Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero S.p.a., Italy.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / James Onuoha Doe, Gambia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2019. On August 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 19, 2019.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 11, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 23, 2019. 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
Complainant is part of the Nestlé group of companies founded in 1866 by Henri Nestlé operating worldwide primarily in the food industry, including the sale of baby foods, breakfast cereals, chocolate, confectionery, coffee, beverages, bottled water, dairy products, prepared foods and pet foods, and also food services. Complainant markets its products in over 190 markets, and the Nestlé Group has 328,000 employees in more than 80 countries. In 2017, the Nestlé Group reported revenues of CHF 90.9 billion worldwide.
Complainant or its affiliates are the proprietors of over 2250 trademark registrations for NESTLÉ (the “Mark”) or variations thereof in many countries, including the United States, Australia and Gambia, including the following:
- United States trademark No. 0188089 for NESTLÉ (word mark) in class 29, registered on August 19, 1924 and claiming a date of first use in 1878;
- International trademark No. 400444 for NESTLÉ (figurative mark) in classes 1, 5, 29, 30, 31, 32, 33, registered on July 16, 1973;
- International trademark No. 479337 for NESTLÉ (word mark) in classes 1, 5, 29, 30, 31, 32, 33, registered on August 12, 1983;
- Gambia trademark No. M19851 for NESTLÉ (word mark) in class 3, registered on July 9, 1985.
Complainant is the registrant of the domain name , registered on October 25, 1994, and uses this domain as its primary Internet portal. Complainant is also the registrant of a substantial number of national and regional domain names incorporating the Mark, including a domain at specifically targeting Central and West Africa, where Respondent is purportedly based.
Respondent registered the Domain Name on May 28, 2019 using a privacy service. The Domain Name does not resolve to an active website.
The case materials include copies of a cease and desist letter sent by Complainant to Respondent concerning registration and use of the Domain Name, and copies of a falsified job application form using Complainant’s Mark and indicating contact information incorporating the Domain Name and fraudulent emails sent to job applicants originating from email addresses incorporating the Domain Name. 5. Parties’ Contentions A. Complainant
In respect of the first element, Complainant alleges that the Domain Name is confusingly similar to the trademarks in which Complainant has established rights evidenced by registration. The Domain Name incorporates the Mark in its entirety, differing only in the addition of the non-distinctive element “group”, which previous UDRP panels have found not to preclude a finding of confusing similarity in other cases. The addition of “group” increases the likelihood of confusion, since Complainant is part of an organization called the “Nestlé Group.” The omission from the Domain Name of the accent is not relevant, as is the use of the generic Top-Level Domain (“gTLD”) “com.”
In respect of the second element, Complainant alleges that it has supplied prima facie evidence of Respondent’s lack of rights or legitimate interests in the Domain Name. Respondent is not a licensee, authorized agent nor in any way authorized by Complainant to use Complainant’s Mark. Complainant is not aware of any evidence that Respondent is commonly known by the Domain Name, nor has Respondent provided any evidence of use of the Domain Name in connection with a bona fide offering of goods or services. Rather, the Domain Name is being used for fraudulent purposes by Respondent for the purpose of creating email addresses to impersonate employees of Complainant and solicit fake job offers putatively on behalf of Complainant. Such conduct clearly demonstrates Respondent’s lack of intention to use the Domain Name in connection with any legitimate purpose and can never confer rights or legitimate interests on Respondent. Respondent’s use of a static parking page could well not amount to a legitimate use of the Domain Name, and Respondent’s failure to reply to Complainant’s cease and desist letter amounts to tacit acceptance of the allegations therein.
In respect of the third element, Complainant alleges that Respondent has registered and is using the Domain Name in bad faith. The Mark is well-known and has been used extensively since 1866, and therefore it is inconceivable that Respondent was unaware of its existence. Previous UDRP panels have held that the misappropriation of a well-known trademark by itself constitutes bad faith registration under the Policy, and previous UDRP panels have also recognized that the Mark is a well-known trademark. Respondent’s actual knowledge of Complainant and its marks is evidenced by the fact that Respondent used the Domain Name to send fraudulent emails from email addresses based on the Domain Name. It is established that use of a domain name for the purpose of defrauding Internet users by the operation of fraudulent or phishing schemes clearly demonstrates registration and use in bad faith. Finally, use of a privacy service and failure to respond to the cease and desist letter are additional circumstances evidencing bad faith. The particular privacy service selected by Respondent is frequently used by cybersquatters and is frequently named as a co-Respondent in other decisions of the Center. Respondent James Onuoha Doe is already involved in another UDRP proceeding. Finally, Complainant has active business operations in Central and West Africa, further supporting Complainant’s assertion that Respondent was aware of it. Complainant requests the transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent has registered and is using the domain name in bad faith. A. Identical or Confusingly Similar
Complainant has provided ample evidence establishing that it has trademark rights in the Mark, through national and international registrations and longstanding use of the Mark, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name wholly incorporates and is therefore confusingly similar to Complainant’s Mark. The Panel finds that the addition of the non-distinctive term “group” does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).
It is the well-established view of UDRP panels that the addition of a gTLD to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the trademark with permission of Complainant. Complainant’s rights in the trademark predate the registration of the Domain Name by more than a century.
The circumstances indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name (comprising Complainant’s Mark and a non-distinctive term) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1). Previous UDRP panels have identified the term “group” as a term that confers no distinctiveness because it is descriptive of the organizational structure of corporate entities (see, for example, Renault SAS v. Contact Privacy Inc. Customer 1243618345 / Alonso,WIPO Case No. D2018-2915). Further, the evidence presented clearly demonstrates that the Domain Name was used by Respondent to generate fraudulent emails impersonating Complainant for phishing purposes. Such a use cannot support a finding of rights or legitimate interests in the Domain Name (see WIPO Overview 3.0, section 2.13.1 and cases cited.).
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see, for example, L’Oréal v. Zhao Jiafei,WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating Complainant and defrauding Internet users. Complainant’s rights in the Mark predate the registration of the Domain Name by more than a century. The Mark is wel-known, having been used and promoted extensively by Complainant worldwide for many years. The Domain Name contains Complainant’s Mark in its entirety with the addition of the non-distinctive element “group”. The fact that Complainant is an entity that belongs to the Nestlé Group only increases the likelihood of confusion. There can be no doubt that Respondent chose the Domain Name in full awareness of Complainant’s Mark.
The evidence also demonstrates that Respondent used the Domain Name in bad faith. The fraudulent “job application” document and email messages created by Respondent incorporate the Domain Name and false contact information implying association with Complainant. It is apparent that Respondent has attempted to impersonate Complainant and mislead Internet users by claiming association with Complainant to obtain applicants’ personal data. In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent used the Domain Name for the purpose of exploiting Complainant’s Mark.
Finally, additional circumstances further support a finding of bad faith: Respondent’s failure to respond to Complainant’s cease and desist letter; Respondent’s failure to file a substantive response to the Complaint and Respondent’s use of privacy services (see WIPO Overview 3.0, section 3.1.1), and the pattern of activity demonstrated by Respondent and by the privacy service selected to shield its identity.
The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy. 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 Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 7, 2019
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