The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero S.p.A., Italy.
The Respondents are Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Glova Karl, United States, Groso row, United States, Nitsch Weiser, United States, TheIs Thdss, United States, Binhuang Lin, China, and Minyu Lin, China.
The disputed domain names <nespresso-factory.shop>, <nespressofactory.shop>, <nespressousa.store>, <nespresso.sbs>, <nespresso-outlet.shop>, <nespresso-usa.shop>, <nespresso-usa.store>, <nespresso-usa.site> and <nespresso-usa.online> are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <nespresso-factory.shop>, <nespressofactory.shop> and <nespressousa.store>. On October 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names
<nespresso-factory.shop>, <nespressofactory.shop> and <nespressousa.store>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 29, 2021, which also included a request for consolidation of the disputes in respect of the disputed domain names <nespresso-factory.shop>, <nespressofactory.shop> and <nespressousa.store>.
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 Respondent of the Complaint, and the proceedings commenced on November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 14, 2021.
On November 26, 2021, the Complainant informed the Center that it wished to submit an amended Complaint in order to add the additional domain names <nespresso-outlet.shop>, <nespresso.sbs>, <nespresso-usa.shop>, <nespresso-usa.store>, <nespresso-usa.site> and <nespresso-usa.online> to this proceeding. On November 29, 2021, the Center informed the Complainant that its request would be considered by the Panel when appointed.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 21, 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.
On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <nespresso-outlet.shop>, <nespresso.sbs>, <nespresso-usa.shop>, <nespresso-usa.store>, <nespresso-usa.site> and <nespresso-usa.online>. On January 10, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for these disputed domain names. On January 14, 2022, the Panel issued his Procedural Order No.1 whereby he invited the Complainant to submit by January 25, 2022 an amended Complaint containing its arguments or evidence demonstrating that all named Respondents are the same entity or that the domain names included in the original Complaint and the additional domain names are all under common control, and invited all Respondents named in the amended Complaint to submit Responses to the amended Complaint by February 14, 2022. On January 25, 2022, the Complainant submitted an amended Complaint. The Respondents did not submit any Responses to this amended Complaint.
The Complainant is a subsidiary of Nestlé Group founded in 1866 by Henri Nestlé. Nestlé Group sells products and services all over the world in various industries, primarily in the food industry, and has more than 270,000 employees and it is present in more than 80 countries with more than 400 production centers worldwide. Nestlé Group is one of the world largest food consumer products company in terms of sales, which amounted to CHF 84.3 billion in 2020. According to Fortune Magazine’s annual ranking, Nestlé Group is the 78th company of the world’s 500 largest companies.
The operations of the Nestlé Group in the United States commenced in the early 1900s. They are now carried out by Nestlé USA, Nestlé Purina, Gerber, Nestlé Health Science, Nestlé Professional, Nestlé Skin Health, and Nespresso, through 150 locations in 31 states, employing over 30,000 people in the United States. In 2019, the sales of Nestlé Group in the United States amounted to CHF 33.2 billion, representing the largest market of Nestle Group in the world. The presence of the Nestlé Group in China dates back to 1908. It has more than 25,000 employees in China and the China market represented CHF 5.7 billion in annual sales in 2021.
Nespresso SA is part of Nestlé Group and is present in over 76 countries, including the United States, and has over 13,500 employees worldwide. The NESPRESSO concept refers to Nestlé Group’s fully integrated product and services line for the preparation of coffee targeting the higher end of the consumer and professional markets. NESPRESSO products and services can be purchased in 82 countries worldwide either via the website at “www.nespresso.com”, enjoying 440,000 unique customers per day, or through a global network of over 815 boutiques in 536 cities developed since 2000.
The Complainant is the owner of, inter alia, the following trademark registrations for the sign “NESPRESSO” (the “NESPRESSO trademark”):
- the International trademark NESPRESSO with registration No. 499589, registered on December 10, 1985 for services in International Class 30;
- the Chinese Trademark NESPRESSO with registration No. 993170, registered on October 24, 1995 for goods in International Class 30;
- the International trademark NESPRESSO with registration No. 777873, registered on March 14, 2002 for goods and services in International Classes 7, 9, 11, 21, 30 and 38;
- the European Union trademark NESPRESSO with registration No.002793792, registered on July 3, 2006 for goods and services in International Classes 7, 9, 11, 21, 30, 35, 37, 39, 41 and 43;
- the International trademark NESPRESSO with registration No. 1054554, registered on September 13, 2010 for goods and services in International Classes 9, 11, 16, 21, 29, 30, 35, 37, 39, 40, 41, 42 and 43; and
- the United States trademark NESPRESSO with registration No. 4476277, registered on January 28, 2014 for goods and services in International Classes 11, 30, 35, and 43.
The Complainant is the owner of, inter alia, the domain names <nespresso.shop> and <nespresso.store> and operates the website at the domain name <nespresso.com> as its primary web portal.
The disputed domain names were registered on the following dates and by the following registrants:
|
Disputed domain name |
Date of registration |
Registrant |
|
<nespressofactory.shop> |
August 17, 2021 |
Glova Karl |
|
<nespressousa.store> |
August 18, 2021 |
Groso row |
|
<nespresso-factory.shop> |
September 18, 2021 |
Nitsch Weiser |
|
<nespresso-usa.shop> |
November 10, 2021 |
TheIs Thdss |
|
<nespresso.sbs> |
November 12, 2021 |
Binhuang Lin |
|
<nespresso-outlet.shop> |
November 13, 2021 |
Minyu Lin |
|
<nespresso-usa.store> |
November 16, 2021 |
Binhuang Lin |
|
<nespresso-usa.site> |
November 18, 2021 |
Minyu Lin |
|
<nespresso-usa.online> |
November 18, 2021 |
Minyu Lin |
According to the evidence submitted by the Complainant, the disputed domain names have resolved to websites offering for sale NESPRESSO coffee machines and pods and featuring the Complainant’s NESPRESSO trademark and images of the Complainant’s products.
The Complainant states that the disputed domain names are identical or confusingly similar to the NESPRESSO trademark. The disputed domain name <nespresso.sbs> is identical to this trademark as it reproduces it entirely, while the other disputed domain names incorporate the trademark with the addition of the non-distinctive elements “factory”, “outlet” or “usa” or a hyphen. According to the Complainant, the disputed domain names are likely to increase the confusion in Internet users who may believe that they are owned and used by the Complainant in connection with official NESPRESSO stores in the United States, are related to NESPRESSO production facilities or are official online stores selling NESPRESSO products at discounted prices.
According to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names, because they not commonly known by names corresponding to the disputed domain names, and the Complainant has not authorized the registration of the disputed domain names or licensed the use of the NESPRESSO trademark. The Complainant notes that the Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services before or after any notice of the dispute. Rather, the disputed domain names resolved to websites mirroring the Complainant’s official NESPRESSO portal, misappropriating the Complainant’s NESPRESSO trademarks, logo, product visual and advertising images, and imitating its look and feel. On these websites, the Respondents were also offering for sale NESPRESSO coffee machines and pods at discounted prices, in the absence of any disclaimer of non-affiliation with the Complainant, and failing to disclose the identity and contact information of the entity managing these online stores, thus suggesting to Internet users that these websites are authorized or operated by the Complainant or by an authorized reseller of the same. The “Sign in” sections of these websites invited Internet users to fill in a form with their personal data in order to purportedly register into the private area of the websites, and it cannot be excluded that the purpose of this was to extort confidential information for possible fraudulent purposes. The Complainant concludes that no fair use according to the Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) could therefore be invoked by the Respondents.
With reference to the fact that some of the disputed domain names currently resolve to error pages, the Complainant states that in light of their prior use and the fact that the other websites continue to be active, the Respondents cannot certainly claim to have used them for a legitimate business.
The Complainant also submits that it sent a cease-and-desist letter to the Respondents on August 23, 2021 and subsequent reminders in September and October 2021, but the Respondents did not respond.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to it, the distinctive sign NESPRESSO is well-known and has been used extensively since 1986 also in the United States and China, so the Respondents must have been aware of the existence of the Complainant’s trademark and its worldwide reputation at the time of registration of the disputed domain names. The Respondents’ actual knowledge of the Complainant and its trademark at the time of the registration of the disputed domain names is also demonstrated by the fact that the Respondents’ websites imitate the contents of the Complainant’s official portal, feature the NESPRESSO trademark and protected contents, and offer for sale the Complainant’s products. The Complainant submits that the websites at the disputed domain names do not contain disclaimers of non-affiliation, which demonstrates that the purpose of the Respondents was to use the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to such websites, by creating a likelihood of confusion with the Complainant’s NESPRESSO trademark as to the source or affiliation of their websites and taking unfair advantage from the well-known character of this trademark for the Respondents’ personal profit. The fact that the majority of the disputed domain names currently resolve to error pages does not prevent a finding that they are still used in bad faith, as the Respondents might at any time activate them again in the future.
The Complainant adds that the Respondents registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in corresponding domain names and have engaged in a pattern of such conduct.
The Complainant concludes that the Respondents’ failure to respond to the Complainant’s cease-and-desist letters and the concealment of their identities and contact details have also to be taken into consideration.
The Respondents did not reply to the Complainant’s contentions.
The Complainant requests that all of the disputed domain names and the named Respondents be consolidated in a single UDRP proceeding. In support of its request, the Complainant submits that all of the disputed domain names, which are identical or confusingly similar to the NESPRESSO trademark with the addition of descriptive terms or geographical terms, are under the control of the same single individual or entity or of a group of individuals acting in concert, using possible fictitious names or alternative aliases to attempt to evade the enforcement of the Complainant’s intellectual property rights against them. In this regard, the Complainant highlights that all of the disputed domain names are registered via the same Registrar, prima facie using the same privacy protection service, and share the same DNS servers, all of them were registered in a short period, as the registrations subject to the original Complaints were made between August 17 and September 18, 2021, while the additional disputed domain names were registered after the commencement of the proceeding between November 10 and 19, 2021. The Complainant also points out that the disputed domain names all encompass the NESPRESSO trademark followed by a dictionary word or a geographical term, are registered in the same or similar new gTLDL, and have very slight variations, such as the addition of a hyphen or the variation of the new gTLD. Finally, the Complainant notes that the disputed domain names are used in connection with substantially identical websites, all of which misappropriate the NESPRESSO trademark and product visuals and offer for sale NESPRESSO pods and machines, also at discounted prices, in the absence of any disclaimer of non-affiliation and without disclosing the names and contact details of the websites’ administrators.
The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainant.
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, UDRP panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, or other arguments made by the complainant.
The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the Respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. As noted by the Complainant, the disputed domain names were registered within short periods of time, are registered via the same Registrar and share the same DNS servers, and follow the same naming pattern, a combination of the NESPRESSO trademark with a dictionary word or a geographical term, and the associated websites are similar in design and content, offering for sale NESPRESSO pods and machines, and contain no disclaimer or names and contact details of the websites’ administrators. These circumstances show that it is more likely than not that the disputed domain names are under common control.
None of the Respondents has advanced any reasons why it may not be equitable to allow the consolidation of the disputes. It appears that the consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.
Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding.
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondents have registered and are using the disputed domain names in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
None of the Respondents has however submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.
The Complainant has provided evidence that it is the owner of the NESPRESSO trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, and will disregard the “.shop”, “.store”, “.sbs”, “.site” and “.online” gTLDs of the disputed domain names.
The disputed domain name <nespresso.sbs> incorporates the NESPRESSO trademark entirely without the addition of any other elements. This is sufficient for the Panel to conclude that this disputed domain name is identical to the NESPRESSO trademark in which the Complainant has rights.
Each of the other disputed domain names incorporates the NESPRESSO trademark in combination with a dictionary word or a geographical term, and the trademark is easily recognizable in them. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.
In view of the above, the Panel finds that the disputed domain names <nespresso-factory.shop>, <nespressofactory.shop>, <nespressousa.store>, <nespresso-outlet.shop>, <nespresso-usa.shop>, <nespresso-usa.store>, <nespresso-usa.site> and <nespresso-usa.online> are confusingly similar to the NESPRESSO trademark in which the Complainant has rights.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, because they have not been authorized to use the NESPRESSO trademark and have not been commonly known under the disputed domain names. The Complainant adds that the Respondents have never made any bona fide use of the disputed domain names, but use them to host websites that feature the NESPRESSO trademark as well as official marketing materials of the Complainant and sell products bearing the NESPRESSO trademark without disclosing the lack of relationship with the Complainant and the identity of the administrators of the websites. Thus, the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.
None of the Respondents has submitted a Response, and the contentions of the Complainant and the evidence submitted by it have not been disputed.
As discussed in section 2.8.1 of the WIPO Overview 3.0, panels acting under the Policy have recognized that resellers or distributors using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In view of the circumstances of the present case, the Panel finds that the requirements of the Oki Data test have not been complied with by the Respondents. The disputed domain names follow the same naming pattern incorporating the NESPRESSO trademark in combination with a dictionary word or a geographical term, and resolve to similar websites that offer the Complainant’s products without providing any information about their owners and without containing any disclaimer for the lack of affiliation to the Complainant. The registration of the seven disputed domain names with an identical naming pattern within a short period of time appears as an attempt to “corner the market” in domain names that reflect the NESPRESSO trademark.
Therefore, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain names.
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain names all incorporate the NESPRESSO trademark, which was registered many years prior to their registration, some in combination with additional elements, so Internet users may regard them as official online locations of the Complainant. As discussed in section 6.1 above, it is more likely than not that all disputed domain names are under common control, and they resolve to similar websites that offer the Complainant’s products without disclosing the lack of affiliation with the Complainant. The Complainant states that it has not authorized the registration and use of the disputed domain names, and none of the Respondents maintains the opposite or provides any plausible explanation for their registration and use. Three of the disputed domain names were registered within a short period of time, while the others were registered after the Complainant filed its Complaint.
Taking the above into account, the Panel concludes that it is more likely than not that the Respondents have registered these disputed domain names acting in concert, with knowledge of the Complainant and targeting the NESPRESSO trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching official online locations of the Complainant.
In view of the above, the Panel accepts that by registering and using the disputed domain names, the Respondents, have intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names, by creating a likelihood of confusion with the Complainant and its NESPRESSO trademark, which supports a finding of bad faith under paragraph 4(b)(iv) of the Policy. Given their number, the identical naming pattern used for them, and their registration dates, the registration of the disputed domain names also appears as an attempt to “corner the market” in domain names that reflect the NESPRESSO trademark, which supports a finding of bad faith under paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith.
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 <nespresso-factory.shop>, <nespressofactory.shop>, <nespressousa.store>, <nespresso.sbs>, <nespresso-outlet.shop>, <nespresso-usa.shop>, <nespresso-usa.store>, <nespresso-usa.site> and <nespresso-usa.online> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: February 21, 2022