The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / john wick, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2021, 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 May 17, 2021, 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 May 18, 2021. 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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. An informal communication was sent to the Center by the Respondent on May 17, 2021. The Complainant made a supplemental filing on June 10, 2021. The Center appointed Adam Taylor as the sole panelist in this matter on June 22, 2021. 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 that was founded in 1866 and operates worldwide, primarily in the food industry. The group has over 270,000 employees. Its main website is located at “www.nestle.com”. The Complainant owns many registered trade marks for NESTLÉ (and variations thereof) including International Registration No. 479337, dated August 12, 1983, filed in classes 01, 05, 29, 30, 31, 32, and 33. One of the Complainant’s subsidiaries, based in Luxembourg, is called “Nestlé Finance International Ltd”. The Complainant’s group uses a cartoon character known as the “Quicky Bunny” to promote products under its Nesquick brand. The disputed domain name was registered on April 30, 2021. As of May 3, 2021, the disputed domain name was used for a website branded “NESTLE FINANCE”. The home page contained the following prominent heading: “NESTLE FINANCE LAUNCHED ON PANCAKESWAP V2” together with an image of the Complainant’s Quicky Bunny. The page went on to state: “At Nestle Finance we’re raising funds and promoting initiatives to serve the people who need them most. We currently are 2000 holders strong! Please join us by supporting our efforts to make a measurable difference in the lives of everyone.” Beneath this was a button marked “BUY NOW !!!!!!”. This link led to another website promoting a cryptocurrency, including one named “NestleFinance / NSTLE”. The footer of the website contained a copyright notice in the name of “Nestle Finance”. On May 3, 2021, the Complainant sent a legal letter to the Respondent and a takedown notice to the website host. No response was received to either communication, but the website at the disputed domain name was deactivated at around that time. As of May 5, 2021, the disputed domain name resolved to a parking page with pay per click (“PPC”) links to websites relating to food products. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The Complainant’s NESTLÉ mark is undoubtedly well-known worldwide, including in the United States. The disputed domain name is confusingly similar to the Complainant’s trade mark. It incorporates the entirety of the mark. The addition of the non-distinctive term “finance” does not affect the confusing similarity. In fact, use of this term is apt to increase confusion as it could be interpreted as indicating a Complainant subsidiary company specialising in financial services, or the Complainant’s finance team. The Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorised the Respondent to use its trade mark in any way. The Complainant Is not aware of any evidence indicating that the Respondent is known by a name corresponding to the disputed domain name. The Respondent has not provided the Complainant with evidence of any use, or of demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has instead used the disputed domain name for a website that misappropriated the Complainant’s trade mark to promote cryptocurrencies. The Respondent did not positively identify itself on its website. The Respondent’s mere use of a name confusingly similar to the Complainant’s well-known brand in insufficient to constitute a legitimate interest under the Policy. The Respondent failure to reply to the Complainant’s legal letter is a further indication of a lack of rights or legitimate interests. The disputed domain name was registered and is being used in bad faith. It is inconceivable that the Respondent was unaware of the Complainant’s well-known and longstanding trade mark, which is a household word. This is also demonstrated by the Respondent’s use of the Complainant’s Quicky Bunny mascot. The misappropriation of a well-known trade mark as a domain name of itself constitutes registration in bad faith The disputed domain name has been used in bad faith to impersonate the Complainant by giving the impression that its cryptocurrency website was associated with the Complainant. The Respondent registered the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. The Respondent’s failure to respond to the Complainant’s legal letter and its use of a privacy protection services to conceal its identity are further evidence of bad faith. B. Respondent The Respondent (apparently one John Wick) sent a communication to the Center claiming that he bought the disputed domain name from Namecheap marketplace on May 5, 2021, that he was unconnected with the matters raised in the Complaint and that the Complaint should be served on the previous owner of the disputed domain name. C. Complainant’s supplemental filing The following is a summary of the Complainant’s supplemental filing. The disputed domain name is still being held through the same privacy service as before. This entity is the “holder” of the disputed domain name for the purposes of the UDRP and the Respondent (John Wick) should remain involved in the proceeding as a Respondent because he was disclosed by the Registrar as the underlying registrant of the disputed domain name. The alleged transfer on May 5, 2021, is prima facie, false, or at least highly suspicious, because no change was made to the WhoIs database, as one would expect. This indicates that the Respondent may always have been the underlying registrant of the disputed domain name, but that he may now be falsely claiming to have only acquired the disputed domain name recently in order to provide a defence in this proceeding. The Complainant thanks it likely that there was merely a change of registrar account on May 5, 2021, which would explain the purchase receipt produced by the Respondent. Even if a real change of ownership occurred, it is still possible that the alleged new assignee had a relationship with the initial undisclosed underlying registrant. If the disputed domain name was acquired by an unrelated new owner, that person in any case lacks rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith, based on use of the disputed domain name as a parking page with PPC links to the Complainant’s competitors or, alternatively, on the fact that the disputed domain name constitutes a passive holding in bad faith, as well as on the potential use of the disputed domain name for phishing purposes. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; As discussed in section 5B above, the Respondent (apparently one John Wick) sent an email to the Center claiming that he only bought the disputed domain name on May 5, 2021, and that he was unconnected with the matters raised in the Complaint. The email does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to treat the email as the Response in accordance with its powers under paragraph 10(d) of the Rules. B. Supplemental Filing The Complainant has made an unsolicited supplemental filing. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance. Here, Panel has decided to admit the Complainant’s supplemental filing as it relates to matters raised in the Respondent’s email of May 17, 2021, which was sent after the Complaint was filed. C. Identical or Confusingly Similar The Complainant has established rights in the mark NESTLÉ by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the longstanding, worldwide use of that name. Section 1.8 of WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “finance” is insufficient to avert a finding of confusing similarity. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. D. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests. As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse, and profit from Internet users seeking the Complainant’s goods and services. Such use of the disputed domain name could not be said to be bona fide. The later use of the disputed domain name for a parking page with PPC links to goods and services competing with those of the Complainant does not confer rights or legitimate interests either. See section 2.9 of WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where, as here, such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise misleads Internet users. Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. E. Registered and Used in Bad Faith The Panel has little difficulty in concluding that, by using the disputed domain name for a website which effectively impersonated the Complainant, including by use of the Complainant’s Quicky Bunny character to promote cybercurrency products, 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 trade mark in accordance with paragraph paragraph 4(b)(iv). The Respondent (apparently one John Wick) seeks to distance itself from such activities and claims that he acquired the disputed domain name more recently. The Panel is not convinced by the Respondent’s assertion that he is unconnected with the previous website at the disputed domain name. In any event, after the Respondent acquired the disputed domain name, it was used for a website with PPC links to the Complainant’s competitors. In the Panel’s view, such activity of itself constitutes registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, i.e., irrespective of the Respondent’s connection or otherwise with the previous website at the disputed domain name. Furthermore, section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated pay-per-click links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. Panel therefore finds that the Complainant has established the third element of 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, Adam Taylor
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. A. Informal Response
Sole Panelist
Date: July 6, 2021
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