The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.
The Respondent is Shen Chaoyong of Shishi, Fujiang Province, China.
The disputed domain names <nestleskin.com> and <nestleskinhealth.com> (the “Disputed Domain Names”) are registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2014. On June 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 11 and 12, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On June 12, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 17, 2014. 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 a Swiss company founded in 1866 by Henri Nestlé and operates in various industries including food, pharmaceutical and pet-care. The Complainant has also extended its activities into specialized medical skin treatments. A globally reported press conference regarding recent high profile corporate developments within the Complainant’s group in the skin care business was held on February 11, 2014 in Clichy, France. The Complainant has over 283,000 employees and markets its products in over 200 countries. It has been ranked by Fortune Magazine as among the Fortune Global 500, including being listed as the 48th and 44th biggest company in the world in 2009 and 2010 respectively. Interbrand has ranked the Complainant among the Best Global Brands in 2013 and also ranked the trademark NESTLÉ with a worth of about USD 7.5 billion as the 56th most valuable trademark in the world.
The Complainant owns many trademark registrations around the world incorporating the word “nestlé”, including the following:
Jurisdiction | Trademark No. | Registration Date |
|
International |
400444 |
July 16, 1973 |
|
International |
479337 |
August 12, 1983 |
|
International |
638768 |
June 28, 1995 |
|
International |
704989 |
November 12, 1998 |
Many of the Complainant’s international trademark registrations with WIPO designate China (e.g., 638768, 704989).
The Complainant has also registered many domain names incorporating the word “nestle” under numerous gTLDs and ccTLDs, including <nestle.com> which resolves to the Complainant’s primary web portal for global promotions.
As no Response was submitted, there is very little information about the Respondent before the Panel. The Respondent appears to be an individual from Shishi city in China. The Respondent registered the Disputed Domain Names on February 12, 2014. The Disputed Domain Names did not resolve to any website. The Respondent also registered the domain names <nestleskinhealth.ch>, <nestleskin.co.uk>, <nestleskinhealth.cn> and <nestleskinhealth.com.cn> on February 12, 2014. Around the time of the Complaint, the domain name <nestleskinhealth.co.uk> redirected visitors the URL “http://www.kuaigang.com”. The other domain names did not resolve to any websites.
A large number of domain names including <facebooksupplier.com>, <facebooksuppliers.us>, <facebook.com.hk>, <nestleskinhealth.org>, <nestleskinhealth.net>, <amazonkindlefirehd.us>, <amazonlending.net>, <nokiamusicplus.com>, <googlebable.org>, <googlebable.net>, <nokiasolutionsandnetworks.com.cn>, <unileverfoundtry.com>, <sonyvp.com>, <hyundai-wiaihi.com> and <hfwhirlpool.com> are associated with the Respondent’s name and/or email addresses.
The Complainant contacted the Respondent via the front of a marketing agency on February 25, 2014. The Respondent responded to the marketing agency the next day, the text of which follows:
“Hello, We also have nestleskinhealth.com
nestleskinhealth.ch
nestleskinhealth.com.cn
nestleskinhealth.cn and nestleskin.com. So we are a whole, so we are a domain
name. So if you like we can sell nestleskinhealth.com
nestleskinhealth.ch
nestleskinhealth.com.cn
nestleskinhealth.cn and nestleskin.com 5 domain names 5800 dollars. If you need,
please contact me. We can trade in 4.cn. One of China’s largest domain name
transaction intermediary. Safe and simple. Look forward to hearing from you. Thank
you”.
This was followed by an exchange of correspondence which led to the Respondent reducing the price to USD 5,000.
The Complainant sent a cease and desist letter to the Respondent on April 7, 2014 in relation to the Disputed Domain Names. The Respondent replied offering to transfer six domain names including the Disputed Doman Names for USD 3,500. This was followed by an exchange of correspondence which ended with the Respondent insisting on the price of USD 3,000 on the basis that it is lower than “arbitration fees” and offering to also transfer <nestleskinhealth.net> and <nestleskinhealth.org> after acquiring them.
The Complainant contends that:
1) The Disputed Domain Names are identical or confusingly similar to the trademark NESTLÉ. The descriptive terms “skin” and “health” do not serve to distinguish the Disputed Domain Names from the trademark NESTLÉ but are also likely to increase the confusing similarity;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has not provided evidence of or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services before notice of the proceeding commenced. The Respondent is not a licensee or authorized agent of the Complainant or any way permitted to use the Complainant’s trademark NESTLÉ; and
3) The Disputed Domain Names were registered and are being used in bad faith. The trademark NESTLÉ is well-known. It is inconceivable that the Respondent was unaware of the existence of the trademark NESTLÉ or the company name Nestlé Skin Health SA. The Respondent’s offers in response to the approach of the marketing agency and the cease and desist letter are well in excess of the out-of-pocket costs directly related to the registration of the Disputed Domain Names. The Respondent registered the Disputed Domain Names with the main purpose of selling them to the legitimate trademark owner for valuable consideration in excess of out-of-pocket expenses in the manner described in paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreements for the Disputed Domain Names is Chinese. The default language of the proceeding is accordingly Chinese. The Complainant has requested for English to be adopted as the language of the proceeding.
Paragraph 11 of the Rules empowers the Panel to determine the language of the proceeding otherwise. Having regard to the circumstances, in particular the following, the Panel decides that English shall be adopted as the language of the proceeding:
a) The Respondent has demonstrated the ability to correspond in English when replying to the emails of the marketing agency and the Complainant’s cease and desist letter;
b) The Complainant does not communicate in Chinese;
c) The proceeding will be delayed if the Complaint were to be translated into Chinese;
d) The Respondent has chosen not to participate in the proceeding by not filing a Response. The Respondent has also not objected to the language request of the Complainant;
e) No procedural benefit will be achieved at this stage to insist that Chinese should be the language of the proceeding.
The Complainant is required to show the following limbs of paragraph 4(a) of the Policy is made out on the evidence:
a) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
c) the Disputed Domain Names have been registered and are being used in bad faith.
The trademark NESTLÉ is registered in many countries by the Complainant. The Complainant clearly owns rights therein. The Disputed Domain Names both incorporate the trademark NESTLÉ in its entirety. The only difference between the trademark NESTLÉ and the Disputed Domain Names <nestleskin.com> and <nestleskinhealth.com> are the descriptive suffixes “skin” and “skin health” respectively. The Panel agrees with the Complainant’s submission that these suffixes do not serve to distinguish the Disputed Domain Names from the trademark NESTLÉ. Therefore, the Panel holds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark NESTLÉ and the Complainant has met the requirements of the first limb of paragraph 4(a) of the Policy.
The Complainant has confirmed that the Respondent is not a licensee or authorized agent of the Complainant or any way permitted to use the Complainant’s trademark NESTLÉ. The Respondent has not refuted this assertion. There is also no evidence in the proceeding which indicate that the Respondent is using the Disputed Domain Names in connection with a bona fide offering of goods or services. The Panel does not regard the Respondent’s attempts at transferring the Disputed Domain Names and other domain names to the Complainant to be a bona fide offering of goods or services. There is also no evidence in the proceeding to suggest that the Respondent is commonly known by the Disputed Domain Names. In the circumstances, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Since no Response was filed, the prima facie case stands and the second limb of paragraph 4(a) of the Policy is established.
Based on the evidence before the Panel, the Panel accepts that the trademark NESTLÉ is well-known. The Panel agrees with the Complainant that it is inconceivable for the Respondent not to be aware of the existence of the century old trademark NESTLÉ. The Panel is convinced that the Respondent registered the Disputed Domain Names in February 2014 primarily with the purpose of transferring them to the Complainant for valuable consideration in excess of out-of-pocket costs as described under paragraph 4(b)(i) of the Policy. This is evidenced by the Respondent’s persistent offers and attempts at negotiating payment for transferring the Disputed Domain Names and other domain names to the Complainant when approached by the marketing agency and after having received the cease and desist letter. The amounts offered by the Respondent were clearly well in excess of the out-of-pocket costs of registering the Disputed Domain Names. Since the situation outlined by paragraph 4(b)(i) of the Policy is one of bad faith registration and use and the circumstances fall within the same, the Panel holds that the third limb of paragraph 4(a) of the Policy has also be established.
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, <nestleskin.com> and <nestleskinhealth.com>, be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: August 14, 2014