The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Gabriel Guzman Sanchez, Hosting Titan, S.A. de C.V., Mexico. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name The Center verified that the Complaint together with the amendment to 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 November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2019. The Complainant submitted a supplemental filing on December 10, 2019 requesting the addition of the domain name The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 17, 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. The Panel granted the addition of the additional disputed domain name to the proceeding instructing the Center to obtain a registrar’s verification for the additional disputed domain name. On December 23, 2019, 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. On December 24, the Panel issued a Panel Order notifying the Respondent the addition of the additional disputed domain to the proceeding and granting the Respondent ten calendar days to submit its arguments regarding the additional disputed domain name, the due date for the arguments being January 3, 2019. The Respondent did not submit any Response. The Complaint has been filed against Registration Private, Domains By Proxy, LLC and Gabriel Guzman Sanchez. The Panel will indistinctively refer both as the Respondent in the below decision. 4. Factual Background The Complainant is a Swiss company part of Nestlé S.A., which is an international company founded in 1866 primarily operating in the food industry, with products sold worldwide in over 190 countries, including the United States and Mexico, about 328,000 employees, and more than 400 production centers in 80 countries. The Complainant operates under the trademark NESTLÉ or variations of this mark, as well as many other trademarks, which identify the Complainant’s products range including, among others, baby foods, breakfast cereals, chocolate & confectionery, coffee & beverages, bottled water, dairy products, ice cream, prepared foods, food services or pet food. The Complainant holds registered trademark rights in the mark NESTLÉ (or variations thereof) in many jurisdictions, being the owner of a substantial trademark portfolio, of which the following are sufficiently representative for the present proceeding: - International Trademark No. 400444, NESTLÉ, figurative mark, registered July 16, 1973, in classes 1, 5, 29, 30, 31, 32, and 33; - International Trademark No. 479337, NESTLÉ, word mark, registered August 12, 1983, in classes 1, 5, 29, 30, 31, 32, and 33; - International Trademark No. 490322, NESTLÉ, figurative mark, registered November 27, 1984, classes 1, 5, 29, 30, 31, 32, and 33; - International Trademark No. 511513, NESTLÉ, word mark, registered April 03, 1987, in classes 3 and 16; - United States Trademark No. 188,089 NESTLÉ, word mark, registered August 19, 1924 (claiming priority dating back to October 2, 1905), in class 30; - United States Trademark No. 1,105,743 NESTLÉ, figurative mark, registered November 7, 1978, in class 30; - United States Trademark No. 1,534,496 NESTLÉ, word mark, registered April 11, 1989, in classes 29 and 30; - United States Trademark No. 380,007 NESTLÉ, figurative mark, registered August 6, 1940, in classes 1, 5, 29, 30, 31 and 32; - Mexican Trademark No. 176325 NESTLÉ, figurative mark, registered April 1, 1973, in classes 1, 2, 3, 4, 6, 13, 17, 18, 19, 20, 21, 22, 25 and 31; - Mexican Trademark No. 119592 NESTLÉ, word mark, registered October 1, 1964, in classes 2, 5, 29, 30, 31 and 32. The Complainant further owns numerous domain names comprising its trademark NESTLÉ, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its products. Among others, The disputed domain name Key contentions of the Complaint may be summarized as follows: The Complainant is the world's largest food consumer products company in terms of sales, being ranked in the “Fortune Global 500” in various top positions, and being the mark NESTLÉ ranked in the “Interbrand’s annual Best Global Brands” for 2017 as the 59th most valuable trademark, estimated in USD 8,728 million. Through extensive and continued use and promotion over 140 years (with significant investments in R&D and marketing, global advertising campaigns through television and other mass media, as well as via Internet in the most popular social media), the trademark NESTLÉ has acquired substantial reputation, being well known worldwide, including in the United States and Mexico. The well-known character of the mark NESTLÉ has been recognized by various prior decisions under the Policy. In the United States, the Complainant operates since the early 1900s, with 120 locations in 47 states, including 75 production and 10 R&D facilities, and employs over 50,000 people. In Mexico, the Complainant operates since 1930, with various subsidiaries (one of them Nestle México S.A. de C.V.), and 12 factories (one of them located in the same address in Toluca de Lerdo, Mexico, indicated in the Respondent’s website contact section). The disputed domain names are confusingly similar to the Complainant trademark. The disputed domain names incorporate the mark NESTLÉ adding the terms “autos” or “remates”, which do not affect to the confusing similarity. The omission of the accent from the last letter “e” of the mark NESTLÉ, as well as the addition of a hyphen in the additional disputed domain name, are irrelevant or insufficient to reduce the confusing similarity for the purposes of the Policy, and the gTLD “.com” is merely instrumental to the use of the Internet. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee or has been authorized in any other way to use the trademark NESTLÉ. There is no evidence that the Respondent (as an individual, business, or other organization) is commonly known by the names corresponding to the disputed domain names, having used a privacy shield to conceal its identity, and not having reply to the cease and desist letter and subsequent reminders. On September 26, 2019, the Complainant sent a cease and desist letter to the Respondent (via email, to the email address indicated in the WhoIs and to the one published on the Respondent’s website) and a subsequent reminder, but no reply was received. Further, the Respondent has not provided any evidence of use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are used for fraudulent purposes redirecting to a website that reproduces the look and feel of the Complainant’s corporate website for Mexico, displaying (with no authorization) trademarks and protected contents taken from said Complainant’s corporate site, misusing a Complainant’s subsidiary name (Nestle México S.A. de C.V.) and one of the Complainant’s factories addresses in Mexico. This site promotes the sale of second hand cars by misleading Internet users as to its source, sponsorship or affiliation, not providing any disclaimer of non-affiliation, showing the intention to trade off the Complainant’s trademark to promote the Respondent’s website and business. Various Internet users’ complaints related to the Respondent’s site requesting confirmation of its origin evidence the confusion. The disputed domain names were registered and are being used in bad faith. Due to the well-known character of the trademark NESTLÉ and its extensive use worldwide (including the United States and Mexico), it is inconceivable that Respondent was unaware of this mark and its worldwide reputation at the time of the disputed domain names’ registration. The fact that the trademark NESTLÉ is also published on the Respondent’s website corroborates the registration in bad faith. Furthermore, the disputed domain names have been used in bad faith impersonating the Complainant and its affiliated companies and factories, copying with no authorization contents taken from the Complainant’s corporate site and imitating the Complainant’s website look and feel, with the intention to exploit the Complainant’s reputation in order to promote the Respondent’s business. The Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks according to paragraph 4(b)(iv) of the Policy. Further evidences of bad faith are the failure of response to the Complainant’s cease and desist letter, and the use of a privacy protection service to conceal the Respondent’s identity. The Complainant request, in a supplemental filing, the addition to this proceeding of the additional disputed domain name ( The Respondent’s registration of the additional disputed domain name, incorporating the mark NESTLÉ, after having received notice of the dispute, constitutes a further evidence of the Respondent’s bad faith. The Complainant has cited previous decisions under the Policy as well as various paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute. Paragraph 15(a) of the Rules provides that “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”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A. Preliminary Issue: Addition of a Domain Name to the Proceeding The Panel’s decision to accept the addition of the additional disputed domain name to this proceeding is based on consideration of the following: - The addition of domain names after the filing of a Complaint has been allowed in the past in other UDRP proceedings, see section 4.12.2, WIPO Overview 3.0; - Paragraphs 10(a), 10(b), and 10(e) of the Rules, titled “General Powers of the Panel” explicitly provide the following: “(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”; - In the proceeding at issue, the Complainant and the Respondent are the same with respect to both domain names, and the factual background is very similar, being both disputed domain names linked to the same website and being both disputed domain names similar, both incorporating the term “nestle” followed by an additional word, “autos” or “remates”, the last separated by a hyphen; - The disputed domain name - It is expedient to hear and determine the Complaint regarding both disputed domain names together in order to avoid the potentially varying decisions resulting from separate proceedings and to incur supplemental unnecessary costs for the Complainant. A. Identical or Confusingly Similar In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of WIPO Overview 3.0. Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0. The Complainant indisputably has rights in the registered trademark NESTLÉ. The disputed domain names incorporate this trademark in its entirety (with no accent on its last letter “e”), followed by the terms “autos” (“vehicles”) and “remates” (“auctions”), the last separated by a hyphen, which do not avoid confusing similarity with the mark. The Complainant’s trademark NESTLÉ is directly recognizable in the disputed domain names, and the gTLD “.com” adds no distinctive meaning, being a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests. The Complainant has stated that the Respondent is not a licensee or has been otherwise authorized to use the trademark NESTLÉ. Further, the Complainant has alleged that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names and the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, trading off the Complainant’s reputed trademark to promote the Respondent’s website and business. This effectively shifts the burden to the Respondent of producing rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation: “(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 organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.” It is noteworthy the Respondent chose not to reply to the Complainant’s cease and desist letter and subsequent reminders, or to the Complaint, not providing any explanation connected to the above-mentioned circumstances or any other that may be considered as a fair use or legitimate interests in the disputed domain names. The evidences in the file show the disputed domain names are linked to a website, which indicates in its heading, within its tab interface, and in its content, as the website owner, the Complainant’s mark NESTLÉ and its logo, referring in its contact section to one of the Complainant’s subsidiaries in Mexico (Nestle México S.A. de C.V.), and the address of one of its factories in this country. This website further includes the same slogan and various photographs used in the Complainant’s corporate websites, and offers online selling of second hand vehicles of various trademarks, including the prices in Mexican pesos. The Respondent’s name, according the Registrar verification, does not appear in this site, not providing any reference or details regarding its ownership or that of the disputed domain names. Further, this site does not reveal the Respondent’s lack of relationship with the Complainant. On the contrary, its content creates an impression of affiliation with the Complainant. A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s trademark in its entirety adding dictionary terms (“autos” (or “vehicles”), and “remates” (or “auctions”)), which refer to the Respondent’s business in the second hand car sector, giving the impression of being a website and a business linked to or owned by the Complainant or Nestlé S.A. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel further notes the extensive presence of the trademark NESTLÉ over the Internet, as well as the extensive use of this mark worldwide, including Mexico, where the Respondent is apparently located, according to the information received by the Registrar, and operates, according to the website content linked to the disputed domain names. Furthermore, the Panel notes the continued use of the trademark NESTLÉ, for over 140 years, and that, in Mexico, the Complainant’s group operates since 1930 through various subsidiaries (Nestlé México, S.A. de C.V. and Nestlé Servicios Corporativos, S.A de C.V.) and has 12 factories (one of which is located in the address included in the Respondent’s website contact section). The Panel, in use of the general powers articulated in the Policy, has consulted the Complainant’s corporate websites under The Panel further considers that the use of the disputed domain names linked to a website containing official images of the Complainant’s products, as well as references to the trademark NESTLÉ and other trademarks and products commercialized by the Complainant, and including information about the Complainant business philosophy and history, contributes to a high risk of affiliation and confusion. The website linked to the disputed domain names does not include any clear reference to its ownership or that of the disputed domain names, nor does it include any reference to the lack of relationship with the Complainant’s trademark and business. All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.” At the time of the disputed domain names’ registration, this Panel considers unlikely that the Respondent did not know about NESTLÉ mark, and did not have it in mind. Several factors in this case lead to this conclusion. Primarily, that the Respondent copied content from the Complainant’s main corporate page readily dispels any question of bad faith. The Panel moreover notes the extensive presence of the trademark NESTLÉ over the Internet, as well as its extensive use and promotion worldwide, including Mexico, where the Respondent is located (according to the information provided by the Registrar). The Complainant’s trademark is being used and registered for more than 140 years and extensively promoted worldwide in the traditional mass media, including television, as well as on the Internet in the main social media networks. All evidence in the file leads the Panel to consider the trademark NESTLÉ well known, being popular to the public in general. Further, the term “nestlé” is a fanciful term, being the Complainant’s founder surname and not being commonly used in the automobile industry or in the food industry unless to identify the Complainant’s products. Under these circumstances, the disputed domain names incorporate the Complainant’s trademark in its entirety, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation, adding the descriptive terms “autos” and “remates”, which refer to the Respondent’s business in the second hand car sector. In addition, the disputed domain names are used in connection to a website that refers to the Complainant, its products and trademarks, which increases the intrinsic risk of confusion and association. Furthermore, said website does not include any clear reference to its ownership or that of the disputed domain names, not indicating its owner fiscal number, legal registration, or any reference to its social form and/or country of incorporation. The sole contact details included in this website are an email, a telephone number and a contact form, as well as the location of one of the Complainant’s factories as contact address and including various references to one of the Complainant’s subsidiaries in Mexico, which reinforces the confusion and affiliation. The Panel further notes that the contact details of the WhoIs were private and the Respondent chose not to reply to the cease and desist letter and subsequent reminders, to the Complaint or to the addition to this proceeding of the additional disputed domain name, which are further evidence of bad faith. Furthermore, the Panel considers that the Respondent’s registration of the additional disputed domain name, after having received notice of the dispute, and the redirection of the disputed domain name The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following: “(i) circumstances indicating that you have registered or you have acquired the domain names 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; or (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 (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; 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.” Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain names were registered and used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business, as per paragraph 4(b)(iv) of the Policy. It is further possible that the Respondent may attempt to obtain private information and data from its website visitors or through emails connected to the disputed domain names, as well as funds deposits from potential customers, based on the association with the Complainant and the reputed trademark NESTLÉ, in a fraudulent or phishing scam. All the above-mentioned lead the Panel to conclude that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain names in bad faith under the third element 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 names, Reyes Campello Estebaranz
Sole Panelist
Date: January 9, 2020
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