Société des Produits Nestlé SA v. Stuart Cook

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Stuart

Cook

Case No. D2002-0118

1. The Parties

Complainant is Société des Produits Nestlé SA, a corporation organised and existing under the laws of Switzerland.

Respondent is Mr. Stuart Cook, London, England, United Kingdom.

2. The Domain Names and Registrars

The domain names at issue are <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net>.

The registrars are GKC.NET, INC., and Easyspace Ltd.

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration

and Mediation Center (the "WIPO Center") in hard copy on February 5, 2002,

and subsequently in electronic format on February 11, 2002. The WIPO

Center sent an Acknowledgement of Receipt to the Complainant on February 6, 2002.

The Respondent contacted the WIPO Center via e-mail and expressed his surprise

that the Complaint had been filed, since he had offered to sell the domain names

to the Complainant. The WIPO Center referred the Respondent to file a formal

Response in accordance with the Policy and the Rules.

On February 11, 2002, a Request for Registrar Verification was transmitted

to the Registrar mentioned in the Complaint, GKC.NET, who the next day informed

the WIPO Center that they were only the Registrar of the domain names <nestle-purina.com>

and <nestlepurina.net>. The Registrar later forwarded the requested WHOIS

details.

The WIPO Center informed the Complainant of this deficiency on February 12, 2002,

and the Complaint was subsequently amended with the name of the Registrar for

the two other contested domain names, Easyspace Ltd.

On February 13, 2002, a Request for Registrar Verification was transmitted

to Easyspace Ltd., who the next day provided the WIPO Center with the necessary

verification details.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center

Case Administrator on February 14, 2002. The Panel has independently

determined and agrees with the assessment of the WIPO Center that the Complaint

is in compliance with the requirements of the Uniform Domain Name Dispute Resolution

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

Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform

Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy, in effect as of December 1, 1999 (the "WIPO

Supplemental Rules").

The fees for a single-member Panel were paid on time and in the required amount

by the Complainant.

All formal deficiencies having been cured, on February 14, 2002,

a Notification of Complaint and Commencement of Administrative Proceeding (the

"Commencement Notification") was transmitted to the Respondent by

the required means, setting a deadline of March 6, 2002, by which

the Respondent could file a Response to the Complaint.

On March 14, 2002, having received no Response from the designated

Respondent, the WIPO Center transmitted to the parties a Notification of Respondent

Default.

In view of the Complainant’s designation of a single Panelist (but without

prejudice to any election to be made by the Respondent) the WIPO Center invited

Knud Wallberg to serve as a Panelist in the Case, and transmitted to him

a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received Knud Wallberg’s Statement of Acceptance and Declaration of

Impartiality and Independence, the WIPO Center transmitted on March 28, 2002,

to the parties a Notification of Appointment of Administrative Panel and Projected

Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist.

The Projected Decision Date was April 12, 2002. Due to some administrative

problems, the decision was issued on April 15, 2002.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the

Policy, the Uniform Rules, the WIPO Supplemental Rules, but without the benefit

of a Response from the Respondent.

4.Factual Background

Complainant's Business and Website

Complainant is a leading manufacturing company in the area of food, including

confectionery and beverages. With a total workforce of approximately 224,541

people and some 479 factories worldwide, Nestlé is not only Switzerland's

largest company, but it is also the world's largest food company.

Complainant operates a website under the domain name <nestle.com>. This

is a promotional website which is primarily designed to attract possible customers

of Nestlé's products, and to allow the public to obtain information about

the Complainant's worldwide business. The website "www.nestle.com"

has become a very well known and frequently visited website.

This Complaint is based on the Complainant's rights in the following trademarks:

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.

Full list of all current trademark registrations and applications for NESTLE

(with or without additional elements) in the United Kingdom were attached as

Annex 3.

NESTLE is a famous trademark. It enjoys a worldwide reputation and goodwill

as one of the leading manufacturers of food. Complainant uses its housemark

NESTLE for food products in more or less all of the countries worldwide.

PURINA is a well-known trademark for pet food and is owned by Nestlé

Purina PetCare Company, formerly by change of name Ralston-Purina Co., St. Louis,

Missouri, USA. Complainant has acquired Ralston-Purina Co. for more than € 10 billion

in January 2001. Complainant therefore effectively controls Ralston-Purina

Co. and its intellectual property assets in form of trademarks, even though

title to these trademark rights has not been transferred to Complainant but

is with Complainant's subsidiary Ralston-Purina Co.

Ralston-Purina Co. does not join in this UDRP Complaint but it explicitly agrees

to and supports Complainant's action, cf. Annex 4.

5.Parties’ Contentions

A.Complainant

The Respondent’s Domain Names are identical or confusingly similar to a trademark

in which the Complainant has rights

The four domain names concerned commence with the famous trademark NESTLE and

end with the well known trademark PURINA, which belongs to a subsidiary of the

Complainant.

In WIPO Case No. D2000-0433 Time Warner

Inc. and EMI Group plc v. CPIC Net, CPIC had registered five different combinations

of the trademarks WARNER and EMI following the first press announcement of the

merger of these two companies. The Panelist found that the dissimilarities in

the registered domain names did not preclude finding likelihood of confusion

and the overall impression left suggested the names belonged to the Complainants

and would inevitably result in confusion.

It is clear from the above that Respondent has registered the domain names,

which are confusingly similar with Complainant's trademarks.

Respondent has no Rights or legitimate Interests in the Domain Names

It becomes clear from the above that Respondent does not have any rights or

legitimate interest in respect of the domain names <nestle-purina.com>,

<nestle-purina.net>, <nestle-purina.org> and <nestlepurina.net>.

NESTLE is a famous mark, and Respondent is evidently and has always been aware

that the domain names <nestle-purina.com>, <nestle-purina.net>,

<nestle-purina.org> and <nestlepurina.net> correspond to this trademark.

A person or company would not register the relevant domain names if it had not

known that Nestlé is one of the world's leading food companies which

has acquired one of the world's largest pet food manufacturers called Ralston-PURINA.

Neither the Complainant nor its subsidiary Ralston-Purina have given their consent

to the Respondent to use its trademark and tradename. Respondent has nothing

to do with Complainant or Complainant's business, and there are absolutely no

indications whatsoever that Respondent would have rights or legitimate interests

in respect of the domain names.

The Domain Names should be considered as having been registered and used in

Bad Faith

In December 2001, Complainant became aware that the Respondent, Stuart

Cook, has registered the four domain names <nestle-purina.com>, <nestle-purina.net>,

<nestle-purina.org> and <nestlepurina.net>. Any person going to

these sites does not find any information about Nestlé or about food

manufactured by Nestlé, but is rather a website of a third party which

in all likelihood seeks to exploit the goodwill and notoriety which is attached

to the trademark NESTLE and the trademark PURINA.

Immediately after having discovered that a combination of its famous trademark

NESTLE and the well-known trademark PURINA of its subsidiary Ralston-Purina

Co. was used as a domain name of a third party’s website, Complainant's Authorized

Representative sent a demand letter to Respondent. A copy was attached as Annex

6. Complainant's Representative has not yet received any answer to this letter.

Respondent is responsible for the website under construction under the domain

names <nestle-purina.com>, <nestle-purina.net>, <nestle-purina.org>

and <nestlepurina.net>. Respondent is aware that Complainant's website

"nestle.com" enjoys great popularity among many consumers of Nestlé

food products and others interested in information about Nestlé, such

as potential investors, people looking for professional opportunities, journalists

and many others. Respondent intends to exploit the fame and goodwill of the

Nestlé and PURINA trademarks by diverting Internet traffic intended for

Complainant to its website. It is clear that this causes great and irreparable

harm to Complainant and its trademark as some of the individuals who are going

to the website "nestle-purina.com", "nestle-purina.net",

"nestle-purina.org" and "nestlepurina.net" could assume

that there is some kind of relationship between the Complainant and the Respondent.

It is, therefore, a typical case of domain name squatting and which causes substantial

harm to the Complainant.

In the case L’Air Liquide v. MIC, WIPO

Case No. D2001-1246 which concerned a domain name consisting of a combination

of "airliquide" and "suez" to <suezairliquide.com>,

the Respondent had also registered the domain name because of merger discussions

between the two companies Air Liquide and Suez Lyonnaise Des Eaux. There had

been considerable publicity around these discussions, which however did not

result in a merger. In that case, the Administrative Panel has decided the registration

showed a pattern of conduct aiming at unduly exploiting the commercial value

of the domain name. The Panel found that on the evidence of prior WIPO proceedings,

such a domain name registration has been made in order to prevent the owner

of the trademark from reflecting the trademark in a corresponding domain name.

As in that case, the Respondent's bad faith is absolutely evident and manifest.

B.Respondent

As mentioned above in section 3, the Respondent has not filed a Response in

accordance with the Rules, Paragraph 5 and regrettably no other information

on or by the Respondent has been presented to the Panel.

6.Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint

in accordance with the Policy, the Rules and any rules and principles of law

that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of

the following:

1)that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

2)that the Respondent has no legitimate interests in respects of the domain

name; and

3)that the domain name has been registered and used in bad faith.

Identical or confusingly similar

The contested domain names contains a combination of the registered trademark

NESTLE with the addition of PURINA, which is one of the dominant and distinctive

parts of the tradename of the company Ralston Purina. No proof has been put

before the Panel as to whether PURINA in itself is a registered trademark but

on the other hand there are clear and uncontested information that the name

has been used as trade name or trademark in the USA for a number of years.

Although the combination of the two signs is not registered or used as a trademark,

the contested domain names must nevertheless be considered confusingly similar

to the marks in which the Complainant has rights. This is in particular true

as far as the mark NESTLE is concerned since this mark is included in its entirety

as the first and dominant part of the domain names. Reference is made to those

previous cases mentioned in the Complaint and to WIPO

Case No.D2000-0135 <maersksealand.com> et al.

The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

Legitimate interest

The Complainant has not licensed or otherwise permitted Respondent to use its

trademark or to apply for any domain name incorporating the mark.

Before the actual business transaction took place, the idea of putting the

two names together would have been far-fetched. It is therefore not credible

that the Respondent registered the contested domain names without knowledge

of the transaction. The Panel finds the Respondent did have such knowledge.

That knowledge would not, of itself, necessarily lead to the conclusion that

the Respondent has no legitimate interest in the names. However, the Respondent

has not been and even today does not seem involved in any business using those

domain names. It has offered no evidence of the kind contemplated by paragraphs

4 (c) (i), (ii) or (iii) of the Policy to demonstrate its rights or legitimate

interest in the domain names.

Consequently, the Respondent has not demonstrated that he has any prior rights

or legitimate interests in the domain name, and it seems very unlikely that

such interest could be demonstrated.

The prerequisites in the Policy, Paragraph 4(a)(ii), cf. 4 (c) are also considered

fulfilled.

Bad faith

Paragraph 4(a)(iii) of the Policy further provides registration and use

in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence

that is required.

The trademark NESTLE is registered in many countries around the world including

in the country of residence of the Respondent, England. In addition, the mark

must be considered world famous. The Panel finds that Complainant has proved

that the merger between the two companies was widely publicised also in England

before the date of the registration of the domain names. The Panel, therefore,

finds that it is unlikely that the Respondent did not know of the said merger

and of the two dominant housemarks when he registered the domain names. The

registration of the domain names must be considered done in bad faith.

Also, the fact that Respondent hold "passive" websites under the

contested domain names gives the wrong impression to the users of the Internet,

that the new company does not have a current presence on this media, a behaviour

that is able to create confusion on the market and that prevents the Complainant

from reflecting the natural combination of the marks in a corresponding domain

name.

With regard to the present case, it is also important to state that the mere

holding of a domain name that is identical or confusingly similar to a trademark

belonging to someone else, in itself can be considered disrupting to the business

of the rightholder. The Panel agrees that it is within the scope of the rights

conferred to a trademark to regard "passive use" as "use",

cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, and several other subsequent decisions.

Bearing these facts and the above arguments in mind, the Panel finds that the

domain names have been registered and are being used in bad faith, cf. Paragraph

4(a)iii and 4(b) of the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain

names according to Paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested the transfer of the domain names.

7.Decision

In view of the above circumstances and facts the Panel decides, that the domain

names registered by Respondent are identical or confusingly similar to the trademarks

in which the Complainant has rights, that the Respondent has not shown to have

any rights or legitimate interests in respect of the domain names, and that

the Respondent’s domain names have been registered and are being used in bad

faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that

the registration of the domain names <nestle-purina.com>, <nestle-purina.net>,

<nestle-purina.org> and <nestlepurina.net> be transferred to the

Complainant.

Knud Wallberg

Sole Panelist

Dated: April 15, 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