Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is Société des Produits Nestlé SA represented by Dr. Michael Treis, Attorney-at-Law, Baker & McKenzie, Zollikerstrasse 225, Zurich, Switzerland, hereinafter the "Complainant."

Respondent is Telmex Management Services, Mr. Antoinne Rousseau, Pasae Estate, Road Town, Tortola, British Virgin Islands, hereinafter the "Respondent."

The domain name in dispute is <nestlefoods.com>.

The registrar for the disputed domain name is Intercosmos Media Group, Inc., New Orleans, Louisiana, United States of America.

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on January 24, 2002, and in hard copy on January 30, 2002. On January 25, 2002, WIPO sent an Acknowledgement of Receipt of the Complaint to the Complainant.

(b) On January 29, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, with the Registrar’s Response received by WIPO the same day, confirming that the domain name at issue was registered through Intercosmos Media Group, Inc.

(c) On January 31, 2002, WIPO satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, ("the Policy"), the Rules for the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, ("the Rules"), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

(d) On January 31, 2002, WIPO transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent. WIPO established February 20, 2002, as deadline for the submission of a Response to WIPO and the Complainant.

(e) No Response has been submitted by the Respondent. Accordingly, WIPO issued a Notification of Respondent Default on February 28, 2002.

(f) On March 8, 2002, in view of the Complainant’s designation of a Single Panelist, WIPO invited Mr. Peter Nitter to serve as a Panelist. Having received Mr. Nitter’s Statement of Acceptance and Declaration of Impartiality and Independence of March 11, 2002, WIPO formally appointed Mr. Peter Nitter as Sole Panelist on March 12, 2002. On the same day, WIPO transmitted the case file to the Administrative Panel and notified the parties of the appointed Panel.

(g) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.

After the Complainant’s assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by Respondent because of its default, the Panel finds the following:

Complainant is Switzerland’s largest company, and the world’s largest manufacturing company in the area of food, with a total workforce of approximately 224, 541 people and some 479 factories.

The Complainant is the owner of a broad range of trademark registrations worldwide for NESTLE, alone or in combination with other word and/or device elements. NESTLE has been in use as a trademark for the Complainant for more than hundred years, and is a famous trademark enjoying a worldwide reputation and goodwill as one of the leading manufacturers of foods.

In particular, the Complainant also has worldwide trademark registrations for NESTLE FOODSERVICES. Complainant operates a promotional website primarily designed to attract possible customers of Nestlé’s products under the domain name <nestle.com>, which due to Nestlé’s standing as the world’s leading food manufacturing company has become a very well known and frequently visited website.

The Respondent has registered the domain name <nestlefoods.com>. The web page corresponding to this domain name presents women who – according to the text on the website – offer their services as "senior secretary and personal assistant". The presentation consists however primarily of pictures featuring half-naked women strongly suggesting that the services offered at least in part would be of a sexual nature.

The Complainant asserts that:

The domain name at issue is identical to Complainant’s trademark. Complainant’s trademark is used as a predominant and distinctive element of Respondent’s domain name.

The Respondent has no legitimate interest in respect of the domain name at issue. Respondent has nothing to do with Complainant or Complainant’s business, and there are absolutely no indications whatsoever that Respondent would have bona fide interests in relation to the trademark NESTLE.

The domain name was and is registered and used in bad faith. NESTLE is a famous mark, and Respondent is evidently and has always been aware that the domain name <nestlefoods.com> corresponds to this trademark. The fact that Respondent displays photos of almost naked females on a website with the address "www.nestlefoods" shows clearly that he has registered and used the domain name in bad faith. Respondent is aware that Complainant’s website "www.nestle.com" enjoys great popularity among many consumers of Nestlé food products and others interested in information about Nestlé. Respondent exploits the fame and goodwill of the NESTLE trademark by diverting Internet traffic intended for Complainant to its pornographic website. Respondent’s action is a typical example of domain name squatting, and his bad faith is therefore absolutely evident and manifest.

The Complainant requests the Administrative Panel issue a decision that the contested domain name must be transferred to the Complainant.

The Respondent has not submitted a Response, and is thus in default and has neither made any submissions whatsoever after the Notification of Respondent Default.

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the 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 such domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainant’s trademarks. As a result of Respondent’s default, these allegations have not been contested.

The domain name at issue is not identical to a trademark in which Complainant has rights.

The question is therefore whether the domain name at issue is confusingly similar to any of the Complainant’s trademarks.

Respondent’s domain name <nestlefoods.com> contains Complainant’s house mark, and distinctive trademark element NESTLE. It also forms a part of the trademark NESTLE FOODSERVICES. It is therefore a certain visual similarity between Respondent’s domain name and Complainant’s trademarks NESTLE and NESTLE FOODSERVICES.

Said trademarks are furthermore famous marks associated with foods and beverages worldwide. Respondent’s domain name <nestlefoods.com> will therefore to a great extent give the same associations as Complainant’s trademarks, leading to a risk of confusing Respondent’s domain name with Complainant’s trademarks.

Thus, the Panel finds that Respondent’s domain name <nestlefoods.com> is confusingly similar to Complainant’s trademarks NESTLE and NESTLE FOODSERVICES.

The Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue, including the Complainant’s contention about the lack of any legitimate intellectual property right of the Respondent to the contested domain name. As a result of default, these allegations have not been contested by the Respondent.

Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional light in a default proceeding (see WIPO Case Nos. D2000-0076 and D2000-0141). On March 20, 2002, the Panel visited the "www.nestlefoods.com" website of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or the legitimacy of the interest of the Respondent in the contested domain name. The Panel did not find any such evidence.

Thus, the Panel finds that the Respondent has no rights or legitimate interest in the contested domain name.

Complainant’s allegations with regard to the Respondent’s registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of his default.

Complainant’s trademarks are famous, and have evidently been known to Respondent when registering the contested domain name. Said domain name is highly unlikely to have been registered if it were not for Complainant’s trademarks.

Respondent’s registration of the domain name at issue, and continuous use of the same, appears to be an attempt to exploit the fame and goodwill of Complainant’s trademarks by diverting Internet traffic intended for Complainant’s web page to its own web page.

The Panel therefore finds that the Respondent has registered and used the domain name at issue in bad faith.

The Panel has found that the domain name <nestlefoods.com> is confusingly similar to the trademarks of the Complainant, and that the Respondent has no rights to or legitimate interest in said domain name. The Panel has further found that the domain name has been registered and is being used in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides to request that the domain name <nestlefoods.com> be transferred to the Complainant Société des Produits Nestlé SA.

Peter G. Nitter

Sole Panelist

Dated: April 2, 2002