The Complainant is Société des Produits Nestlé S.A., Switzerland, represented Studio Barbero, Italy.
The Respondent is Arezoo Azizi, Barus, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2020. On December 28, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 29, 2020, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2021. On January 8, 2021, the Center received from the Respondent an email communication in Persian, implying an intention to settle the dispute. The Center sent an email to the Parties regarding a possible settlement, in response to which the Complainant indicated on January 15, 2021 that it did not wish to settle. Therefore, on February 1, 2021, the Center informed the Parties that it was proceeding to panel appointment. The Center appointed Andrew F. Christie as the sole panelist in this matter on February 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 Background The Complainant is wholly owned by Nestlé S.A. It is part of the Nestlé group of companies (the “Nestlé Group”) founded in 1866 by Henri Nestlé. The Nestlé Group has about 328,000 employees and is present in more than 80 countries, with more than 400 production centers worldwide. It sells products and services all over the world in various industries, primarily in the food industry. The Complainant markets its products worldwide in over 190 countries. It is one of the world’s largest food consumer products company in terms of sales, with sales of over CHF 92.6 billion in 2019. The Complainant’s presence in Iran (Islamic Republic of) dates back to 1973, when Nestlé Iran PJSCo was registered at the Registrar of Companies and Non-Commercial Associations, Tehran. Nestlé Iran PJSCo is the exclusive sales representative of Nestlé S.A. (Switzerland), and takes care of the import, sale, and distribution of Nestlé products in Iran (Islamic Republic of). The Complainant is the owner of hundreds of international and national trademark registrations worldwide consisting of or containing the trademark NESCAFE, including International Trademark Registration No. 897333 for the word trademark NESCAFE (registered on August 29, 2006), and Iranian Trademark Registration No. 46434 for a stylized trademark containing the characters NESCAFE (registered on April 4, 1977). The Complainant’s NESCAFE trademark is supported by global advertising campaigns through traditional advertising channels, the Internet, and social media. The Complainant has registered domain names containing the word “nescafe” in numerous generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”), and operates a website dedicated to the NESCAFE brand at “www.nescafe.com”. The Complainant also has a website dedicated to Iranian consumers at “www.nestle.ir/fa”, and has a webpage dedicated to the promotion of NESCAFE products at “www.nestle.ir/fa/brands/nescafe”. IRNIC verified that the disputed domain name was created on April 16, 2017, and was registered by the Respondent on March 10, 2020. The Complainant has provided a screenshot of the website resolving from the disputed domain name on a date said to be September 30, 2020, showing that it contained the Complainant’s NESCAFE trademark and official images and product visuals, and offered for sale NESCAFE products and competitors’ products, without any disclaimer of non-affiliation with the Complainant. The Complainant’s representative sent a cease and desist letter to the Respondent in respect of the disputed domain name on October 1, 2020. On the same day, the Complainant’s representative received a response from the Respondent, which the Complainant says stated that the Respondent was not aware that her website was misusing the Complainant’s brand and expressed a willingness to change the website’s domain name. The next day the Complainant’s representative replied to the Respondent, providing the technical information necessary to enable transfer of the disputed domain name to the Complainant. To this communication, the Respondent replied with various assertions, including that “nescafeshop [is] not nescafé”, “In Iran nescafe doesn’t mean your brand and it means coffee”, “the market place is only a place for buying and selling coffee, tea, coffee products etc. its not related to your Nescafé”, and “The estimate of worth of my website and instagram account is 33000USD”. On October 5, 2020, the Complaint’s representative informed the Respondent that the Complainant would not pay USD 33,000, and reiterated its request that the Respondent deactivate the website resolving from the disputed domain name and transfer the disputed domain name to it. The same day the Respondent replied: “You wish”. On November 18, 2020, the Complainant’s representative requested that the hosting provider of the website resolving from the disputed domain name be deactivated. By some later date not specified, the disputed domain name no longer resolved to an active website. As of the date of this decision, the disputed domain name appears not to resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it incorporates the whole of the Complainant’s NESCAFE word trademark, with the addition of the non-distinctive element “shop”, which does not affect the confusing similarity; (ii) the addition of the word “shop” is apt to increase confusion with the Complainant’s trademark, as NESCAFE is an internationally well-known trademark and the Complainant’s products are distributed in many countries, including Iran (Islamic Republic of); and (iii) the ccTLD “.ir” is merely instrumental to the use of the Internet. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent is not a licensee or an authorized agent of the Complainant, is not in any way authorized to use the Complainant’s trademarks, and specifically is not an authorized reseller of the Complainant; (ii) the Respondent is not commonly known by the disputed domain name as an individual, business or other organization, and “nescafe” is not the family name of the Respondent; (iii) the Respondent has not provided the Complainant with any evidence of her use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute; (iv) the disputed domain name has been redirected to a commercial website where, in the absence of a disclaimer of non-affiliation and a disclosure of the real name of the administrator, the Complainant’s figurative trademarks and official images featured prominently and unauthorized Nescafé and competitors’ products were promoted and offered for sale; (v) the fact that the Respondent apparently resold the Complainant’s products on the website resolving from the disputed domain name is not sufficient to substantiate any possible claim to rights or legitimate interests according to the Oki Data principles, as the Respondent is in clear breach of the second and third requirements of them; (vi) the use of the disputed domain name to attract and divert consumers for commercial gain to the Respondent’s website does not satisfy the Oki Data principles and does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name; (vii) regarding the current redirection of the disputed domain name to an inactive website, the infringing contents were prima facie removed as a consequence of the hosting provider’s action following a request by the Complainant’s authorized representative; and (viii) the Respondent’s intention to sell the disputed domain name for more than its out-of-pocket costs to the legitimate trademark owner constitutes additional evidence that it has no rights or legitimate interests in it. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the trademark NESCAFE is irrefutably well-known and the Respondent could not have been unaware of its existence when it registered the confusingly similar domain name; (ii) the actual knowledge of the NESCAFE trademark by the Respondent is demonstrated by the fact that on the website resolving from the disputed domain name, and other websites operated by the Respondent, the Complainant’s trademark featured prominently and products bearing its trademark were sold; (iii) the only purpose of the Respondent is to use the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating confusion about an endorsement of the website by the Complainant, and thereby to take unfair advantage from the well-known character of the Complainant’s trademark for the Respondent’s personal profit; (iv) as a result of the confusing similarity of the disputed domain name with the NESCAFE trademark, Internet users looking for the Complainant and its products might well be diverted to the Respondent’s website and misled as to the source, sponsorship or affiliation of it and/or the products and/or services promoted therein; (v) the Respondent asked a consideration of USD 33,000 for the transfer of the disputed domain name to the Complainant, which is well in excess of the documented out-of-pocket costs related to its registration; and (vi) the circumstance that the disputed domain name is currently pointed to an inactive website shall not per se prevent the Panel from finding that it is still used in bad faith according to the Policy. B. Respondent The Respondent did not formally respond to the Complainant’s contentions. The Respondent did, however, send an email communication to the Center on January 8, 2021 and then on February 15, 2020 which displayed threats and strong language against the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar Once the ccTLD “.ir” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark NESCAFE followed by the word “shop”. The Complainant’s word trademark NESCAFE is the dominant element of the disputed domain name. The addition of the word “shop”, which Internet users are likely to read as being a reference to an online location for the purchase of “Nescafe” products, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its NESCAFE word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which was displayed, without authorization, the Complainant’s images of its products and products of competitors of the Complainant. The fact that the Respondent’s website markets products of the Complainant’s competitors along with those of the Complainant, and does not disclose that the Respondent has no relationship with the Complainant, precludes any argument that the Respondent is using the disputed domain name for a bona fide offering of goods or services – see WIPO Overview 3.0, section 2.8. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its NESCAFE word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s NESCAFE trademark, given that the disputed domain name consists of the Complainant’s distinctive trademark with merely the addition of the word “shop” at the end, and that the Respondent’s website markets products bearing the trademark. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s trademark, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist, and so would be a use in bad faith. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Andrew F. Christie 1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to WIPO Overview 3.0, where appropriate.
Sole Panelist
Date: March 1, 2021
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