The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Bassem Dhaouadi, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 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 a request for clarification to the Registrar on July 31, 2020, to which the Registrar replied on August 3, 2020. The Center sent an email communication to the Complainant on August 4, 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 August 6, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on August 4, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Center also invited the Respondent to submit comments. The Complainant filed a request for English to be the language of proceedings on August 6, 2020. The Respondent did not submit any arguments. 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 in English and in French, and the proceedings commenced on August 10, 2020. On August 17, 2020, the registrant of the domain name In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. The Respondents did not formally submit any response. Accordingly, the Center informed the Parties that it would proceed to panel appointment on September 7, 2020. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on September 11, 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, Société des Produits Nestlé S.A., is a wholly owned subsidiary of Nestlé S.A. The Complainant owns most of the trademarks used under license by the Nestlé group of companies. The Nestlé group is one of the world’s largest provider of food consumer products, including products related to the preparation of coffee under the brand NESPRESSO. The Complainant’s group sells NESPRESSO products in 76 countries via “www.nespresso.com” and in more than 700 physical shops. The Complainant holds numerous trademarks for the sign NESPRESSO all over the world, including the following: - NESPRESSO, International word mark registered under No. 777873 on March 14, 2002 in classes 7, 9, 11, 21, 30 and 38; - NESPRESSO, European Union word mark registered under No. 002793792 on July 13, 2006 in classes 7, 9, 11, 21, 30, 35, 37, 39, 41 and 43. The Disputed Domain Name - “http://livfra.com/s20/S9postimdclick/index.html”, impersonating the French postal service and promoting a package allegedly containing a Samsung Galaxy S20 smartphone, inviting users to click on a link to collect it and then redirecting them to “https://campaign.budgetindex.com/fr/s45fs2g/2p/01.php”, where they were required to supply personal data in order to participate to such a purported contest to win said product (Annex 8 of the Complaint); - internal pages of the website linked to the domain name “https://www.coffretcafe.fr/”, which advertises a delivery service of coffee capsules. The registrant of this domain name stated in a letter to the Center that it has no link with the Respondent (Annex 9 of the Complaint). The Complainant provides screen prints of the above web pages but did not add any affidavit, redirection check or other evidence showing the actual redirection from the Disputed Domain Name to these web pages. However, the redirections were not contested by the Respondent either as no Response was filed. The Disputed Domain Name was subsequently deactivated. The Complainant claims that this happened following the sending of cease & desist letters to the Respondent and Registrar on June 11, 2020. 5. Parties’ Contentions A. Complainant The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the Disputed Domain Name primarily to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. B. Respondents The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue: Language of proceedings Pursuant to the Rules, Paragraph 11, in the absence of an agreement between 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. According to information received from the concerned registrar, the language of the registration agreement for the Disputed Domain Name is French. The Complaint has been submitted in English. UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include: - evidence showing that the respondent can understand the language of the complaint; - potential unfairness or unwarranted delay in ordering the complainant to translate the complaint; - other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. On panel appointment, both parties’ arguments are provided to the panel for its determination as to the language of proceeding. This may include accepting the complaint as filed, and a response in the language of the registration agreement, thereby seeking to give both parties a fair opportunity to present their case (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the present case, the Panel finds that it is not indisputably proven that the Respondent understands English. The Complainant claims that the Disputed Domain Name could have been deactivated by the Respondent following receipt of the Complainant’s cease & desist letter drafted in English, but this deactivation could also have been done by the Registrar. The Complainant further refers to social media accounts but fails to show that these accounts are linked to the Respondent. In the Panel’s view, the fact that the username or aliases of these social media accounts are “nearly the same” as the name in the email address associated with the Disputed Domain Name is insufficient to prove that these accounts are linked to the Respondent. The Panel carefully reviewed all other arguments of the Complainant but finds that these do not allow to clearly show the Respondent’s understanding of the English language. The only indication of such knowledge are screen prints from a website mentioning the Respondent’s email address, of which some parts are available in English and 16 other languages. The Panel observes that this website refers to a pizza restaurant in France. Assuming that this website is indeed operated by the Respondent, which is not demonstrated, the Panel agrees that this may indicate at least some knowledge of the English language. In any event, the Respondent was made aware of the present proceedings with a French communication from the Center and did not reply. By accepting the terms and conditions of the registration agreement in French and by the Center’s communication, the Respondent was sufficiently informed about the content of these administrative proceedings. The fact that the Respondent did not reply to any of the communications sent by the Center indicates that the Respondent deliberately opted for not taking part in the proceedings and chose not to use its right to defend itself. In such circumstances, the Panel finds that it would be a disadvantage for the Complainant to be forced to translate the Complaint. As the Respondent had ample chance to defend itself but elected not to do so, the rights of the Respondent to defend itself and the right to equal treatment are guaranteed (see INTS IT IS NOT THE SAME, GmbH (dba DESIGUAL) v. Two B Seller, Estelle Belouzard,WIPO Case No. D2011-1978). For these reasons and given the circumstances of this case as further explained below, the Panel determines that the language of the proceedings is English. 6.2 Substantive elements of the Policy Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed he must prove, within the meaning of paragraph 4(a) of the Policy, that: (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. The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s NESPRESSO trademarks have been registered and used in various countries in connection to the Complainant’s coffee products and services. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety, simply adding the term “fr” which refers to France. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0). Additionally, it is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s NESPRESSO trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Bassem Dhaouadi”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed. Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s NESPRESSO trademark and adds the term “fr”, which is a well-known abbreviation for “French” or “France” and could thus easily be considered to refer to French activities of the Complainant. Therefore, the Panel finds that the Disputed Domain Name carries a high risk of implied affiliation with the Complainant and cannot constitute fair use. Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). The Complainant claims that the Disputed Domain Name has been used to redirect to prima facie misleading and fraudulent websites advertising contests/promotions related to third-parties or products compatible with the Complainant’s products. While the Panel finds that these redirections are not proven by the Complainant, the Panel observes that these were not contested by the Respondent either. In the Panel’s view, such use of the Disputed Domain Name does not constitute rights or legitimate interests. In any event, there is no evidence of any preparations to a legitimate use of the Disputed Domain Name. The Respondent had the opportunity to demonstrate any rights or legitimate interests in the Disputed Domain Name but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location. In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s NESPRESSO trademark in its entirety with the mere addition of the abbreviation “fr”. The Complainant provided extensive evidence of the established reputation and well-known character of its mark, including in France where the Respondent is residing. Therefore, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks). According to the Complainant’s uncontested evidence, the Disputed Domain Name has been used to redirect to prima facie misleading and fraudulent websites advertising contests/promotions related to third-parties or products compatible with the Complainant’s products. In the Panel’s view, this indicates that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. In any event, the Respondent is not presently using the Disputed Domain Name, nor did it show preparations to use it. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use (see section 3.3 of WIPO Overview 3.0). In the present case, the Panel is of the opinion that the Complainant’s NESPRESSO trademark is well-known and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 Name Flip Jan Claude Petillion
Sole Panelist
Date: September 25, 2020
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