The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondents are WhoisGuard Protected / WhoisGuard, Inc., Panama and Mohamed Barrouchi and Red Communications Studio, Morocco. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2020, 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 the Complainant on April 22, 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 amended Complaint on April 22, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. The Response was filed with the Center through several informal emails between April 28, 2020 and May 19, 2020. The Center appointed Christine Féral-Schuhl as the sole panelist in this matter on May 26, 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 Société des Produits Nestlé S.A., a Swiss company that is wholly owned by Nestlé Group, which was founded in 1866 and sells products and services all over the world in various industries but primarily in the food industry. The Complainant markets its products worldwide in over 190 countries, and Nestlé Group has about 328,000 employees and more than 400 production centers worldwide and is the world’s largest food consumer products company in terms of sales. The Complainant is the owner of over 600 registrations worldwide for NESPRESSO trademark and variations thereof, including: - The International word Trademark NESPRESSO No. 777873 registered on March 14, 2002, in classes 7, 9, 11, 21, 30 and 38. - The International semi-figurative Trademark NESPRESSO No. 1054554 registered on September 13, 2010, in classes 9, 11, 16, 21, 29, 30, 35, 37, 39, 40, 41, 42 and 43; - The International word Trademark NESPRESSO No. 499589 registered on December 10, 1985 in class 30. - The European Union word Trademark NESPRESSO No. 002793792 registered on July 31, 2002 in classes 7, 9, 11, 21, 30, 35, 37, 39, 41 and 43. - The International semi-figurative Trademark NESPRESSO No. 1122907 registered on June 18, 2012 in classes 7, 11, 16, 21, 29, 30, 35, 37, 39, 40, 41, 42 and 43. The Complainant also owns numerous domain names that are comprised of the NESPRESSO term and variations thereof, including “nespresso.com”, registered on February 1, 1999 and duly renewed since then, which the Complainant operates as its primary web portal for global promotion. The disputed domain name At the time of the decision, and after the Complainant requested the hosting provider of this website to block its access, the disputed domain name resolves to a hosting provider’s page. 5. Parties’ Contentions A. Complainant In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below. First of all, the Complainant asserts that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights, since it incorporates the whole NESPRESSO trademark, the addition of the non-distinctive element “home” not affecting the confusing similarity. The Complainant underlines that the addition of the element “home” to the distinctive sign NESPRESSO can, on the contrary, increase this confusion. Secondly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the domain name, since the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use Complainant’s trademark NESPRESSO, and since there is no evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed domain name. The Complainant adds that the Respondent has not provided the Complainant with any evidence of use of, or demonstrable preparations to use, the disputed domain name with a bona fide offering of good and services. Furthermore, according to the Complainant, the fact that the disputed domain name redirected to a commercial website publishing the NESPRESSO trademarks and offering for sale unauthorized NESPRESSO products without any disclaimer tend to prove that the Respondent did not intend to use the disputed domain name in connection with any legitimate purpose. The Complainant also highlights that the Respondent did not reply to the cease and desist letter sent by its authorized representative. Finally, the Complainant considers that the disputed domain name was registered and used in bad faith, since the Respondent could not have been unaware of the existence of the NESPRESSO trademarks when it registered the disputed domain name, given the reputation of the NESPRESSO trademarks. The Complainant reminds as well that the misappropriation of a well-known trademark as a domain name by itself constitutes bad faith registration, and contends that the Respondent had a clear intention to refer to the NESPRESSO trademarks in order to capitalize on NESPRESSO reputation by diverting Internet users seeking information about the Complainant to its own commercial website. The Complainant claims that the use of the disputed domain name in connection with a website generating the impression to be official clearly demonstrates that the only purpose of the Respondent is to use the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to such website, by creating a likelihood of confusion with the NESPRESSO trademarks as to the source or affiliation of its website and taking unfair advantage from the well-known character of the NESPRESSO trademarks for Respondent’s personal profit. The Complainant asserts that the fact that the disputed domain name is currently pointing to a modified website does not per se prevent the Panel from finding that it is still used in bad faith. The Complainant finally underlines that Respondent’s failure to respond to its cease and desist letter has also to be taken into consideration, and that the use of the privacy shield is a clear indication as to its intentions to evade the consequences of registering a domain name that is used for infringing purposes. In its amendment to the complaint, the Complainant argues that both the privacy protection services WhoIs Guard Protected and the alleged underlying registrant of the disputed domain name should be considered as Respondents in the present administrative proceeding, since such a privacy service is frequently used by cybersquatters to conceal their identity. B. Respondent The Respondent, Mohamed Barrouchi from Red Communication Studio, which is asserting to be a “communication agency”, sent several emails to explain that he registered the disputed domain name at the request of his client, LVS Capitale Ltd. He is claiming that this Bulgarian company had asked Red Communication Studio to create a website in order to sell NESPRESSO products in Europe. The Respondent Mohamed Barrouchi ensures that he acted in good faith and that he contacted his client in order to stop the use of the website of the latter as soon as he received the complaint. The Respondent Mohamed Barrouchi underlines that he remains available for any question and for solving this issue, including by transferring the disputed domain name to the Complainant. The Panel notes that the Center received an email from Mr. Doctor Abdelkrim Adyel on May 4, 2020 claiming to be the Respondent’s authorized representative, but did not receive further email communications from this entity. 6. Discussion and Findings I. Procedural aspects: Co-Respondents As requested by the Complainant and as regularly decided by UDRP Panels, regarding the fact that the WhoIs privacy service is frequently used by cybersquatters to conceal ther identity, the Panel finds it appropriate to retain both WhoIs Guard Protected and Mohamed Barrouchi (and Red Communications Studio) as Respondents in this proceeding. II. On the substance Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements: (i) the disputed domain name is identical 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel finds that the Complainant has provided evidence that it has rights in the NESPRESSO trademark. Then, the Panel notices that the disputed domain name is composed of (i) the entire NESPRESSO trademark, to which has been added the term “home”, and (ii) the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. 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 confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). Moreover, the Panel concurs with the opinion of several prior UDRP panels, which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regarding the disputed domain name, the Panel finds that the addition of the dictionary term “home” to the NESPRESSO distinctive sign does not exclude confusing similarity. Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s 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 (as an individual, business, or other organization) 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. According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainant has shown prima facie that the Respondents have no rights or legitimate interests in respect of the disputed domain name, since the Complainant has not authorized the Respondents to register and use the NESPRESSO trademark in any way. Moreover, the disputed domain name used to resolve to a website that misappropriated the NESPRESSO sign and through which NESPRESSO products were sold without authorization, and now does not resolve to an active website, which does not represent a bona fide offering of goods or services. The Respondents did not reply to the Complainant’s contentions relating to this lack of rights or legitimate interests. Therefore, the Panel considers that the Respondents do not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith. Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: “(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 a preliminary, the Panel has taken note of the Respondent Mohamed Barrouchi’s statements that he registered the disputed domain name at the request of one of its clients and not for its own use. Nevertheless, the Panel finds that the Respondent Mohamed Barrouchi does not provide any evidence of this statement. In addition, the fact remains that the disputed domain name was registered after the registration of the NESPRESSO trademarks, that have furthermore been recognized as well-known. As reminded by the Complainant, according to previous UDRP decisions, “the registration of a domain name that is identical or confusingly similar (…) to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith” (see Section 3.1 of the WIPO Overview 3.0). Moreover, the Panel finds that the disputed domain name has been registered and used in connection with a website that represented the NESPRESSO trademarks, and through which were sold unauthorized NESPRESSO products, giving Internet users the impression of being an official NESPRESSO website. The Panel infers from these elements that the disputed domain name has been registered and used in order to attract, for commercial gain, Internet users to the website it resolved to, by creating a likelihood of confusion with the NESPRESSO trademarks as to the source, sponsorship, affiliation, or endorsement of this website or of a product or service on this website. The addition of the dictionary term “home” to the NESPRESSO trademark emphasizes the likelihood of confusion since the term “home” is likely to lead Internet users to think that they are facing an official website. In view of those elements, the Panel finds that the fact that the disputed domain name is now resolving to a hosting provider’s page is not likely to avoid the finding of registration and use in bad faith. Consequently, the Panel considers that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii). Finally, the Panel wishes to remind that where parties to a UDRP proceeding have not settle their dispute prior to the issuance of a panel decision using the “standard settlement process”, but where the respondent has nevertheless given its consent on the record to the transfer remedy sought by the complainant, many panels order the requested remedy solely on the basis of such consent. In some cases, despite such respondent consent, a panel may in its discretion find it appropriate to proceed to a substantive decision on the merits, including (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that is possesses relevant trademark rights (see Section 4.10 of the WIPO Overview 3.0). In this case, the Respondent Mohamed Barrouchi indicated that he remained available to transfer the disputed domain name to the Complainant. The Panel notes that the Complainant refused to implement a settlement agreement as proposed by the Center as previous attempts to resolve the dispute before the filing of this UDRP complaint were unsuccessful. Accordingly, there is ambiguity as to the scope of the Respondent’s consent. For all these reasons, the Panel decided to proceed to this substantive decision on the merits. 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 Christiane Féral-Schuhl
Sole Panelist
Date: June 9, 2020
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