Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant July 4, 2020 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 July 6, 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2020. The Center appointed Scott R. Austin as the sole panelist in this matter on August 31, 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 Complainant is a member of the Nestlé Group of companies, whose business was founded over 130 years ago and is the world’s largest food consumer products company in terms of sales. Nestlé Group has about 328,000 employees and it is present in more than 80 countries with more than 400 production centers worldwide. Complainant is the registered owner of the majority of the trademarks of the Nestlé Group, including international and national trademark registrations worldwide for the mark NESTLÉ (the “NESTLÉ Mark”), such as United States Trademark Registration No. 0188089, registered on January 4, 1924, and International Trademark Registration. No. 400444, registered on July 16, 1973. Complainant operates the website “www.nestle.com” as its primary web portal for global promotion and owns variations of the term “Nestlé” as domain names in numerous generic Top-Level Domains and country-code Top-Level Domains to protect the NESTLÉ Mark on the Internet. The disputed domain name Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain names; and, that the disputed domain names were registered and are being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and, (iii) the disputed domain names have been registered and are being used in bad faith. The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the NESTLÉ Mark. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Panel finds here that each of the disputed domain names wholly incorporates Complainant’s registered NESTLÉ Mark. Prior UDRP panels have also considered the addition or deletion of grammatical marks such as hyphens, apostrophes, and circumflexes to be irrelevant changes, and do not prevent the finding of identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy. See, Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300. Accordingly, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627. Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain names. First, Complainant asserts that it has not licensed or otherwise permitted Respondent to use the NESTLÉ Mark in any manner. Complainant has also submitted persuasive evidence in the record that Respondent is not commonly known by either of the disputed domain names, and given the use of the privacy shield to conceal its identity, Respondent cannot have been commonly known by the disputed domain names before any notice of the dispute. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. Further, Complainant has submitted evidence in the record to support its contention that each disputed domain name resolved to webpages hosting sponsored pay-per-click (“PPC”) links to generate revenues for Respondent and redirect users to websites selling products that make explicit reference to Complainant’s well-known NESTLÉ Mark, as well as websites selling products of competitors. Prior UDRP panels have consistently held that respondents that monetize domain names using PPC links targeting the complainant have not made a bona fide offering of goods or services nor fair use without intent for commercial gain that would give rise to rights or legitimate interests in a disputed domain name. Respondent, therefore, is neither using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii). See, WIPO Overview 3.0, section 2.9. See also, Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any argument or evidence to rebut Complainant’s case. Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant’s famous NESTLÉ Mark is recognized and registered around the world, where Respondent is located, and has been used to identify products provided to millions of consumers for over 130 years. It is implausible, therefore, to believe that Respondent was not aware of that mark when it registered the confusingly similar disputed domain names incorporating the NESTLÉ Mark assessed in section 6.A. above. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4. See also, Société des Produits Nestlé SA v. Kayvan Sadeghi,WIPO Case No. DIR2007-0002. The Panel finds that Respondent’s registration of the disputed domain names with awareness of Complainant’s famous NESTLÉ Mark and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See, WIPO Overview 3.0, section 3.2.1. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019-0624. Based on the website to which each disputed domain name resolves, as discussed in detail under Section 6B above, Complainant submits that Respondent’s conduct, misappropriating Complainant’s NESTLÉ Mark to host PPC links to various commercial web sites selling Complainant’s and competitors’ coffee products, generates commercial gain by creating a likelihood of confusion with Complainant’s mark and thereby demonstrates bad faith use under Policy paragraph] 4(b)(iv). Prior UDRP panels have found bad faith registration and use under Policy paragraph 4(b)(iv) where, as here, a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. See WIPO Overview 3.0, section 3.5. See also, Skyscanner Limited v. Domain May Be for Sale, Check Afternic.com Domain Admin, Domain Registries Foundation,WIPO Case No. D2018-1987. Moreover, Complainant has shown the disputed domain name Finally, Complainant has submitted evidence showing Respondent has engaged in a pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy. In its Amended Complaint following revelation of the registrant data naming Respondent Carolina Rodrigues, Fundacion Comercio Electronico, Panama, Complainant has shown involvement of this named Respondent in 93 prior UDRP decisions, most decided in favor of complainants. Prior panels have recognized that bad faith registration and use may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. See WIPO Overview 3.0, section 3.1.2. See also, Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0018 (finding pattern of bad faith registration and use under paragraph 4(b)(ii) of the Policy where “[i]n over 80 cases Respondent was found to have targeted some of the world’s most well-known brands and registered and used domain names in bad faith, all of which resulted in decisions against Respondent”). For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under 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 disputed domain names Scott R. Austin
Sole Panelist
Date: September 14, 2020
Full & Egal Universal Law Academy