Société des Produits Nestlé SA v. Telmex Management Services

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Telmex

Management Services

Case No. D2002-0070

1. The Parties

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."

2. Domain Name and Registrar

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

5.1 Complainant

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.

5.2 Respondent

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.

6. Discussion and Findings

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.

6.1 Identical or confusingly similar to a trademark or a service mark

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.

6.2 Rights or legitimate interest in the domain name

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.

6.3 Registration and use in bad faith

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.

7. Decision

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

More cases by this complainant

• Société Des Produits Nestlé SA — D2009-0256 · Terminated
• Société des Produits Nestlé SA v. Wolf Internet Services LDC ; Wolfgang Sauer — D2008-1626 · davigel.com · Transfer · 22 Dec 2008
• Société des Produits Nestlé SA v. Deleting domain, Umbeke Membe — D2008-0738 · sahabatnestle.com · Transfer · 21 Jul 2008
• Société Des Produits Nestlé SA v. Mustafa Yakin / Moniker Privacy Services — D2008-0016 · coffeemate.com · Transfer · 11 Mar 2008
• Société Des Produits Nestlé SA v. Jéremie Guyot — DFR2007-0020 · friskies.fr · Transfer · 28 Jun 2007
• Société des Produits Nestlé SA — D2005-0514 · Terminated