The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Contact Privacy Inc. Customer 1246646862, Canada / Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 7, 2020. 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 April 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2020. The Center received two email communications from a third party on April 28 and May 1, 2020. The Respondent did not submit any response. The Center notified the Parties on May 4, 2020, that it would proceed to panel appointment. The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 8, 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 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, coffee and beverages, bottled water, dairy products, ice cream, prepared foods, and food services, as well as pet food. The Complainant markets its products worldwide in over 190 countries, including the United States of America and Canada. The Nestlé Group has about 328,000 employees with more than 400 production centers worldwide. The Complainant is the registered owner of over 2,250 international and national trademark registrations worldwide for NESTLÉ (or variations thereof), such as International Registration No. 400444 registered on July 16, 1973, and International Registration No. 479337 registered on August 12, 1983. The Complainant has registered domain names that incorporate the Complainant’s trademarks, including The Domain Name was registered on March 10, 2020. At the time of the Complaint and at the time of drafting the Decision, the Domain Name resolved to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant has registered trademark rights in NESTLÉ. The Complainant submits that the Domain Name incorporates the whole of the Complainant’s trademark. The fact that the Domain Name differs from the Complainant’s trademark by the addition of “uk” and of hyphens, does not affect the confusing similarity. The omission in the Domain Name of the accent in NESTLÉ, is insufficient to reduce the confusing similarity. The Complainant submits that the Respondent is not authorized to make use of the Complainant’s trademark. The Complainant is not aware of any evidence that the Respondent is commonly known by a name corresponding to the Domain Name. The Domain Name has been used for fraudulent purposes. The Respondent has created email addresses based on the Domain Name to impersonate employees of the Complainant’s subsidiary and dispatch email communications to third-parties to request unauthorized payment on behalf of Nestlé Group. The Complainant argues that the Respondent’s passive holding of the Domain Name, the Domain Name does not resolve to an active webpage, does not give rise to any possible legitimate interests of the Respondent in the circumstances of this case. The Complainant argues that NESTLÉ is well-known and has been used since 1866. It is inconceivable that the Respondent was unaware of the existence of the Complainant’s trademark at the time of registration of the Domain Name. As to bad faith use, the Domain Name has been used in connection with fake email accounts/phishing. In the Complainant’s view, this constitutes use in bad faith. Moreover, the Respondent has failed to respond to the Complainant’s cease and desist letter, and the Respondent has used a privacy protection service to conceal its identity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established rights in the trademark NESTLÉ. The test for confusing similarity involves the comparison between the trademark and the domain name. In this case, the Domain Name incorporates the Complainant’s trademark with the addition of “uk” and hyphens, and the omission of the accent in NESTLÉ. This slight alteration does not prevent a finding of confusing similarity. For assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to use the Complainant’s trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The way the Respondent has used the Domain Name for fraudulent purposes/phishing, is not bona fide or fair. The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Taking into account the fame of the Complainant’s trademark and the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant when the Respondent registered the Domain Name. The Respondent has attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Domain Name has been used in connection with fake email accounts/phishing. The use of privacy protection service and most likely false contact details, and the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith. The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name Mathias Lilleengen 1 The Respondent appears to have used the name and contact details of a third party when registering the Domain Name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
Sole Panelist
Date: May 15, 2020
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