The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero S.p.A., Italy.
The Respondent is Domain Manager, Nespresso-Thailand.com of Bangkok, Thailand, self-represented.
The disputed domain name <nespresso-thailand.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2017. On December 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 9, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. On December 29, 2017, the Center received an email from the Respondent requesting an extension of four calendar days to submit a Response. The Respondent was granted the extension for response under paragraph 5(b) of the Rules. The Response due date was extended to January 5, 2018. The Response was filed with the Center on January 5, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 10, 2018. 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 wholly owned subsidiary of Nestlé S.A., a publicly traded Swiss company that is one of the largest consumer food companies in the world, according to published sources cited in Wikipedia. The Complainant owns most of the trademarks used under license by the Nestlé Group of companies, which has numerous brands with annual sales of over USD 1 billion each. One of these is “Nespresso”, a brand of coffee brewing machines designed for coffee bars and home use, with associated single-use capsules or pods of ground coffee beans. The Complainant currently sells “Nespresso” products in 64 countries through a website at “www.nespresso.com” (the “Complainant’s website”) and through some 450 boutique “Nespresso” shops in major cities (including one in Bangkok, Thailand).
The Complainant holds numerous registered NESPRESSO trademarks, including the following:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
NESPRESSO |
International Trademark |
499589 |
December 10, 1985 |
|
NESPRESSO |
European Union Trade Mark |
2793792 |
July 13, 2006 |
|
NESPRESSO |
Thailand |
187885, 187886, 187908 |
December 4, 2002 |
|
NESPRESSO |
Thailand |
182482 |
December 6, 2002 |
|
NESPRESSO |
Thailand |
263779 |
April 21, 2006 |
|
NESPRESSO |
Thailand |
62889 |
April 27, 2011 |
|
NESPRESSO |
Thailand |
64395 |
April 28, 2011 |
The Respondent states that it registered the Domain Name on August 14, 2011. It appears from the Registrar’s WhoIs records that the Domain Name registration was maintained in the name of a domain privacy service. Following notice of this proceeding, the Respondent was identified as the registrant, with the organization name “Nespresso-Thailand.com” and a postal address in Bangkok, Thailand. The Respondent has used the Domain Name since 2011 for a website (the “Respondent’s website”) and associated newsletter, selling NESPRESSO products to customers in Thailand as an unauthorized reseller. According to the Respondent, the Nestlé Group itself began offering “Nespresso” products in Thailand only in October 2016, opening a retail store in Bangkok and making products available to Thai residents through the Complainant’s website. Since that time, the parties have competed with each other in the Thai market.
Screenshots attached to the Complaint show that the Respondent’s website in 2012 included advertising images and text and at least one figurative mark (apparently not registered in Thailand) copied from the Complainant’s website, with an appropriated image of a NESPRESSO coffee capsule used as a favicon (shortcut icon) for the Respondent’s website. These early examples of the Respondent’s website pages do not appear to include a disclaimer of affiliation. The website operator was (and still is) identified as “Nespresso-Thailand.com”. The Complainant reports that the Respondent exacerbates confusion in its newsletter, texts, and email advertising by repeating slogans that the Complainant uses in its own advertising campaigns, such as “Nespresso – What else?” and “We wish you delightful Nespresso moments.” The Respondent’s website now includes a disclaimer of affiliation, in a small font at the bottom of each page, but it continues to include NESPRESSO images and text, as well as contact information for the Complainant’s own repair services in Thailand.
The Complaint documents multiple attempts to deliver cease-and-desist letters to the Respondent in 2012, 2014, and 2017, with changing and conflicting responses regarding the identity of the Respondent. The Complainant was ultimately directed to a Hong Kong company called Access Service Limited as the website operator, and a lawyer representing that company attempted to negotiate the sale of the Domain Name or alternatively of the entire business. The Registrar ultimately identified the current Respondent in the context of this proceeding.
The Complainant contends that the Domain Name is confusingly similar to its registered NESPRESSO trademark. The Complainant argues that the Respondent does not meet the standard for using the mark legitimately as an unauthorized reseller, as it has not appropriately disclosed its relationship with the Complainant and actively engenders confusion as to source and affiliation. The Complainant infers bad faith from this effort to misdirect Internet users for commercial gain, using a well-known trademark, and from the Respondent’s evasive conduct and attempts to extract a disproportionate sales price for the Domain Name.
The Respondent contends that the Domain Name (adding “-thailand.com”) is sufficiently dissimilar to the Complainant’s NESPRESSO mark that initial confusion is unlikely, and that the Respondent’s website is readily identified as distinct from the Complainant’s. The Respondent observes that the Complaint does not attach customer emails or other external evidence of actual confusion.
The Respondent asserts a legitimate interest in the Domain Name in connection with its online “Nespresso” resale business. The Respondent claims that it is well-known in Thailand as an online business with a name corresponding to the Domain Name, which the Respondent has used since 2011 to resell genuine “Nespresso” products in Thailand. The Respondent contends that it accurately identifies itself and publishes its postal address in Thailand on its website. It makes a point of disclaiming affiliation with the Complainant on every page of the website and in its FAQs.
The Respondent contends that it registered the Domain Name in good faith in 2011, after checking the legality of this step with the Department of Intellectual Property of Thailand, and that it has used the Domain Name for a legitimate business as a reseller for more than six years since then. The Respondent states that it offered to sell its business and the Domain Name to the Complainant only recently, after the Complainant objected to its further operation, but the parties did not reach an agreement. The Respondent protests that it has operated its business in good faith, using text and images to refer to the “Nespresso” products that it resells, and that the Complainant’s efforts to shut out alternative distribution channels in Thailand are themselves of questionable legality.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 respect of the disputed domain name; and
(iii) the disputed 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.”
The Complainant indisputably holds NESPRESSO trademarks in Thailand and other jurisdictions. The Domain Name incorporates this distinctive and well-known mark in its entirety and adds the geographical name “Thailand”. This does not avoid confusing similarity.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) 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 or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has demonstrated trademark rights and confusing similarity, and the Complainant denies authorizing the Respondent to use the NESPRESSO mark in the Domain Name, so the burden falls to the Respondent to demonstrate rights or legitimate interests in the Domain Name. The Respondent claims to be known by “Nespresso-Thailand.com”, and the Respondent’s website shows that name as the website operator. But the Respondent offers no evidence that a company by that name is established in Thailand or any other jurisdiction. When the Complainant tried to deliver cease-and-desist letters in 2012 and 2014 to the postal address shown on the website, there was no response, and local agents found no company called “Nespresso-Thailand.com” at the location. Instead, they were directed to “Stride Co., Ltd.,” which said that it only forwarded mail directed to Nespresso-Thailand. The agents were told that the website was operated by the Hong Kong company Access Service Limited. Counsel for that company corresponded with the Complainant about selling the Domain Name or the associated business. Thus, the Respondent has not established that it is “commonly known” by a name corresponding to the Domain Name, other than the use of the Domain Name itself, which does not suffice to establish rights or legitimate interests for purposes of Paragraph 4(c)(ii). See WIPO Overview 3.0, section 2.3.
The better argument for a reseller, even an unauthorized reseller such as the Respondent, is generally under paragraph 4(c)(i), if the reseller can meet the standards for a legitimate fair use of the disputed domain name in connection with a bona fide offering of goods or services before notice of the dispute. See WIPO Overview 3.0, sections 2.4, 2.5, 2.8, and the leading decision, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The theme in the decisions is the importance of balancing the need for some limited “nominative fair use” – naming the brand that the unaffiliated party distributes, resells, or repairs, for example – against the obvious risk of creating confusion as to source or affiliation.
Thus, one of the conditions established in Oki Data Americas, Inc. v. ASD, Inc., supra, is that the respondent’s site must accurately and prominently disclose the registrant’s relationship with the trademark holder. The Respondent here made no such disclosure initially, and its current disclaimer of affiliation, in small type at the bottom of each page and in the FAQs, can hardly be considered prominent. Indeed, as the Complainant observes, there are elements on the Respondent’s website and other communications, such as “borrowed” images, text, slogans, and links, that confuse rather than clarify the relationship between the parties. Combined with the name given for the website operator, which does not seem to be that of an actual company, these elements tend to engender rather than resolve ambiguity.
Other decisions cited in the WIPO Overview 3.0 support a finding against the Respondent on this point. Domain names including a categorically distinguishing term (such as “parts”, “refills”, “distributor”) are more likely to avoid confusion (WIPO Overview 3.0, section 2.8.2), while those including a geographic term are more likely to be seen as affiliated with the trademark owner (id., section 2.5.1). The current case is an example of the latter, not the former.
The Panel finds that an Internet user is all too likely to be confused as to source and affiliation, both initially when confronted with this Domain Name, and subsequently when viewing the Respondent’s website. The Panel concludes that this is not an instance of legitimate fair use of the Complainant’s trademark in connection with a bona fide offering of goods or services, and that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 […]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant alludes to both of these examples, but the first is not apposite because the Respondent used the Domain Name for years in its resale business without attempting to sell the Domain Name to the Complainant. Thus, the Panel cannot find this to be its primary motivation for acquiring the Domain Name in 2011.
The Panel does find on this record, however, that the Respondent has from the outset created a likelihood of confusion for commercial gain. The Respondent was unquestionably aware of the Complainant’s mark; its business is to resell the Complainant’s NESPRESSO-branded products. The Respondent’s model for purchasing genuine “Nespresso” products elsewhere and reselling them in Thailand may be entirely lawful, but it is obliged simply not to suggest a relationship with the Complainant’s parent company that it does not have. The Domain Name is inherently likely to mislead, and the associated website initially did little, and now does little more, to correct the consumers’ likely misapprehension that it is associated with the Complainant. Further, the Respondent’s pattern of evasion in responding to the Complainant’s understandable concerns tends to support an inference of bad faith. Notably, the Response does not address this conduct (instead, it falsely suggests that the Complainant made no objection for six years) or the website’s initial lack of a disclaimer of affiliation.
The Panel concludes that the third element of the Complaint, bad faith, has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <nespresso-thailand.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: January 24, 2018