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Société des Produits Nestlé SA v. Myongjin Kim [2005] GENDND 1320 (8 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Myongjin Kim

Case No. D2005-0509

1. The Parties

The Complainant is Société des Produits Nestlé SA, Vevey, Switzerland, represented by Baker & McKenzie, Switzerland.

The Respondent is Myongjin Kim, Gyeongju, Gyeongbuk, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <nestlenutrition.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2005. On May 10, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for Registrar Verification in connection with the domain name at issue. On May 11, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its Verification Response confirming that Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 13, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 2, 2005. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s Default on June 6, 2005.

The Center appointed Mr. Henry Olsson as the Sole Panelist in this matter on June 24, 2005. 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.

The Panel notes that Complainant, in accordance with Paragraph 3(b)(xiii) of the Rules, agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the Courts where Respondent is located, as shown by the address given for Respondent in the WHOIS database at the time of the submission of the Complaint to the Center.

4. Factual Background

Complainant, Nestle Corporation/Société des Produits Nestlé SA, is a company which is incorporated under the laws of Switzerland and registered in the Commercial Register in Vevey, Switzerland. It is a company that specializes in the production and distribution of food products, including confectionary and beverages. It has a total workforce of around 253 000 persons and operates more than 500 factories worldwide.

Respondent registered the disputed domain name on January 26, 2005.

5. Parties’ Contentions

A. Complainant

General

Complainant contends first that Respondent is required to submit to a mandatory administrative proceeding because:

1) the domain name at issue is confusingly similar to a trademark or a service mark in which Complainant has rights,

2) Respondent has no rights or legitimate interests in respect of the domain name, and

3) the domain name is registered and is being used in bad faith.

According to Complainant, it is the owner of a broad range of trademark registrations in virtually all countries of the world, including the Republic of Korea, which trademarks consist of the denomination “NESTLE” either alone or in combination with other words and/or device elements. Complainant has submitted a list of its trademark registrations, and also a copy of a trademark registration certificate for “NESTLE” in the Republic of Korea.

Complainant stresses that it is not only the largest company in Switzerland but also the largest food company in the world.

Complainant furthermore contends that “NESTLE” should be considered as a well-known trademark because it enjoys a worldwide reputation and goodwill as a house mark for Complainant. Also, Complainant operates its main website under the domain name <nestle.com>. Given the reputation of Complainant as the world’s leading food manufacturing company, its website is, according to Complainant, very well known and is frequently visited. In addition to that website, Complainant also operates the websites “www.nutrition-nestle.com” and “www.nestle-nutrition.com”, the reasons being that nutrition is the core of Complainant’s business and “Nestlé Nutrition” is the name of one of its strategic business divisions. Those websites are very popular among both consumers and other companies.

According to Complainant, it is evident that many members of the public will try to access those websites dealing with nutrition matters by typing the domain name at issue, viz. <nestlenutrition.com>.

Complainant adds that its trademarks have repeatedly been the target of cybersquatters as can be seen in other UDRP cases to which Complainant makes reference in this case.

According to Complainant, the domain name registration is inactive but the website to which the domain name is linked and of which Complainant has submitted a printout, shows that the domain name is for sale. When Complainant sent an objection letter to Respondent on April 15, 2005, Respondent stated that it was entitled to register the domain name and that it would be willing to sell it to Complainant for USD 1500. When Complainant refused, Respondent tried to engage in some bargaining asking Complainant how much it would be willing to pay for the transfer of the domain name. Complainant has submitted copies of the correspondence with Respondent.

Identity or Confusing Similarity

In this respect, Complainant contends first that it is the legitimate owner of all rights in the trademark “NESTLE”. Complainant stresses that the element “nestle” in the contested domain name <nestlenutrition.com> is identical with the trademark “NESTLE” and that the element “nutrition” in that domain name is descriptive of the business and the purpose of the products of Complainant; it refers in fact to the strategic business unit of Complainant. Thus, in summary, Respondent is the registrant of a domain name that is clearly confusingly similar to Complainant’s trademark.

Rights or legitimate interests in the domain name

Complaint invokes several circumstances in order to prove that Respondent has no rights or legitimate interests in the domain name at issue. Thus, Respondent is domiciled in the Republic of Korea where “NESTLE” is a very well known and highly distinctive mark. According to Complainant, Respondent has knowingly registered a domain name that infringes Complainant’s trademark rights and would be aware that the domain name corresponds to a combination of that trademark and a description of the purpose of Complainant’s products.

Complainant adds that Respondent is not authorized by, or has any other links to, Complainant or its business and is not commonly known as an individual, business or organization by the domain name at issue.

Complainant also alleges that Respondent has only registered but has not activated the domain name for a website and has not used it for any bona fide offering of goods or services. According to Complainant, the correspondence between Complainant and Respondent shows that the domain name was registered in order to sell the domain name to third parties or to oblige Complainant to pay a substantial sum in order to have the domain name transferred to it.

Registration and use in bad faith

In this respect, Complainant alleges that the trademark “NESTLE” is well known in the Republic of Korea as well as in most other countries of the world and consequently must have been known by Respondent at the time of the registration.

According to Complainant, Respondent must have registered the domain name at issue in order to exploit the fame and goodwill attached to the mark “NESTLE”. In case Respondent would choose to activate the contested domain name or transfer it to a third party, a great and irreparable harm would be caused to Complainant, as anyone who would access a website under that domain name would be confused and/or presume that there were some sort of relationship between Complainant and Respondent.

In case Respondent expects monetary compensation for the transfer of the domain name which rightfully should belong to Complainant, that attitude also shows bad faith on the side of Respondent. Complainant stresses that Respondent, at the time of the registration of the domain name, must have known that it would not be entitled to register a domain name incorporating the well known mark “NESTLE” and that the combination of that mark and the word “nutrition” could only refer to Complainant and its business.

In summary, according to Complainant, any tentative by unrelated third parties to “hijack” the domain name consisting of the trademark and the term “nutrition” must be considered as registration and use in bad faith.

In addition, Complainant alleges that this case corresponds to a pattern of conduct with Respondent. A Google search shows 649 hits and if one clicks on those links, many of them refer to domain names that Respondent offers for sale, some of which include well known marks which, according to Complainant, have clearly been “squatted”. Complainant suggests that this shows that Respondent is engaging in “domain name piracy”.

Remedies

In accordance with Paragraph 4(i) of the Policy and for the reasons described and briefly summarized above, Complainant requests that the domain name at issue be transferred to Complainant.

B. Respondent

Respondent did not reply to the Complainant’s contentions and is consequently in Default.

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant have been contested by Respondent despite the opportunity to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

The Registrar Verification confirms that the Policy is applicable in this case. Consequently, Respondent is obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name at issue.

Documentation available in the case shows that the Complaint has been duly communicated to Respondent and that there is from this point of view no obstacle to considering the case.

Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:

- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights,

- that Respondent has no rights or legitimate interests in the domain name, and

- that the domain name has been registered and is being used in bad faith.

In the following parts of this decision, the Panel discusses each of those elements.

A. Identical or Confusingly Similar

In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain name at issue is <nestlenutrition.com>.

Evidence submitted in this case proves that Complainant is the owner of the trademark “NESTLE” alone or in combination with other elements in most countries of the world including in the Republic of Korea.

The fame of the trademark “NESTLE” is linked to the business of Complainant which lies primarily in the food, confectionary and beverages area, or, in other words, in various aspects or elements of nutrition.

It is in the view of this Panel obvious that a domain name that incorporates the trademark “NESTLE” and the element “nutrition” is to be considered as confusingly similar to the various trademarks owned by Complainant. This is the more so as Complainant operates various websites incorporating both those words. A potential user who would try to access Complainant’s websites would very well be likely to type the contested domain name as a notion which would bring him or her in contact with Complainant and its business.

On the basis of these circumstances, the Panel comes to the conclusion that the domain name at issue is confusing similar to the trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.

As mentioned above, Respondent has not submitted any Response and has consequently not objected to any of the allegations by Complainant. One of those allegations it that the trademark “NESTLE” is very well known and is a highly distinctive mark also in the Republic of Korea and that Respondent, when registering the domain name at issue, must have been aware of the fact that the combination of that trademark and the notion “nutrition” would correspond to the mark and a description of the main purpose of Complainant’s business and products.

The Panel agrees with those allegations. In the view of the Panel it is highly improbable that Respondent, when registering the domain name at issue, was not aware of Complainant and its business.

The Panel accepts Complainant’s allegations that there are no business links between Complainant and Respondent and that Respondent is not commonly known by the domain name.

Complainant also alleges that Respondent has not used the domain name in connection with any bona fide offering of goods or services and that Respondent has not activated the domain name but that its purpose with the domain name would be to sell it for a pecuniary remuneration. In this respect Complainant has submitted some evidence. The Panel accepts Complainant’s allegations in this respect. Further, the Panel has not found any indication in the case file that Respondent would have rights or legitimate interests as enumerated in Paragraph 4(c) of the Policy.

On the basis of what the Panel thus has found to be established, the Panel draws the conclusion that it is proved that Respondent has no rights or legitimate interests in the contested domain name.

C. Registered and Used in Bad Faith

In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered to be evidence of registration and use in bad faith.

As mentioned above, the Panel concludes that Respondent was, at the time of the registration of the contested domain name, aware of Complainant’s trademark and its main business, namely food/nutrition. The Panel also accepts Complainant’s allegation that the activities of Respondent, as shown in the correspondence with Complainant, amount to an attempt to exploit the fame of the “NESTLE” trademark to obtain monetary gains for selling or transferring it either to Complainant or to third parties.

Complainant furthermore alleges that Respondent through its e-mail address offers for sale also other domain names including such that contain well known trademarks. The Panel accepts also this allegation and concludes that this points at certain pattern of conduct at the side of Respondent.

These activities taken together indicate clearly, in the view of the Panel, that the domain name was registered in bad faith and then was used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.

D. Conclusions

On the basis of the foregoing, the Panel concludes that it has been established in this case that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Complainant’s request for a transfer of the domain name to Complainant shall consequently be approved.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nestlenutrition.com> be transferred to Complainant.

Henry Olsson
Sole Panelist

Date: July 8, 2005