The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Thinkartxp, United Kingdom, self-represented. 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 29, 2020. On April 30, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 1, 2020, the Registry 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 May 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2020. The Response was filed with the Center on May 28, 2020. The Center appointed Evan D. Brown as the sole panelist in this matter on June 9, 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 the world’s largest food consumer products company in terms of sales, providing billions of dollars’ worth of products worldwide each year. It owns over 2,250 international and national trademark registrations worldwide for the mark NESTLÉ (or variations thereof), including International Registration No. 400444 (word and device mark), registered on July 16, 1973. The Complainant has been well known for generations. The Respondent registered the disputed domain name on December 16, 2017. It has not used the disputed domain name in connection with an active web page. In communications between the parties leading up to this case, the Respondent offered to sell the disputed domain name to the Complainant (via a representative of the Complainant) for USD 50,000. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent argues that the Complainant does not own exclusive rights to use the word “nestle,” emphasizing the dictionary meaning of the word spelled with the second “e” having no accent aigu. Since the word can be used in contexts other than as reference to the Complainant, the Respondent asserts that it is entitled to use the word in the disputed domain name to refer to products and technologies using artificial intelligence. Specifically, the Respondent states it is “considering” presenting a home robot product named “nestle.ai”. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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. Language of Proceedings The Complainant observed that the Registrar’s website did not show a copy of the applicable registration agreement, so one cannot know whether that agreement is in English. The Complainant requested that in any event, these proceedings be conducted in English. The Panel grants this request, noting that the Response is written in English and that the Respondent made no objection therein that the proceedings be conducted in English. B. Identical or Confusingly Similar The Complainant undoubtedly has rights in the mark NESTLÉ. The mark is subject to registrations that predate registration of the disputed domain name, and has been in widespread use for many years. The disputed domain name contains the Complainant’s mark in its entirety and is in this manner identical or confusingly similar to the NESTLÉ mark. The absence of the accent aigu in the disputed domain name is “immaterial to the purpose of the comparison”. Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300. Similarly, the country code Top-Level Domain (“ccTLD”) “.ai” may be disregarded for the purpose of comparing the disputed domain name with the Complainant’s mark under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy. C. Rights or Legitimate Interests The Complainant will succeed under this element of the UDRP if it shows, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and if the Respondent fails to rebut that prima facie showing. Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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. The Complainant has shown that it has not licensed or authorized the Respondent to use the Complainant’s trademark in the disputed domain name, and has also shown that the Respondent is not commonly known by the disputed domain name. The Complainant also observes, rightly, that the Respondent provides no evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, whether before or after any notice of this dispute. Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides non-exhaustive examples of what might constitute prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. None of these examples are present in this case. And the Respondent’s own words point to the reality that there has been no use or demonstrable preparations for use – the Respondent states plainly in the Response that it has merely considered presenting a home robot product named “nestle.ai”. Absent some contrary evidence from the Respondent, passive holding of the disputed domain name does not constitute legitimate noncommercial or fair use. Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195. In this case, the Respondent has submitted no evidence to meaningfully show this passive holding has been for a legitimate noncommercial or fair use. The Panel also finds the Respondent’s arguments about the dictionary meaning of the disputed domain name to be pretextual. See section 2.10 of the WIPO Overview 3.0. Seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second UDRP element. D. Registered and Used in Bad Faith Because the Complainant’s mark NESTLÉ is well known, it is implausible to believe that the Respondent was not aware of that mark when it registered the disputed domain name. The Respondent does not deny it knew about the Respondent, and in fact acknowledges in the Response that the Complainant is a “famous” company. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. The Complainant’s passive holding of the disputed domain name supports a finding of bad faith use. In particular, the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in many countries. And as discussed above under the second UDRP element, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. The Complainant’s bad faith is shown in other ways as well. The offer to sell the disputed domain name to the Complainant for USD 50,000 – well in excess of the costs it likely incurred to procure the domain name – appears unreasonably opportunistic. And the Complainant asserts that the Respondent has also registered other well-known brands’ trademarks as “.ai” domain names, including Accordingly, the Panel finds that the Complainant has established this third UDRP element. 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 Evan D. Brown
Sole Panelist
Date: June 23, 2020
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