WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Domain Admin, Whois Privacy Corp., and WhoisSecure, WhoisSecure / Sylvester Galphin

Case No. D2021-1322

1. The Parties

The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.

The Respondents are Domain Admin, Whois Privacy Corp., Bahamas, and WhoisSecure, WhoisSecure, United States of America / Sylvester Galphin, Nigeria.

2. The Domain Names and Registrars

The disputed domain name <nestleholdings.com> is registered with Internet Domain Service BS Corp.

The disputed domain names <nestleprocurement.com> and <nestleprojects.com> are registered with OwnRegistrar, Inc.

Internet Domain Service BS Corp. and OwnRegistrar, Inc. are collectively hereinafter referred to as the “Registrars”. The above-mentioned disputed domain names are collectively hereinafter referred to as the “disputed domain names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by emails to the Registrars requests for registrar verification in connection with the disputed domain names. On April 30 and May 4, 2021, the Registrars transmitted by emails to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 6, 2021.

The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 28, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on June 7, 2021. 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.

4. Factual Background

The Complainant was first established in 1868 and is a part of the Nestlé group of companies (“Nestlé Group”), which sells products and services worldwide in various industries, primarily in the food industry. The Complainant markets its products worldwide in over 185 countries with more than 400 production centres around the world.

The Complainant is the registered owner of the majority of the trademarks of the Nestlé Group. Its NESTLÉ and NESTLE trade mark has been listed as one of the top 100 most valuable trade marks in the world and its presence is strongly supported by both online and offline global advertising campaigns. The Complainant has also registered the word “Nestle” and variations thereof as domain names, operating the website “www.nestle.com” as its primary web portal for global promotion.

The Complainant currently owns a trademark portfolio that includes over 2,000 brands from global icons to local ones. At present, the Complainant is the owner of over 2,250 international and national registrations including the following:

The disputed domain names <nestleholdings.com>, <nestleprocurement.com>, and <nestleprojects.com> were registered on March 15, 2021, April 9, 2021, and April 14, 2021 respectively. At the date of this Complaint, the disputed domain name <nestleholdings.com> resolved to an inactive page. The disputed domain names <nestleprocurement.com> and <nestleprojects.com> resolved to websites under construction.

It appears that the disputed domain names were used to create fake email accounts to impersonate a purported employee of the Complainant’s subsidiary to send fraudulent emails. Some of the emails included as an attachment, purchase orders displaying the Complainant’s NESTLÉ and NESTLÉ (word and device) marks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trademark. The disputed domain names wholly incorporate the NESTLÉ trade mark and the addition of the terms “holdings”, “procurement”, “projects”, and “.com” in the disputed domain names do not eliminate the overall notion that the designations are connected to the trade mark and the likelihood of confusion that the disputed domain names and the trade mark are associated;

(b) The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not affiliated with the Complainant in any way and the Complainant has never granted any authorisation or license to use the Complainant’s trademark. The Respondents are not commonly known by the disputed domain names, and have not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

(c) The disputed domain names were registered and are being used in bad faith. The mere fact that the Respondents have registered domain names incorporating the trademarks of a well-known company gives rise to an inference of bad faith. Based on the use of the disputed domain names, the Respondents registered and are using the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trademark.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Multiple Domain Names and Respondents

The Panel notes that the present Complaint has consolidated multiple domain name disputes and is filed against multiple respondents.

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are arguably registered by the same domain-name holder. The Panel has the authority to consolidate multiple domains into one dispute provided that (i) the disputed domain names are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. (See sections 4.11.2 and 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”))

In this case, the Complainant relies on the following facts to show that the disputed domain names are subject to common control:

- two of the three disputed domain names, namely <nestleprocurement.com> and <nestleprojects.com> are registered via the same Registrar, use the same privacy protection service, resolve to the same websites under construction and share the same DNS servers;

- the disputed domain names were registered within a short time period (between March 15 to April 14, 2021);

- the close similarity amongst the disputed domain names, each of which incorporate the Complainant’s trademarks in full followed by a corporate-descriptive term; and

- the disputed domain names have all been used in the context of the same scheme to send fraudulent emails.

The Respondents have neither objected to the request for consolidation nor substantively responded to the Complaint. Accordingly, the Panel accepts the Complainant’s contentions and agrees to consolidate the proceedings in relation to the disputed domain names in the Complaint.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights to; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <nestleholdings.com>, <nestleprocurement.com>, and <nestleprojects.com> are confusingly similar to the Complainant’s trademarks. All the disputed domain names incorporate the NESTLE trade mark in full. Panels have found that where the relevant trademark is recognisable within the disputed domain name, the addition of other terms (ether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8, WIPO Overview 3.0). The disputed domain name <nestleholdings.com> is accompanied with the term “holdings”, while the disputed domain name <nestleprocurement.com> is accompanied with the term “procurement”. The disputed domain name <nestleprojects.com> is then followed by the term “projects”. The disputed domain names are then accompanied with the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is generally disregarded when considering the first element. (See section 11.1 WIPO Overview 3.0)

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Respondents have not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has asserted that the Respondents have no business with and are in no way affiliated with the Complainant. The Respondents are not authorized nor licensed to use the Complainant’s NESTLÉ or NESTLE trademarks or to apply for registration of the disputed domain name. There is no evidence that the Respondents are commonly known by the name “Nestle” or “Nestlé”. Furthermore, the disputed domain names are being used for fraudulent purposes. The use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. (See section 2.13 of the WIPO Overview 3.0). There is also no other evidence that the Respondents have used or are planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondents have not responded to any of the Complainant’s contentions.

The Panel finds that the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests, which has not been rebutted by the Respondents. Accordingly, the Respondents have no rights or legitimate interests in regard to the disputed domain names.

C. Registered and Used in Bad Faith

Based on the given evidence, the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant had registered the NESTLÉ and NESTLE trademarks and the use of the Complainant’s NESTLE trademark in each of the disputed domain names cannot be a coincidence. The NESTLÉ and NESTLE trademarks are used by the Complainant to conduct its business and the Complainant has used the trademarks for over 150 years. The Panel is satisfied that the Respondents were aware of the Complainant and its NESTLÉ and NESTLE trademarks when they registered the disputed domain name.

It appears that the disputed domain names were used to create fake email accounts to impersonate a purported employee of the Complainant’s subsidiary to send fraudulent emails. Such use of the disputed domain names can never confer rights or legitimate interests on a respondent and is manifestly considered evidence of bad faith. (See section 3.14 of the WIPO Overview 3.0). The Panel is satisfied that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trade mark.

Though the disputed domain name <nestleholdings.com> resolves to an inactive website at the date of this decision, it is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.0)

For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <nestleholdings.com>, <nestleprocurement.com>, and <nestleprojects.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: June 22, 2021