The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Morgan Jole, United States of America (“United States” or “US”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2021. On October 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on November 15, 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 BackgroundComplainant is one of the world's largest food consumer products company. 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, food services, as well as pet food. The sales metrics of the group Nestlé in 2020 were CHF 84.3 billion worldwide. Complainant markets its products worldwide in over 185 countries, including in the United States – the country where the Respondent allegedly resides and operates a car wrap scam via the disputed domain name.
Amongst the various subsidiaries of the Complainant figures Nestlé Waters S.A., managing the water division of the Group. The Complainant claims that it is one of the largest bottled water company worldwide, producing bottled water under about 50 different brands, including the well-known trade marks NESTLE PURE LIFE, PERRIER, SAN PELLEGRINO, and VITTEL.
As a basis for this Complaint, the Complainant relies on numerous trade mark registrations, including:
- International Registration No. 455926 for NESTLE of August 28, 1980;
- US Registration No. 0188089 for NESTLE of January 04, 1924, indicating 1878 as first use;
- US Registration No. 5598624 for of November 6, 2018.
In support of its activities, the Complainant also owns and uses a vast portfolio of domain names, including the domain names
The disputed domain name was registered on July 7, 2021.
The disputed domain name resolves to a website which promotes a scheme of wrap advertisement, using the Complainant’s brands NESTLE and NESTLE PURE LIFE. The website is entitled “Nestlé Pure Life Company”, and in addition to the registered trade marks of the Complainant, it also displays several pictures: of vehicles actually wrapped with the bottles and brands of the Complainant, and of the products of the Complainant. Internet users are offered a payment of USD 500 per week in exchange for allowing the wrapping of their vehicles with advertising of Complainant’s products. Below is an extract from the website to which the disputed domain name resolves:
“Here's the basic premise of the ‘paid to drive’ concept: Nestle Pure Life Company seeks people — regular citizens, professional drivers to go about their normal routine as they usually do – ‘which means there are no OBLIGATIONS whatsoever as to how many miles you have to cover' only with a big advert for [] Nestle Pure Life Company plastered on your vehicle. The ads are typically vinyl decals, also known as ‘auto wrap's’ that almost seem to be painted on the vehicle, and which will cover any portion of your vehicle's exterior surface.
You will be compensated [USD] 500.00 per week which is essentially a rental payment for letting our company use the exterior space on your vehicle and no fee is required from you. Nestle Pure Life Company shall provide experts that would handle the advert placing on your vehicle and also the removal.”
The website also contains an application form for possible candidates.
Failing any response from the Respondent to a cease-and-desist letter sent on August 16, 2021, and several subsequent reminders, the Complainant decided to initiate this proceeding.
5. Parties’ Contentions A. ComplainantThe detailed arguments of the Complainant can be summarized as follows:
On the first element of the Policy, the Complainant argues that the disputed domain name is confusingly similar to its trade marks NESTLE. The addition of the element “world” should have no negative impact on this assessment: much to the contrary, the Complainant claims that it is “apt to increase confusion with Complainant’s trademark. In fact, it could be interpreted by Internet users as indicating a Complainant’s worldwide portal”.
On the second element of the Policy, the Complainant explains that the Respondent has not been authorized in any way to reproduce its trade marks. Besides, the Respondent is apparently not known under the disputed domain name. Also, the use of the domain name for scam purposes, impersonating its identity, excludes any possible legitimate interest. Finally, the Complainant also points out that the Respondent has not responded to its cease-and-desist letter to claim possible rights or legitimate interests.
On the third element of the Policy, the Complainant adduces first that the Respondent had necessarily its trade mark in mind when registering the disputed domain name, due to its outstanding worldwide reputation. This is confirmed by the subsequent reproduction of the Complainant’s trade marks on the website to which the disputed domain name resolves. Second, the Complainant claims that the disputed domain name is used in bad faith: not only because it takes the appearance of an official website of the Complainant, but also because it is used “in connection with a scam car wrap initiative to deceitfully acquire confidential information from the persons that apply for the program believing that this is official and organized/authorized by Complainants”.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is identical or confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant has shown that it holds rights over the trade mark NESTLE.
The disputed domain name
As the disputed domain name includes the Complainant’s trade mark in its entirety combined with a term that does not prevent the Complainant’s trademark from being recognizable in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Therefore, the first element of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. What is more, the use of the disputed domain name in connection with fraudulent activities does not qualify as fair use nor would such illegal use ever confer rights or legitimate interests upon the Respondent. Section 2.13, WIPO Overview 3.0.
Accordingly and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithIn order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.
In this matter, the Respondent has registered and is using the disputed domain name
Car wrap scams are described by the U.S. Federal Trade Commission as follows:
“scammers send emails and post to social media and job boards with messages like ‘GET PAID TO DRIVE’. They offer to pay you up to [USD] 700 a week if you’ll drive around with your car (or truck or bike) wrapped to advertise a well-known product. But they’re not really affiliated with the brand. They just want your money.
If you message them back, they’ll send you a check to deposit into your bank account. Then they’ll say to use some of that money to pay their ‘decal agent’ to put the ads on your car. They’ll tell you to pay by money order, Walmart money services, or by making a cash deposit directly into the decal agent’s bank account — all ways that are hard to cancel or get your money back.
So what’s really going on? Well, the ‘decal agent’ is really the scammer. And that check you just deposited? That was fake — which means the money you sent is coming out of your own pocket. So, if you deposited a [USD] 1,500 check and sent [USD] 500 to the ‘decal agent’, you’re out [USD] 500 of your own money. (And you don’t get to keep that $1,000, either.)” (source: "https://www.consumer.ftc.gov/blog/2020/12/wrapping-2020-more-car-wrap-scams”).
The Respondent has impersonated the Complainant, reproduced its trade marks in the website to which the disputed domain name resolves, in order to confer it with the appearance of a website of the Complainant. With this the Respondent is seeking to attract candidates to this car wrap scam. This is of course a typical bad faith practice which much be prevented through the implementation of the Policy.
Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied.
7. DecisionFor 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,
Benjamin Fontaine
Sole Panelist
Date: November 29, 2021