Société des Produits Nestlé SA v. Matthew Harper

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Société

des Produits Nestlé S.A v. Matthew Harper

Case No.

D2001-0278

1. The Parties

The Complainant in these

administrative proceedings is Société des Produits Nestlé

S.A., a company incorporated under the laws of Switzerland and registered in

the Commercial Register in CH-1800 Vevey, Switzerland, whose head office and

principal place of business is also located in Vevey, Switzerland.

The Respondent in these

administrative proceedings is Mr. Matthew Harper, 32 Boyd Court, Bracknell,

Berks RG42 1 PX, England.

2. The Domain Name and

Registrar

The Domain Name at issue

is <rowntrees.com>. The registrar with which the domain name registered

is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, 20170,

USA. ("the Registrar").

3. Procedural History

On February 22, 2001 the

Complaint was received by the WIPO Arbitration and Mediation Center ("the Center")

by e-mail and the hard copy was received on February 23, 2001.

On February 27, 2001 the

Center sent an acknowledgement of receipt of the Complaint to the Complainant

by e-mail.

On February 27, 2001 the

Center sent a request for Register Verification to the Registrar. On March 5,

2001 the Registrar responded to the Center by e-mail and stated that it was

in receipt of the Complaint sent by the Complainant, confirmed that it is the

registrar of the said domain name <rowntrees.com>, confirmed that the

Respondent was at that time the registrant of the said domain name, provided

contact details for the Respondent including the administrative contact, the

technical contact and the billing contact for the said domain name, and confirmed

that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied

to the said registration and that the said registration had "active" status.

The Center reviewed the

Complaint and was satisfied that the Complainant as amended complied with the

Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the

WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental

Rules") and that the appropriate fees had been paid by the Complainant.

On March 8, 2001 the Center

sent a Notification of Complaint and Commencement of Administrative Proceeding

relating to the said domain name <rowntrees.com> to the Respondent by

post/courier (with enclosures) and by e-mail (Complaint without attachments).

A copy of said Notification was sent to the authorised representative of the

Complainant by e-mail. Further copies of said Notification were sent to the

Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.

Said Notification of Complaint

and Commencement of Administrative Proceeding inter alia advised the

Respondent that the Administrative Proceedings had commenced on March 8, 2001

and that the Respondent was required to submit a Response to the Center on or

before March 27, 2001.

On March 29, 2001 the Center

received an e-mail from the Respondent, details of which are discussed infra,

inter alia requesting the Administrative Panel to suspend or postpone

the decision in these Administrative Proceedings.

On March 29, 2001 as no

Response had been filed by the Respondent, the Center sent a Notification of

Respondent Default to the Respondent by post/courier and email. A copy of said

Notification was at the same time sent to the Complainant.

On April 4, 2001 the Center

invited James Bridgeman to act as Administrative Panel in these proceedings.

On April 6, 2001 having

received a Statement of Acceptance and Declaration of Impartiality from the

said James Bridgeman the Center proceeded to appoint this Administrative Panel

consisting of a single member. On the same date, the case file was transferred

to the Administrative Panel.

In the view of this Administrative

Panel, the proper procedures were followed and the panel was properly constituted.

On April 6, 2001 the authorised

representatives of the Complainant sent an e-mail directly to this Administrative

Panel. As this communication was in breach of paragraph 8 of the Rules and this

Administrative Panel did not consider this communication.

On April 20, 2001, having

considered the Complaint and the Response and having ascertained that there

was a significant conflict between the submissions and the evidence submitted

by the Complainant on the one hand and the statements made by the Respondent

in his said e-mail to the Center on March 29, 2001, this Administrative Panel

issued a Procedural Order, pursuant to Rule 12 of the Rules directing that the

Complainant furnish to the Center for consideration by this Administrative Panel,

print-outs of all original e-mails received by the Complainant, its servants

or agents from the Respondent; that the Respondent furnish to the Center for

consideration by this Administrative Panel certain documentation referred to

in the Respondent's e-mail of March 29, 2001 relating to legal action allegedly

taken by the Complainant. Each Party was given seven (7) days to submit the

aforesaid documentation to the Center. Each Party was further directed to send

copies of the said documentation by recorded delivery to the other Party. Additionally

each Party was given liberty to furnish further written submissions limited

strictly to the content of the aforesaid documentation within five (5) days

of receipt of the said documentation.

On April 25, 2001 the authorised

representatives of the Complainant furnished the additional documentation as

directed. The Respondent failed to furnish the documentation within the deadline.

The Respondent, however, submitted two e-mails, on April 28 2001 and May 15,

2001 respectively. According to paragraph 14 (a) of the Rules, unless there

are exceptional circumstances, late filings shall not be considered by the Administrative

Panel.This Administrative Panel did not consider the said e-mails from the Respondent.

4. Factual Background

The Complainant is the

owner of a number of trademark registrations worldwide for the trademarks <ROWNTREE>

and <ROWNTREE'S>, alone or in combination with other word and/or device

elements.

The trademark originated

as an element of the company name H.I. Rowntree & Co, which was established

as early as 1869 and the trademark <ROWNTREE'S> was first registered in

the United Kingdom by the predecessor in title to the Complainant on

January 23, 1908 under

No. 299.838.

The core class of goods

for which said trademarks are registered is Class 30 in respect of confectionery.

Since the 1870's, the trademark <ROWNTREE'S> has been used continuously

in the United Kingdom for confectionery products.

A subsidiary of the Complainant

operates a www site accessible via the domain name www.rowntrees.co.uk.

This is a promotional www site which is particularly designed to attract possible

customers of the Complainant's confectionery products. The www site allows individuals

to participate in a computer-game designed as "A Search for The Rowntree"

The winners of the game, i.e. those which obtain the highest scores when playing,

receive a backpack full of confectionery products.

The Respondent registered

the said domain name <rowntrees.com> on

February 1, 2000. In the

absence of any Response in these Administrative Proceedings, there is very little

further information available regarding the Respondent, except for the registration

details on the Registrar's database containing the Respondent's name and address

and the technical, administrative and billing contact for the domain name registration.

5. Parties’ Contentions

A. Complainant

The Complainant has submitted

a detailed list of all current trademark registrations and applications for

said trademarks <ROWNTREE> and <ROWNTREE'S> alone or in combination

with other word and/or device elements, owned by the Complainant.

The Complainant has further

provided copies of UK trademark registration and renewal certificates in respect

of the said trademarks including evidence of that the said trademark <ROWNTREE>

was first registered on 23rd January 1908 as registration number

299.838.

The Complainant submits

that the said trademark <ROWNTREE'S> has been used continuously for confectionery

and related goods in the United Kingdom since the 1870's.. It has also been

used in many other countries, and given the English origin of the company, the

trademarks have been used most extensively in the Commonwealth countries. The

Complainant submits that the Complainant's said trademarks have become extremely

well-known in the United Kingdom, and in certain other jurisdictions due to

this extremely long and extensive use.

The Complainant submits

that it is the parent company of Rowntree PLC, having acquired said Rowntree

PLC on 25 June 1988. The Complainant states that the said trademarks are commercialised

by a division of Nestlé UK Ltd., the UK affiliate and licensee of the

Complainant. In support of its claims to such long established use by itself

and its predecessors in title, the Complainant has submitted a number of documents

outlining the history of the <ROWNTREE> brand of confectionery.

The Complainant submits

that its said subsidiary Nestlé UK Ltd operates a www site under the

domain name www.rowntrees.co.uk. This is a promotional www site which is particularly

designed to attract possible customers of the Complainant's confectionery products.

The Complainant states that the said www site allows individuals to participate

freely in a computer-game entitled "A Search for The Rowntree". The winners

of the game, i.e. those which obtain the highest scores when playing, receive

a backpack full of the Complainant's <ROWNTREE'S> brand confectionery

products.

The Complainant submits

that this has become a very popular game, in particular among children. The

Complainant submits that this www site has become extremely well known and frequently

visited, having been promoted by television advertising and in the months of

December 2000 and January 2001, the said www site, logged 22,923 and 26,269

visitor sessions respectively "whilst by the end of December 2001 (sic)

over 7,000 visitors had registered to play the game." [It should be stated here

that this Administrative Panel has interpreted this as a reference to the year

2000].

In support of its claim

that the said domain name <rowntrees.com> is identical or confusingly

similar to the Complainants <ROWNTREE'S> trademark, the Complainant submits

that the absence of an apostrophe in the domain name does not make any relevant

difference. Neither is the apostrophe noticed at all by the public at large,

nor does it result in a phonetic difference, nor can an apostrophe be part of

a domain name. The domain name is essentially identical with the Complainant's

trademarks <ROWNTREE> and <ROWNTREE'S>.

The Complainant submits

that the Respondent has no rights or legitimate interests in the said domain

name. In support of this assertion, the Complainant submits that because the

said trademark is so well known in the United Kingdom, the Respondent has always

been aware that the domain name <rowntrees.com> corresponds to the Complainant's

trademark. The Complainant further submits that the Respondent has admitted

in his e-mail correspondence (infra) that he acquired the said domain

name because of the nuisance value which it could have to the Complainant should

it fall into the wrong hands.

Finally the Complainant

submits that the said domain name was registered and is being used in bad faith.

The Complainant submits

that the domain name <rowntrees.com> is linked to a www site at the domain

name <niceonemate.com>. The Complainant states that this is a www site

containing a section enlisting various domain name registrations which are for

sale. The Complainant has submitted that the said domain name <rowntree.com>

domain is being explicitly offered on this site and in support of this claim

the Complainant has furnished this Administrative Panel with a print-out of

part of this www site which contained the text: "If you are interested in

any of the domain names then please call Mr. Harper on ..."

The Complainant submits

that on June 26, 2000, the Respondent sent an e-mail to the said <rowntrees.co.uk>

www site. The e-mail was addressed to "Professor Peel", the comic character

of the said computer-game "A Search for the Rowntree",. It was received

by Pilot Interactive Limited, the company which was engaged by Nestlé

UK Ltd to design and operate the www site on its behalf. In this e-mail, a copy

of which has been furnished to this Administrative Panel, the Complainant submits

that the Respondent offered to "sell" the said <rowntrees.com> domain

name. In the said e-mail the Respondent claimed to have "merely saved the

name from being bought by unscrupulous people outside England who wanted to

auction off rowntrees.com to the highest bidder…Please let me know how I can

help you and how you can help me and my family."

Having duly consulted with

Nestlé UK Ltd, Pilot Interactive Limited requested more information from

the Respondent but did not enter into any negotiation about the acquisition

of the said domain name and the Complainant states that nothing further happened

until January 29, 2001.

The Complainant submits

that on January 29, 2001, Respondent again sent an e-mail to Pilot Interactive

Limited regarding the said domain name <rowntrees.com>. The Complainant

has furnished this Administrative Panel with a copy of this e-mail. In this

e-mail, the Complainant submits that the Respondent urged Pilot Interactive

Limited to acquire the domain name on behalf of the Complainant. The Complainant

submits that the Respondent openly threatened that unless the Complainant agreed

to enter into negotiations, the Respondent would place a variety of advertising

banners on this site, "some of which may not be suitable for younger children

to look at" because of their "adult content". The Complainant submits

that in this e-mail the Respondent effectively threatened to transform the www

site accessible via the domain name <rowntrees.com> into a pornographic

site.

The Complainant submits

that these threats by the Respondent are all the more menacing in that the Respondent

claims that he has tens of thousands hits on his site, evidently by people who

are looking for the www site displaying Nestlé UK's promotional game

"A Search for the Rowntree" but erroneously assuming that this is located

on a www site accessible via the said domain name <rowntrees.com>.

The Complainant submits that further pressure is exercised by the Respondent

by saying that unless the Complainant responds to his "offer" to sell the domain

name, his "only other option would be to sell it to XXX (pornographic)

websites who have been offering (him) a lot of money."

The Complainant submits

that at the end of his said e-mail of January 29 2001, the Respondent demonstrates

unabashed cynicism by purporting to condemn as "morally wrong" any internet

practices by which young audiences are misled to sites displaying pornographic

content.

The Complainant states

that in his e-mails, the Respondent has admitted to have acquired the domain

name <rowntrees.com> because of the nuisance value which it could have

to the Complainant should it fall into wrong hands. From very start, the Respondent

has been aware of the identity or "quasi-identity" between the disputed domain

name and the well-known trademark <ROWNTREES>, whose notoriety has further

grown thanks to the promotional computer-game to be found on the www site <rowntrees.co.uk>.

The Complainant further

submits that the Respondent's e-mail communications demonstrate very clearly

that his sole purpose for registering the domain name has been and remains to

use it as a means of extortion against Complainant. He is aware that Complainant's

www site <rowntrees.co.uk> enjoys great popularity among many consumers

of <ROWNTREES> confectionery and, in particular, among young people. He

recognizes that any threat to "pollute" the www site <rowntrees.com> with

pornographic banners and the like could affect Complainant's goodwill and reputation

very negatively and indeed cause an irreparable damage to the Complainant's

trademarks. He sees, therefore, that the Complainant must be extremely concerned

about this risk. The situation can only be described as pure extortion. The

Complainant submits that this "is a typical case of domain name squatting, but

much worse than most cases, as it is combined with a threat to harm Complainant

unless Complainant agrees to pay an yet unspecified sum to Respondent."

The Complainant submits

that the registration and use of the said domain name <rowntrees.com>

by the Respondent is merely intended to extort from the Complainant by threatening

to disrupt the business of Complainant unless the Complainant buys the said

domain name.

The Complainant furnished

a number of print-outs of e-mails received from the Respondent in support of

these claims.

B. Respondent

Although the Respondent

has not filed a Response, he has sent an e-mail to the Center requesting that

these Administrative Proceedings be suspended or postponed pending the outcome

of legal proceedings in the United Kingdom.

The essential points made

in this e-mail are that the Respondent had withdrawn a Response to these Administrative

Proceedings on the advice of his solicitor. He was awaiting a further consultation

with his solicitor and in the meantime he was not in a position to respond fully

in these Administrative Proceedings.

The said e-mail inter

alia contains the following statement:

"I must confirm however,

that I never have or threatened to put ANY pornographic material on ANY website

that uses the domain name rowntrees.com IN ANY WAY. The information supplied

to you by the complainant is not the truth and has been deliberately taken out

of context and 'twisted' completely out of proportion to benefit their case

in this dispute.

I can also confirm that

I have NOT blackmailed the complainant or tried to extort money from them in

anyway shape or form.

I must bring it to the

URGENT attention of the Administrative Panel (based on the panelists designated

by the Complainant) that the information the complainant supplied to you, is

indeed incorrect and completely out of context. The complainant HAS taken severe

legal action against me, (which they say they haven't BUT this CAN be proved

with full legal documentation) and I had to withdraw my initial reply to the

Administrative Panel because of this."

6. Discussion and Findings

In order to succeed in

its application paragraph 4(a) of the Policy places on the Complainant the onus

of proving that:-

(i) the domain

name in dispute 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 the said domain name; and

(iii) the

said domain name has been registered and is being used in bad faith.

The Complainant

has established that it is the owner of numerous registered trademarks for the

word <ROWNTREES> dating back to a United Kingdom registration on

January 23, 1908.

It is clear that

the domain name is identical or confusingly similar to the Complainant's trademark

and the Complainant has in the view of this Administrative Panel succeeded in

establishing the first element of the test in paragraph 4(a) of the Policy.

In reaching this conclusion this Administrative Panel accepts the Complainant's

submission that the absence of the apostrophe in the domain name is not significant.

Furthermore this

Administrative Panel is satisfied that the Complainant has satisfied the second

element in the test and that the Respondent has no right or legitimate interest

in the said domain name.

The Complainant

has furnished prima facie evidence that the Respondent contacted the

Respondent by e-mail at the address professorpeel@rowntrees.co.uk on June 24,

2000. The said e-mail was sent from the Respondent's e-mail address but signed

"Joshua". It stated inter alia:

" Hello Professor

Peel, Can you put me in touch with your marketing department as I have a journey

that will benefit your company - www.rowntrees.com. I am not looking

to try and make a fortune from your company - I merely saved the name from being

bough by unscrupulous people outside England who wanted to auction off rowntrees.com

to the highest bidder. Please let me know how I can help you and how you can

help me and my new family - www.joshuaharper.co.uk. Thank you for your

time. I hope we can talk sensibly in the near future. Joshua."

It is clear that

the Respondent was aware of the Complainant's rights and interests in the <ROWNTREES>

trademark when he registered the said domain name and his abovementioned statements

in the view of this Administrative Panel are effectively an admission that his

reason for registering the said domain name was not based on any rights or legitimate

interest of his own. It is implicit that the Respondent claimed to have registered

said domain name to protect the Complainant's rights and reputation. As it appears

from the subsequent e-mail correspondence, this was not true and in fact the

Respondent threatened to carry out rather "unscrupulous" actions himself.

This Administrative

Panel is further satisfied that the Complaint has established that the said

domain name was registered and is being used in bad faith.

The Complainant

has submitted that the Respondent has registered and is using the said name

for the purposes of extortion. This Administrative Panel is only concerned with

the question of whether the Respondent acted in bad faith in registering and

using the domain name.

The Complainant

has furnished prima facie evidence of the e-mail message sent by the

Respondent to the representative of the Complainant on January 29, 2001 and

this Administrative Panel is satisfied that this piece of correspondence establishes

that the Respondent registered and is using said domain name in bad faith. The

subject line on the message stated "RE: Rowntrees.com" and the significant

parts of the message read as follows:

"Hello David,

If you can remember - we had a chat a while ago now about the above domain name.

As you are probably

aware - Rowntrees have greatly increased their advertising strategy.

You would probably

be able to tell this from your site 'hit counter' or whatever web trends or

monitoring system you use on your site.

On the same note

- I can tell you that I have had tens of thousands of hits on my site as well

!! - Along with many phone calls with people asking me questions I cannot answer.

This surprised me - as your adverts on TV clearly show a .co.uk suffix - BUT

the people I have spoken to say they can only remember the 'name' Rowntrees

and guess at it as a .com whilst under the impression that you are a multi-national

company. (and of course .com is much easier to remember than .co.uk).

I appreciated

your help - last time we spoke - but would feel it is in your employer's best

interest to now acquire this domain name from me - to make the most of their

marketing budget. Unfortunately, they turned down my reasonable offer and said

I can keep it.

In the mean time

whilst they think about it - I am now forced to place a variety of advertising

banners on my site - some of which may not be suitable for younger children

to look at. Unfortunately I have recently been made redundant through long-term

illness and am now looking for as many ways as possible to support my family

- as the only breadwinner in the house. My condition has deteriorated since

we last spoke and I am now unable to look after our 1 year old son, which means

my partner can no longer work., herself.

Whilst I did make

you and your employers a very fair offer - last time for this domain name -

I was in a much more comfortable financial position, Now this of course has

changed dramatically.

Please mail me

back ASAP after talking to your employers (if you don’t mind) as the banners

(some with Adult Content0 will be up in a couple of days. I am very sorry to

take up your time again by offering this domain name to you for the 2nd

time (for a mutually agreed price) but look forward to your urgent reply. This

only other option would be to sell it to the XXX (pornographic) websites who

have been offering me a lot of money - via auction sites - so they can acquire

a lot of 'traffic' for themselves by using your name. I myself, feel that it

would be morally wrong to have thousands of children across the UK seeing your

TV advert and then ending up on some 'pretty disgusting' and 'perverted' WebPages

full of pornographic ads and bestiality - But at the end of the day I must think

of my children and partners health and security.

Please understand

that I am not trying to blackmail you or your employer -but am hoping to come

to some mutual arrangement - so as not to subject young minds to some of the

heinous filth on the Internet AND support my family in our greatest time of

need. Many thanks and kind Regards, Mr M. Harper".

The Respondent

did not file a Response in these Administrative Proceedings but he did make

a number of assertions in his e-mail to the Center and there was a number of

points of conflict between the allegations of the Complainant in the Complaint

and the allegations and denials of the Respondent in this e-mail.

The first of these

conflicts was the Respondent's assertion that he has never posted nor has he

threatened to post any pornographic material on any www site that uses the said

domain name <rowntrees.com> whereas the Complainant had submitted evidence

to the effect that the Respondent had threatened to put a number of advertising

banners on the www site "some of which may not be suitable for younger children

to look at because of their "adult content".

To clarify these

conflicts, in the interests of fair procedures this Administrative Panel sought

further statements and documents in accordance with paragraph 12 of the Rules.

Following consideration

of the submissions and the documents furnished, this Administrative Panel is

satisfied that while there is no evidence that the Respondent posted pornographic

material on his www site, the Complainant has established that he did threaten

to put "adult content" which "may not be suitable for young children"

on his www site. Furthermore while there is no evidence that the Respondent

threatened to post pornographic material on the www site himself, the Complainant

has established that the Respondent has threatened to sell the domain name to

"the xxx pornographic websites".

The second point

which needed clarification was the Respondent's allegation that the Complainant

had initiated proceedings in the United Kingdom against the Respondent. The

Respondent stated as follows in his said e-mail to the Center:

" I must bring it to the

URGENT attention of the Administrative Panel (based on the panelists designated

by the Complainant) that the information the complainant supplied to you, is

indeed incorrect and completely out of context. The complainant HAS taken severe

legal action against me, (which they say they haven't BUT this CAN be proved

with full legal documentation) and I had to withdraw my initial reply to the

Administrative Panel because of this."

This Administrative Panel

directed that the Respondent furnish copies of the said documentation, however

the Respondent has failed to comply with the directions and the documents were

not furnished.

In the view of this Administrative

Panel, the Complainant has made out a prima facie case that the Respondent

has registered the said domain name primarily for the purpose of selling, renting,

or otherwise transferring the said domain name registration to the Complainant

who is the owner of the trademark <ROWNTREES> for valuable consideration

in excess of the Respondent's documented out-of-pocket costs directly related

to the said domain name. In accordance with the guidelines set out in paragraph

4(b)(i) of the Policy, such activity amounts to evidence that the said domain

name was registered and is being used in bad faith.

7. Decision

With specific reference

to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative

Panel decides that the Respondent has registered the domain name <rowntrees.com>

confusingly similar to the Complainant's trademark mark, that the Respondent

has no rights or legitimate interest in respect of that domain name and that

the Respondent has registered and is using that domain name in bad faith. Accordingly,

this Administrative Panel decides that said domain name <rowntrees.com>

should be transferred to the Complainant.

James Bridgeman

Sole Panelist

Dated: May

16, 2001

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