The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero S. p. A., Italy.
The Respondent is Wen Jianhui, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 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 26, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on December 27, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. The Response was filed with the Center in Chinese and English on February 12, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on February 25, 2020. 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 part of the Nestlé company founded in 1866 by Henri Nestlé. It is the registered owner of the majority of the trademarks of the Nestlé Group, which sells products and services primarily in the food industry, including baby foods, breakfast cereals, chocolate and confectionery, coffee and beverages, bottled water, dairy products, ice cream, prepared foods, food services as well as pet food. The Complainant markets its products in over 190 countries, including China, which is currently its second-largest market in the world. In China, the Nestlé Group has 33 production sites, three R&D centers, two innovation centers, a food safety institute, a dairy farming institute and one coffee center. The Complainant owns multiple trademark registrations in multiple jurisdictions including Chinese trademark registrations numbers 28845, 268255, 262460, 382754 and 269048, all for NESTLÉ, registered on October 1, 1958; November 10, 1986; September 10, 1986; September 10, 1986; and November 20, 1986, respectively, and specifying goods in International classes 29, 5, 30, 32 and 5, respectively. Those trademark registrations remain in effect. The Complainant has also registered the domain names The Respondent is an individual resident in China. The disputed domain name was registered on December 19, 2018. From the following day, the disputed domain name was offered for sale on a broker’s website for the price of CNY 38,888. The disputed domain name formerly redirected to a landing page displaying sponsored links to other websites related to NESTLÉ products. The landing page also displayed a notice that the disputed domain name was for sale, with a hyperlink to another broker’s website where the disputed domain name was offered for sale for a minimum of USD 900. In email communications dated January 12, 15, and 19, 2020, the Respondent indicated to an agent of the Complainant that he planned to use the disputed domain name for e-commerce to sell bird’s nest sculpture souvenirs and that he was not planning to sell it. The Respondent indicated that he was nevertheless willing to transfer the disputed domain name to the intermediary and provided a link to the broker’s website offering the disputed domain name for CNY 38,888. The disputed domain name remains registered at the time of this decision. 5. Parties’ Contentions A. Complainant The disputed domain name is identical to the Complainant’s NESTLÉ trademark. The disputed domain name in fact incorporates the Complainant’s NESTLÉ trademark in its entirety, without any alteration that might distinguish disputed domain name from the mark. Although the disputed domain name omits the accent from the last letter of NESTLÉ, the addition or deletion of grammatical marks such as hyphens, apostrophes and circumflexes is insufficient to reduce the identity or confusing similarity. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s NESTLÉ trademark. The Complainant is not in possession of, nor aware of the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization. The disputed domain name redirects to a webpage displaying pay-per-click links that generate revenues. The links make explicit reference to well-known trademarks and products of the Complainant. The disputed domain name is not used in connection with any dictionary meaning. The disputed domain name has been registered and is being used in bad faith. In light of the fact that the distinctive sign NESTLÉ is well known, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s registered trademark and its worldwide reputation at the time of registration of the disputed domain name. The Respondent's purpose in registering the disputed domain name, which incorporates the NESTLÉ mark in its entirety, was probably to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking information about this distinctive sign to its own website, where sponsored links were published. Furthermore, the Respondent requested CNY 38,888 for the transfer of the disputed domain name which is an amount well in excess of the out-of-pocket costs directly related to the disputed domain name. B. Respondent The Respondent submits that he is the legal holder of the disputed domain name and that “nestle” is a common word that no one can take for himself or have exclusive rights over. The Respondent alleges that the Complainant is a cheat, that the disputed domain name renewal fee has not been paid and that the Complainant has a record of cheating dispute settlement providers and lawful domain name registrants. This proceeding should be terminated forthwith. 6. Discussion and Findings 6.1 Procedural Issues A. Late Submission of the Response The Respondent sent his email communication to the Center on February 12, 2020, 13 days after the specified due date for submission of a Response and before the appointment of the Panel. The Rules make no express provision for the filing of materials by either party at this stage of the proceeding except as may be specifically requested by the Panel. However, in the circumstances of this case, the Panel does not consider that accepting this late submission causes unfairness to either Party. Therefore, the Panel decides to accept the Response and will consider its relevance, materiality and weight. B. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that requiring the Complainant to translate the Complaint and all documents into Chinese would cause delay in contravention of paragraph 10(c) of the Rules; and that the Respondent can understand English as pre-Complaint correspondence was partly in English and the Respondent has registered various other domain names incorporating English words. Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English and the Response was filed in both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting all documents filed in their original version and rendering this decision in English will not cause unfairness to either party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents as filed without requiring a translation. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the NESTLÉ mark. The disputed domain name wholly incorporates the NESTLÉ trademark. The disputed domain name does not display the accent above the final “e” in the trademark but, visually, this difference is so minor that it does not dispel confusing similarity between the disputed domain name and the trademark. See, for example, Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300. The disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, i.e., “.store”. As a mere technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy, unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name, which is confusingly similar to the Complainant’s NESTLÉ trademark, formerly redirected to a landing page displaying sponsored links related to the Complainant’s products. The Complainant states that the Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s NESTLÉ trademark. The disputed domain name no longer resolves to any active website. The Panel does not consider either of these uses to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent’s name is listed in the Registrar’s WhoIs database as “Wen Jianhui”, not “nestle”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The disputed domain name formerly redirected to a landing page displaying sponsored links that either operated for the commercial gain of the Respondent or for the commercial gain of the operators of the linked websites, or both. In any such scenario, this is not a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he points out that “nestle” is a dictionary word (in the English language). In pre-Complaint correspondence, he claimed that he intended to use the disputed domain name for e-commerce to sell bird’s nest sculpture souvenirs. The Respondent provides no evidence in support of this assertion. Nor does the Respondent explain why he would choose to register the word “nestle” in a domain name for use in connection with the meaning of the word “nest”. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;” and “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.” As regards registration, the Respondent registered the disputed domain name in 2018, decades after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The disputed domain name incorporates the Complainant’s NESTLÉ trademark, minus the diacritical mark, as its only distinctive element. The disputed domain name is used to attract Internet users to a landing page displaying sponsored links that are based on the trademark value of the Complainant’s mark. This all gives the Panel reason to believe that the Respondent was aware of the Complainant and its NESTLÉ trademark at the time that he registered the disputed domain name and deliberately chose to register it as part of the disputed domain name in bad faith. As regards use, the disputed domain name was offered for sale since the day after its registration for at least USD 900. Later, the Respondent indicated in pre-Complaint correspondence that he was prepared to transfer the disputed domain name and directed the Complainant’s agent to a website where it was offered for CNY 38,888 (equivalent to over USD 5,000). These circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy. Further, the landing page to which the disputed domain name formerly resolved displayed sponsored links to other websites related to the Complainant’s products. The disputed domain name operated by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the landing page. This use was intentional and either for the Respondent’s own commercial gain, if he was paid to direct traffic to the other websites, or for the commercial gain of the operators of the linked websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. The use of the disputed domain name has since changed as it no longer resolves to any active website. This change in use does not alter the Panel’s conclusion and may in fact be further evidence of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 Matthew Kennedy
Sole Panelist
Date: March 5, 2020
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