The Complainant is N.V Nutricia of Zoetermeer, Netherlands, represented by Dreyfus & associés, France.
The Respondent is Ruglobal, Haider Bilal of Harlow, Essex, United Kingdom of Great Britain and Northern Ireland.
The disputed Domain Name <nutricia.tel> is registered with Mesh Digital Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2010. On April 19, 2010, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the disputed Domain Name. On April 20, 2010, Mesh Digital Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010. The Respondent did not file a formal Response with the Center on or before May 11, 2010, although it did transmit informal email communications to the Center on May 5, 2010 and May 10, 2010.
The Center appointed Alexander Duisberg as the sole panelist in this matter on June 2, 2010. 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 Complainant is an internationally active food company. It sells under the trademark NUTRICIA infant formula and health products in many countries all over the world. The Complainant is the owner of a number of trademark registrations, consisting of or incorporating the word “nutricia”. In particular it owns the following registrations for the word mark NUTRICIA.
Complainant is the owner of the following international Trademark designating the United Kingdom:
- NUTRICIA, International Trademark No. 746226 registered on August 2, 2000 and covering goods and services in classes 5, 10, 16, 29, 30, 35, 41 and 42.
The Complainant is also the owner of the following national trademarks registered in the United Kingdom:
- NUTRICIA, No. 992317, filed on May 18, 1972, duly renewed and covering goods in class 29
- NUTRICIA, No. 1033558, filed on August 2, 1974, duly renewed and covering goods in class 29.
The Respondent appears to be an English company, with the address as provided above, represented by Haider Bilal. In his response, he did not provide other information.
The Respondent registered the Domain Name <nutricia.tel> on April 17, 2009 and displays a webpage containing two links directing to the “www.domainmonster.com” website.
Before introducing the UDRP action, the Complainant sent a cease-and-desist letter to the Respondent, dated July 24, 2009 to find an amicable settlement. That letter was based on the trademark rights of the Complainant and proposed a solution. The Respondent provided a brief reply to the Complainant's communication.
(1) The Complainant asserts the Domain Name <nutricia.tel> to be identical or at least highly similar to its trademarks as it incorporates the registered trademarks of the Complainant.
Furthermore the mere adjunction of the gTLD “.tel” is not a distinguishing feature and does not change the likelihood of confusion, as consumers are very likely to think that this Domain Name <nutricia.tel> directly refers to Complainant's products or services.
(2) The Complainant asserts that the Respondent has no rights or legitimate interest in the Domain Name. Specifically, the Complainant asserts the following arguments:
The Complainant is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark or seek the registration of any Domain Name incorporating said mark.
The Respondent has no prior rights or legitimate interest in the disputed Domain Name.
The Respondent has never used the term “nutricia” in any way before or after Complainant started its business. The registration of numerous NUTRICIA trademarks preceded the Domain Name registration <nutricia.tel> by many years.
In addition the Respondent is not known under the name “nutricia” or any similar term and does not use and has obviously no intention of using the Domain Name in connection with a bona fide offering of goods and services (and did not provide any evidence of preparation to do so). It has been consistently held that such absence of use implies the absence of a legitimate interest in the Domain Name (Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648; Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038).
(3) The Complainant asserts that the Respondent registered the Domain Name and is using it in bad faith.
The Respondent knew or must have known Complainant's trademark NUTRICIA at the time it registered the Domain Name <nutricia.tel>, as the Complainant is a worldwide leader in the field of healthy nutrition, baby and medical food and therefore is the owner of a well-known trademark. A previous UDRP decision stated that "NUTRICIA is a world-wide leading infant formula brand and it is used in many countries as a housemark for health and medical products. It is therefore highly unlikely that the [r]espondent happened to inadvertently select the identical term "nutricia" […] when crating its Domain Name" (N.V. Nutricia v. svemirNet Emir Mujezinovic, WIPO Case No. D2009-0876).
A simple trademark search at the date of registration of the disputed Domain Name would have revealed Complainant's trademark registrations and it has been held that the registration of a Domain Name containing a well-known mark may be a proof of bad faith in certain circumstances (L'oreal v. Domain Park Limited, WIPO Case No. D2008-0072, Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325, Media General Communications, Inc v. Rarenames, Webreg, WIPO Case No. D2006-0964, N.V. Nutricia v. svemirNet Emir Mujezinovic, supra).
In addition, a simple Google search would have resulted in the discovery of Complainant's related products news or trademark (L'oreal v. Domain Park Limited; Bouygues v. Chengzhang, Lu Ciagao; Media General Communications, Inc v. Rarenames, Webreg, supra).
The Complainant further argues that the word “nutricia” does not mean anything in English and therefore can not be chosen randomly. The word “nutricia” is a coined word and there are little odds that the registrant would have invented the same word.
The Domain Name is not currently used, so the relevant issue is whether in all circumstances of the case, it can be said that Respondent is acting in bad faith.
The distinction between undertaking a positive action in bad faith and acting in bad faith is important and under certain circumstances, inactivity is considered as being passive holding of the Domain Name, and therefore it may amount to the Domain Name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Further relevant circumstances indicative of bad faith are: the lack of response to Complainant's cease-and desist-letter (Alstom v. Oleg Y Shavilov, WIPO Case No. D2009-1727); the fact that the Domain Name has not really been used since its creation, which the Complainant alleges should be considered as passive holding (Telstra Corporation Limited v. Nuclear Marshmallows supra, Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055); the fact that the disputed Domain Name is not used for personal interest or for the bona fide presentation of products or activity (OSRAM GmbH v. Yuri A Ivanov, WIPO Case No. D2009-0692; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163).
The Respondent did not reply to the Complainant's contentions.
However, by email sent to the Center on May 5, 2010 (confirmed to be the official response by email of May 10, 2010), the Respondent asserted, that he bought the Domain Name <nutricia.tel> in April 2009 from “www.domainmonster.com” when it was available to the general public and that he bought it in good faith for the purpose of making legitimate noncommercial use as “nutriCIA.tel”. That email does not comply with the requirements of the Rules, paragraph 5(b).
The Respondent has therefore not contested the allegations of the Complaint, and the Panel shall decide the matter on the basis of the Complainant's submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).
First of all, the Panel finds that the reaction of the Respondent by email of May 5, 2010, in which he asserted that he bought the Domain Name <nutricia.tel> in April 2009 from “www.domainmonster.com” when it was available to the general public and that he bought it in good faith for the purpose of making legitimate noncommercial use as “nutriCIA.tel”, does not fulfill the formal requirements set down in the Rules, paragraph 5(b).
By not complying with the Rules, paragraph 5(b), the Panel holds that the Respondent did not file any formal Response to the Complaint in accordance with paragraph 14(b) of the Rules.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (paragraph 4.6) the Respondent's default does not automatically result in a decision in favour of the Complainant. In fact, the Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, <z-zegna.com>).
Pursuant to the requirements of paragraph 4(a) of the Policy, transfer of the Domain Name to the Complainant may only be granted if the Complainant demonstrates that each of the following three elements has been satisfied:
“(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 the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.”
Under paragraph 15(a) of the Rules,
“A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
There are two requirements that a Complainant must establish under this paragraph: that it has rights in a trade or service mark, and that the Domain Name is identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its NUTRICIA mark registered nationally and internationally. The Panel concludes that the Complainant, as the registered owner of the NUTRICIA mark pursuant to its registration documents, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The relevant part of the Domain Name <nutricia.tel> is “nutrica”. The Respondent's Domain Name comprises the registered mark, together with the gTLD “.tel”. By now it is well established that the gTLD signifier does not change the meaning of the name (F. Hoffmann-La Roche AG v. Jan Adair, WIPO Case No. D2009-1491; Osram GmbH v. Yuri A Ivanov; supra).
The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the Domain Name is identical or confusingly similar to this mark. The Panel finds therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The trademark NUTRICIA is owned by the Complainant as established. The Respondent is not associated with the Complainant or its business in any manner nor acts on its behalf. The Complainant contends that it has not given any authorization to the Respondent to use the trademark NUTRICIA as part of the disputed Domain Name.
To demonstrate its rights or legitimate interests to the disputed Domain Name, the Respondent may establish any of the following elements:
(i) that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services;
(ii) that the Respondent has been commonly known by the Domain Name;
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.
When examining each of the above elements, Panel finds that there is no offering of any goods or services by the Respondent in this case. The Respondent has not submitted any proof demonstrating an intent or preparation to use the Domain Name in connection with a bona fide offering of goods and services (Pivotal Corporation v. Discovery Street Trading Co. Ltd.; and Baccarat SA v. Web Domain Names, supra).
Further, there is no evidence to support a finding that the Respondent is commonly known by the Domain Name nor is there any evidence that the Respondent has made a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the mere acquisition of the Domain Name during an open registration period via an accredited registrar is not in and of itself adequate for awarding the Respondent a right or legitimate interest in the Domain Name. If this was the case, then the administrative procedure as provided for by the UDRP Policy would be essentially of no use (Pivotal Corporation v. Discovery Street Trading Co. Ltd., supra).
Therefore, the Complainant has established sufficient prima facie evidence. Consequently the burden of proof shifts to the Respondent who has to prove the existence of, without limitation, any of three circumstances listed in paragraph 4(c) UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has put forward well-supported arguments and, absent any formal or substantive reply from the Respondent, the Panel finds that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed Domain Names.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product.
The above circumstances are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the Domain Name in bad faith by Respondent in the appropriate cases.
One important consideration of whether Respondent has registered and used the Domain Name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned (Bouygues v. Chengzhang, Lu Ciagao, supra).
NUTRICIA is a world wide-leading infant formula brand and it is used in many countries as a house mark for health and medical products. Therefore it is highly unlikely that the Respondent happened to inadvertently select the identical term "nutricia" (N.V. Nutricia v. sevemirNet Emir Mujezinovic, supra).
In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders (BOUYGUES v. Chengzhang, Lu Ciagao, supra). A simple search on the Internet would have allowed the Respondent to find the Complainant. Specifically, research of the terms “nutricia" on “www.google.com” allows the searcher to identify the Complainant (L'oreal v. Domain Park Limited, supra).
Also a trademark search at the date of registration of the Domain Name would have revealed the Complainant's trademark registrations.
Therefore, taking into consideration these arguments, as well as the fact that in the Panel's view it is highly unlikely that Respondent would not have had actual notice of the Complainant and its trademark rights at the time of the registration of the Domain Name (L'oreal v. Domain Park Limited, supra), the Panel finds that the Respondent has registered disputed Domain Name in bad faith.
The question then is whether the Respondent has also used the disputed Domain Name in bad faith. It is well-established under the Policy that a “use” need not be active. An inactive “holding” of a domain name can itself, in certain circumstances, be a type of bad faith use of a domain name. (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
While none of the examples of bad faith, as listed (non-exhaustively) in paragraph 4(b) of the Policy are applicable to this case nor has the Complainant been able to provide evidence of an active use of the disputed Domain Name by the Respondent – through an active website or other form of active usage – the Panel holds, in line with established case law, that in the given case the passive holding of the disputed Domain Name as such constitutes a use in bad faith (Coloplast A/S v. Thomas Sugar, WIPO Case No. D2009-1005). In the absence of supporting evidence from the Respondent, the disputed Domain Name can only plausibly refer to the Complainant and its trademark.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <nutricia.tel> be transferred to the Complainant.
Alexander Duisberg
Sole Panelist
Dated: June 16, 2010