent on May 14, 2018. No reply was received.
In the course of the current Complaint, the Respondent sent to the Center an email of June 26, 2018 (see above), which read as follows:
"Mr Rubin has proposed to Nestle a FINAL SETTLEMENT of 10 million United
States dollars for the domain names :
S and S as of June 27,2018. Mr.Barbero has been notified.
Thank you very much" 5. Parties' Contentions A. Complainant
The Complainant says that each of the Disputed Domain Names is confusingly similar to its NESTLÉ trademark being a combination of that word with the trademark STARBUCKS which is also relevant to the Complainant's business given the recently announced agreement with Starbucks Corporation (see above).
The Complainant says that the Respondent has no rights or legitimate interests in the term Nestlé or Starbucks or the two terms in combined form.
The Complainant says that the Respondent's registration and use of the Disputed Domain Names is in bad faith. It says the linking of those domain names to pages with click through links is itself evidence of bad faith. It also says that in any event it is likely the Respondent intended to try to sell them to the Complainant for a significant sum. The Complainant relies on the Respondent's email of June 26, 2018 (above) in this regard. B. Respondent
No Response has been filed. 6. Discussion and Findings 6.1 Procedural Matters
The Panel will allow the Second Disputed Domain name to be added to the proceeding. It is identical to the First Disputed Domain Name save for an additional hyphen, so raises precisely the same issues. Further, the Complainant could not have included it in the Complaint as filed, since the Respondent only registered it after he received the Complaint. No useful purpose would be served by requiring the Complainant to file a separate complaint. See section 4.12.2. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 3.0") which states that: "Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment" and are accepted in "..limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent's registration of additional domain names subsequent to complaint notification)" provided that "the complainant .. hold[s] relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent." The Panel agrees with the Complainant that these criteria are met in this case. See also Société Générale SA and NAOS SAS v. 赵兴明, Zhao Xing Ming,WIPO Case No. D2017-2153 holding that "The common grievance in this case appears to be that the Respondent is the same for both disputed domain names and is a cybersquatter "using" the disputed domain names in an identical way". In addition the Respondent was notified of the addition of the Second Disputed Domain Name to this proceeding and provided with an opportunity to comment (see above) so the Panel considers that no unfairness to the Respondent arises.
The Panel notes that no formal Response has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to "employ reasonably available means calculated to achieve actual notice". In any event the communications from the Respondent (see above) demonstrate he is aware of this Complaint. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). 6.2 Substantive Matters
To succeed, in respect of each the Disputed Domain Names, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Names are identical with 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 respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel considers each of the Disputed Domain Names to be confusingly similar to the Complainant's NESTLÉ trademark. The Respondent has simply taken the Complainant's trademark and combined it with another well-known trademark in a manner which manifestly continues to include the Complainant's trademark as an obvious reference within each of the Disputed Domain Names. As stated in section 1.12 of WIPO Overview 3.0, it is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain another third-party's distinctive mark. See for example Hoffmann-La Roche Inc. v. Charlie Kalopungi,WIPO Case No. D2010-1826, where the panel found that "the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity".
The Panel attaches no significance to the omission in the Disputed Domain Names of the accent from the last letter of NESTLÉ, - previous panels have considered that the addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes are irrelevant changes, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy. See Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300 (): "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".
It is also well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not affect the Disputed Domain Names for the purpose of determining whether they are identical or confusingly similar to the Complainant's trademark. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; 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 or service mark at issue.
None of these apply in the present circumstances. Neither the Complainant nor Starbucks Corporation has authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the NESTLÉ trademark or the STARBUCKS trademark. The Complainant has prior rights in the NESTLÉ trademark which precede the Respondent's registration of the Disputed Domain Names, as does Starbucks Corporation in respect of the STARBUCKS trademark. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, 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 Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the NESTLÉ and STARBUCKS trademarks, and the evidence as to the extent of the reputation the Complainant and Starbucks Corporation enjoy in their respective trademarks, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Names lead the Panel to conclude the registration and use of the Disputed Domain Names were in bad faith. The Panel has no doubt the Respondent registered the First Disputed Domain Name opportunistically when he heard of the proposed venture described above between the Complainant and Starbucks Corporation. He registered the Second Disputed Domain Name whilst the present Complaint was pending. The Panel infers each was registered with a view to selling them to the Complainant for a substantial sum. The Respondent's email of June 26 2018 (above) confirms that inference is correct.
As such the Respondent's conduct is precisely within the Policy, paragraph 4(b)(i) as being evidence of registration and use of the Disputed Domain Names in bad faith: "circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name".
The Panel also agrees with the Complainant that the Respondent's registration of the Second Disputed Domain Name after receiving this Complaint is itself further evidence of bad faith.
The Panel also considers other grounds for a finding of bad faith exist but in the light of the above reasoning it is not necessary to go into these.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel concludes that none exists.
As a result, the Panel finds that the Disputed Domain Names have each been registered and are 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 Disputed Domain Names and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: August 27, 2018
1 For reasons discussed below the Panel will allow this latter domain name to be added to the proceeding.
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