Société des Produits Nestlé SA v. Diana Sapi

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé SA v. Diana Sapi

Case No. D2002-0888

1. The Parties

The Complainant is Société des Produits Nestlé SA of Vevey, Switzerland represented by Dr Michael Treis of Baker & McKenzie, Zurich, Switzerland.

The Respondent is Diana Sapi of Surabaya, Indonesia. The Respondent is unrepresented and has filed no Response.

2. The Domain Name and Registrar

The disputed domain name is <dancow.org>. It is registered with Network Solutions Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2002. On September 25, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On September 27, 2002, the Registrar transmitted by email to the Center its verification response confirming that the 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 September 30, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2002. No Response was filed. On October 21, 2002, the Center issued a Notification of Respondent Default.

The Center appointed the Honourable Sir Ian Barker, QC of Auckland, New Zealand as the sole Panelist in this matter on November 25, 2002. 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 language of the administrative proceeding is English.

4. Factual Background

The Complainant is a leading manufacturer of food, including confectionary and beverages. With a total workforce of approximately 225,000 people and some 479 factories worldwide, the Complainant is Switzerland’s largest company and the world’s largest food company.

The Complainant is the owner of a range of trademark registrations worldwide. In particular, Complainant has several registrations for the trademark DANCOW in the Republic of Indonesia. The first registration was on February 18, 1985, (renewed on November 6, 1995, under No. 347870) for the trademark DANCOW (Word & Device). The trademark DANCOW (Word) was registered in 1986, and DANCOW – STAMINA in 1996. These trademarks are mainly used for sterilized milk, steamed milk, milk power, condensed milk, skim mild and other dairy products, etc.

The word DANCOW is a contraction of DANISH COW and, thus, an invented word. It does not have any meaning or connotation in Indonesian language, nor in any other language, other than as the trademark of Complainant. Apart from its trademark rights, Complainant can also claim exclusive authorship.

In Indonesia, the trademark DANCOW (alone or in combination with other word and/or device elements) enjoys a high reputation and goodwill. Three awards have been given to the brand in the last two years in that country. In 2002, the Complainant’s turnover with DANCOW products in Indonesia will exceed US$150 million, making the company the leading Indonesian producer of powder milk with a market share for the last two years above 40%. The trademark DANCOW is widely and intensively used in advertising in Indonesia.

The Complainant operates various websites dedicated to popular brands primarily

designed to attract possible customers of Complainant’s products. These websites

are frequently visited. Complainant’s websites and trademarks have been the

target of cyber-squatters, as can be illustrated by a number of UDRP Panel decisions

(e.g. <nestlefoods.com> (Société des Produits Nestlé

SA v. Telmex Management Services, WIPO Case No.

D2002-0070), <nestle-purina.com> et al (Société

des Produits Nestlé SA v. Stuart Cook, WIPO

Case No. D2002-0118), <rowntrees.com> (Société des

Produits Nestlé S.A v. Matthew Harper, WIPO

Case No. D2001-0278), <crossandblack-well.com> (Société

des Produits Nestlé SA v. DRCT Limited, WIPO Case

No. D2001-1213).

In March 2002, Nestlé’s Indonesia division discovered that the disputed domain name had been registered by the Respondent. Nestlé’s Indonesian legal representative sent a cease and desist letter to the Respondent on March 20, 2002. This letter was unanswered. On September 4, 2002, the Complainant sent a second letter to the Respondent, requesting her to transfer the domain name to the Complainant. The letter was sent by DHL Worldwide Express courier to the Respondent’s address as provided in the WHOIS database contact details. However, DHL returned the letter because such address did not exist. From the date of registration to the time of filing, the disputed domain name has never been active.

5. Parties’ Contentions

Complainant

Identical or Confusingly Similar

The Complainant is the legitimate owner of all rights arising out of and in connection with the trademark DANCOW. The distinctive element of the disputed domain name is identical with the trademark DANCOW.

Rights or Legitimate Interests in the Domain Name

The Respondent cannot claim any rights or legitimate interests in respect of the disputed domain name because:

The Respondent is domiciled in Indonesia, where DANCOW is a well-known and

highly distinctive mark. The Respondent has knowingly registered a domain name

that infringes the Complainant’s trademark rights and must be aware that the

disputed domain name corresponds to this trademark. The domain name is inactive

and there is no evidence whatsoever of the Respondent’s use of the domain name

in connection with a bona fide offering of goods or services.

The Respondent is not authorized by and has no other links to the Complainant

or the Complainant’s business, and is not commonly known as an individual, business

or organization by the domain name.

There are no indications that the Respondent makes a legitimate non-commercial

or fair use of the domain name. DANCOW is, unlike many generic and descriptive

terms that may be used legitimately to describe a website or its content, an

invented word. It does not exist in any language, in particular not in Indonesian,

and the Complainant can claim exclusive authorship. Thus, the Respondent cannot

rely on a right of her own or on any legitimate interest to use the word DANCOW.

The Domain Name Registered And Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademark and that the disputed domain name has been registered and is being used in bad faith:

Products labeled with the trademark DANCOW enjoy great popularity among Indonesian

consumers. The Complainant is market-leader in the relevant business sector

with a market share for DANCOW products of more than 40%. The trademark DANCOW

is widely used in advertisements on TV, in magazines, etc. The trademark has

become well-known in Indonesia and therefore must have been known by the Respondent

(who is also domiciled in that country) at the time of registration.

The Complainant’s trademark is an invented word and highly distinctive. The

word DANCOW does not have any meaning or connotation in any language other than

as trademark of the Complainant. Thus, the only explanation why the Respondent

would register the disputed domain name is because she knows of the Complainant

or the Complainant’s business and trademark.

Because the trademark DANCOW is well-known, the Respondent must have been

aware of the considerable value the domain name has for the Complainant, since

Indonesian consumers, as well as others interested in information about DANCOW

will enter the disputed domain name in their webbrowser in order to find the

Complainant’s website. There can therefore be hardly any doubt that the Respondent

acquired the domain name primarily for the purpose of selling the registration

to the Complainant for valuable consideration in excess of his out-of pocket

costs directly related to the domain name.

The Respondent provided false contact information. UDRP Panels have held that

such behaviour is an indication of registration and use in bad faith (c.f.,

as the leading case, Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO

Case No. D2000-0003). In Telstra, the panel emphasized the non-exhaustive

nature of paragraph 4(b) of the Policy and found that Respondent’s bad faith

can be further evidenced, inter alia, if the Respondent has taken active

steps to conceal its true identity (e.g. by operating under a name that is not

a registered business name), and if the Respondent has actively provided, and

failed to correct, false contact details, in breach of its registration agreement.

The Respondent must have known of Complainant’s trademark rights and

deliberately provided false contact information to increase the difficulties

for Complainant to recover the domain name causing harm to the Complainant and

its trademark.

Respondent

The Respondent has made no submissions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- 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

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

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

Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s registered trademarks. The Panel considers the first criterion proved.

Legitimate Rights and Interests

As to the second criterion, the Complainant gave the Respondent no legitimate rights or interests in respect of the domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondent’s rights or legitimate interests to a domain name. None of these has been demonstrated. The second criterion is therefore proved.

Bad Faith Registration

As to bad faith registration and use, the Panel considers this criterion proved for the reasons set out in the Complainant’s submissions which the Panel accepts as clearly demonstrated. The facts that the name is inactive and the Respondent has been difficult to contact support this view.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <dancow.org> is identical to the trademark to which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <dancow.org> be transferred to the Complainant.

Hon. Sir Ian Barker, QC

Sole Panelist

Dated: December 3, 2002

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