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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societe Des Produits Nestle, S.A., and Nestle India Ltd., v. M/s Sandesh Medicos
Case No. D2000-0976
1. The Parties
Complainant No.1 is Societe des Produits Nestle, S.A., registered office 1800, Canton of Vaud, Vevey, Switzerland. Complainant No. 2 is Nestle India Ltd., registered office M-5A, Connaught Circus, New Delhi 110 001, India. "Complainants" refers to Complainants Nos. 1 and 2 collectively or as appropriate; "Complainant" refers to Complainant No.1. In this action the contact address of the Complainants is: Nestle India Limited, DLF Centre, P.O. Box No. 611, Sansad Marg, New Delhi 110 001, India. The Complainants are represented by Mr. B. Murli, Head of Legal and Company Secretary, Nestle India Limited (address as above) and by Mr. Pravin Anand, of Anand & Anand, B-41, Nizamuddin East, New Delhi 110 013, India.
The Respondent is M/s Sandesh Medicos, Proprietor Mr. Sandesh Jain, 213 Shreevardhan 4 R N T Road, Indore 452 010 (M.P.), India. The Respondent is represented by I. C. Gangrade (Advocate), 139, Shrinagar Extension, Indore – 452 001 (M.P.), India.
2. The Domain Name and Registrar
The Domain Name subject to this Complaint is "cerelac.com". The Registrar of the Domain Name is Network Solutions, Inc., (NSI), 505 Huntmar Park Drive, Herndon, Virginia, 20170, U.S.A.
3. Procedural History
3.1. The Complaint was received by email at the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) on August 8, 2000, and in hard copy with Annexes on August 14, 2000. A copy of the Complaint was sent by the Complainants to the Respondent by post on August 9, 2000. A copy of the Complaint was sent by the Complainants to the Registrar by email on August 8, 2000 and by courier on August 9, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center by email on August 15, 2000.
3.2. On August 22, 2000, verification was received from the Registrar of Network Solutions, Inc., to the effect that the Domain Name "cerelac.com" is registered by that Registrar in the name and billing contact of Sandesh Medicos, 213 Shreevardhan 4 R N T Road, Indore, MP 452 010 India; administrative, technical and zone contact Manranjan Agarwal, 211 Shreevardhan 4 R N T Road, Indore, MP 452000 India. The Registrar stated that Network Solutions’ 4.0 Service Agreement is in effect.
3.3. On August 22, 2000, the WIPO Center determined (and the Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN), subject to the subsequent Amendment below.
3.4. On August 23, 2000, the WIPO Center notified the Complainants (copied to the Respondent) of the need to amend Section VIII Mutual Jurisdiction of the Complaint. On August 30, 2000, the Complainants sent to the WIPO Center an Amendment to Section VIII of the Complaint and stated that copies were being sent to the Respondent and the Registrar. In the Amendment, in accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainants agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the Domain Name that is the subject of this Complaint, to the jurisdiction of the competent courts as provided for in the Code of Civil Procedure 1908 in India.
3.5. Formal Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent and to the Respondent's administrative contact on September 14, 2000, and in corrected form on September 15, 2000 by WIPO Center by email and fax (Complaint and Amendment without attachments) and via courier (with enclosures). The deadline for the receipt of a Response was set as October 4, 2000. The Formal Notification was copied to the Complainants by email and to ICANN and to the Registrar, Network Solutions, Inc.
3.6. On September 27, 2000, a Response was received from the Respondent's representative by email at the WIPO Center, marked as copied to the Complainants. On October 12, 2000, WIPO Center replied to the Respondent (copied to Complainants) referring to Paragraph 15 of the Complaint and the meaning of Paragraph 3 (b) (xiii) of the Rules (Mutual Jurisdiction).
3.7. On October 18, 2000, a further Response was received at the WIPO Center, marked as copied to the Complainants. On October 24, 2000, the WIPO Center replied to the Respondent (copied to the Complainants) drawing attention to the ICANN Policy and Rules.
3.8. On November 27, 2000, Dr. Clive Trotman, having provided the WIPO Center by fax with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to the Complainants, the Respondent and the Administrative Panel. An electronic copy of the Complaint was emailed to the Administrative Panel on November 27, 2000, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. The disputed Domain Name "cerelac.com" was registered on or before July 24, 1999, being the date of record created by NSI.
4.2. The Complainants belong to the Nestle Group of companies, which has plants in 83 countries comprising 509 factories employing about 230,000 people. Complainant No. 2 is a subsidiary company of the Nestle Group in India that has been engaged in the manufacture and sale of processed foods including infant foods since 1962.
4.3. The Complainant is the registered proprietor of the trademark CERELAC that is used by the Complainants in connection with cereals and baby food. The trademark CERELAC has been used since 1949 and was first used in India in 1975 since when it has been used continuously and extensively. Complainant No. 2 is the licensee of the Complainant in India and uses the trademark CERELAC under a Registered User agreement. Products bearing the CERELAC trademark are popular and widely sold in India and in at least 14 other countries. The trademark CERELAC is registered or registration is pending in at least 84 countries.
4.4. On September 10, 1999 the Complainant sent to the Respondent's administrative contact a notice to cease and desist from the use of the Domain Name and to transfer the same to the Complainant. This was not complied with.
4.5. The above facts in paragraphs 4.1 through 4.4 are supported by documents that were submitted as Annexes to the Complaint.
5. Parties’ Contentions
A. Contentions of Complainants
5.1. The contentions of the Complainants include (paragraphs 5.2 through 5.10 below) that:
5.2. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy.
5.3. The Domain Name "cerelac.com" is identical with or confusingly similar to the trademark CERELAC in which the Complainant has rights. The Complainant's trademark is an invented word and highly distinctive. The word CERELAC does not have any meaning or connotation in the English language other than as a trademark of the Complainant.
5.4. The Respondent has no rights or legitimate interests in the disputed Domain Name "cerelac.com" and the Respondent’s adoption of the Domain Name is inspired by the reputation accruing to the Complainant’s trademark CERELAC. The use of the Domain Name by the Respondent is intended to give an impression of some connection with the Complainants or their approval of its use or to cause confusion with the Complainants.
5.5. The Domain Name "cerelac.com" was registered and acquired by the Respondent primarily for the purpose of selling it to the Complainants or to a competitor of the Complainants for a price in excess of the costs of registration.
5.6. A cease and desist notice sent by the Complainant to the Respondent's administrative contact, stating that the registration of the Domain Name "cerelac.com" was likely to cause confusion or deception on account of the trademark rights of the Complainant, was not complied with.
5.7. The Respondent told an officer of Complainant No. 2 that the Respondent was seeking an amount of US$ 20,000, negotiable, for the Domain Name "cerelac.com". The Respondent later confirmed by email to the Complainant's Attorney that the Domain Name was for sale through a representative in the USA, but without mentioning a price.
5.8. The Respondent has not activated a web site named "cerelac.com" and thereby demonstrates an intention by the Respondent to block that Domain Name. If the Respondent had a bona fide reason to register the Domain Name it would have activated the web site and not offered to sell it to the Complainants.
5.9. The Respondent has no rights or legitimate interests in the disputed Domain Name which was registered in bad faith for a combination of the reasons given above and because people could be misled into using the web site thinking it was authorized by the Complainants. The Respondent has misappropriated the trademark of the Complainants in order to pass off its goods or services.
5.10. The Complainant requests that the Domain Name "cerelac.com" be transferred to Complainant No. 1.
B. Contentions of Respondent
5.11. The Respondent in two separate documents contends (paragraphs 5.12 through 5.16 below) that:
5.12. Under the ICANN Rules and section VIII (15) of the amended Complaint, the Complainants are required and have agreed to submit to jurisdiction in the location of the Domain Name holder's address, i.e., Indore, India. The Respondent challenges the jurisdiction of the proceeding and that the case be decided by a single panelist.
5.13. The Respondent denies the evidence of the Complainants presented by affidavit to the effect that the Respondent by telephone asked for $US 20,000, negotiable, for the Domain Name.
5.14. "Cerelac.com" is the Respondent's proprietary Domain Name which they can use in any manner they deem fit. The Respondent's company, M/s Sandesh Medicos (Est. 1987), is a well-known pharmaceutical wholesaler and stockist. It is in the process of launching consumer products into Indian and international markets that have no relation to the Complainants' products.
5.15. Non-use of the Domain Name as a web site is because of the present dispute.
5.16. The Respondent operates a small company and has behaved innocently in matters concerning the Domain Name. The Respondent was unaware of the Complainants' trademark.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. The registration agreement between the Registrar and the Respondent, at Section 8 Domain Name Dispute Policy, states:
"If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference."
In addition, Paragraph 4(a) of the Policy states "You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant No. 2 and the Respondent are located in India and the Respondent contends that the Complainants are required to submit to jurisdiction in India and that the Administrative Panel has no jurisdiction. The Administrative Panel does not accept this contention.
6.3 The Complainants have made the relevant assertions as in 6.1 above, therefore this dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.4. The Panel further notes that the Complainant has submitted to the jurisdiction of the competent courts of India, where the Respondent is located, pursuant to paragraph 3(b)(xiii) of the Rules.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.5. The Domain Name that is the subject of the Complaint is "cerelac.com". The Complainants have submitted that the Domain Name contains the trademark CERELAC and the Complainants have provided abundant documentary evidence that they have extensive and long-established rights to that trademark. The Panel finds on the facts that the Domain Name "cerelac.com" is effectively identical to the trademark CERELAC in which the Complainants have clearly established that they have rights. The Complainants therefore succeed under element 4 (a) (i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of Domain Name
6.6. The Complainants have submitted that the Respondent does not have any rights to or legitimate interests in the Domain Name for reasons including those summarized in Section 5 above. It is for the Respondent to refute this submission by establishing any applicable rights or legitimate interest in the Domain Name, in particular but without limitation under Paragraph 4 (c) (i) or (ii) or (iii) of the Policy.
6.7. The Respondent states that it is a well-known pharmaceutical wholesaler and stockist in the process of launching products having no relation or similarity to products of the Complainants. The Administrative Panel does not find that this statement meets the evidential standard of "before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name ... in connection with a bona fide offering of goods or services" in the terms of Paragraph 4 (c) (i) of the Policy.
6.8. In possible respect of Paragraph 4 (c) (ii) of the Policy the Administrative Panel has not been provided with any evidence that the Domain Name is in bona fide use or preparation for use and there is no evidence that the Respondent as an individual or business has been commonly known by the Domain Name.
6.9. The Respondent does not claim to be making a legitimate non-commercial or fair use of the Domain Name as included in Paragraph 4 (c) (iii) of the Policy since the Domain Name is not being used as a web site and its projected use is commercial.
6.10. Having regard to the conclusions reached in 6.7, 6.8 and 6.9 above and recognizing that the circumstances listed under Paragraph 4 (c) of the Policy are without limitation, the Panel finds that the Respondent does not have any rights to or legitimate interest in the Domain Name. The Complainants therefore succeed under Paragraph 4 (a) (ii) of the Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.11. Paragraph 4 (b) (i) - (iv) of the Policy comprises four circumstances any one of which in the alternative (but without limitation) shall be evidence of registration and use in bad faith. The Complainants have led evidence by affidavit supporting the contention that the Respondent has attempted to sell the Domain Name to the Complainants for a high price. The Respondent denies this and says the evidence is false. Further evidence shows that one and a half months after the conversation reported in the Complainants' affidavit, the Respondent wrote to the Complainant's Attorney offering to sell the Domain Name through a USA representative of the Respondent. Evidence has been provided that the Domain Name is not in use except for sale, but the Respondent says that it was planning to make bona fide use of it. The combination of evidence leads the Administrative Panel to the conclusion that the Complainants' case is the stronger and that the activities of the Respondent fit those of Paragraph 4 (b) (i) of the Policy. The Administrative Panel therefore finds in favour of the Complainants under Paragraph 4 (a) (iii) of the Policy.
6.12. Under Paragraph 4 (b) (ii) of the Policy, no evidence was offered by the Complainants to the effect that the Respondent has engaged in a pattern of conduct to prevent the owners of trademarks from reflecting them in their domain names.
6.13. With regard to Paragraph 4 (b) (iii) of the Policy, the Complainants do not appear to base their Complaint particularly on this clause and it has not been argued as to whether the nature of the Respondent’s business makes it a competitor. The Administrative Panel does not need to make a finding under this heading.
6.14. The considerable dossier of evidence in the form of trademark registrations, sales records, package labels and other evidence provided by the Complainants convinces the Administrative Panel that the trademark CERELAC is widely recognized and of long standing in India. The Complainants certify that the word CERELAC is an original creation and claim that the Respondent has copied the word. The Respondent, through his Attorney, in his first letter of Response states his intentions for the Domain Name as "...they shall use it in any manner they deem fit" and "...my clients are in full capacity and preparedness to immediately start using "cerelac.com"." The Attorney acknowledges that the Respondent "...received a formal letter from [Complainant No. 1] ... informing them of existence of ... cerelac brand." The Administrative Panel finds on the facts that the overall activities of the Respondent amounted to an attempt to use the Domain Name to attract Internet users to a web site for commercial gain in the manner proscribed by Paragraph 4 (b) (iv) of the Policy.
6.15. Paragraph 4 (a) (iii) of the Policy requires that the Domain Name "...is being used in bad faith". The Administrative Panel is satisfied that a domain name being held and rendered unavailable for registration by another is being used for that purpose and is therefore "registered and being used." Furthermore, Paragraph 4 (b) reads in part "For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:" and then presents clauses 4 (b) (i), (ii), (iii) and (iv). Since the Administrative Panel finds (6.11 and 6.14 above) adequate elements of Paragraphs 4 (b) (i) and (iv) to be proven, those findings are the "evidence of the registration and use of a domain name in bad faith" referred to in the preamble of Paragraph 4 (b) of the Policy which in turn deals specifically with "the purposes of Paragraph 4 (a) (iii)." The Panel, therefore, finds the requirements of Paragraph 4 (a) (iii) to be satisfied in full and that the Domain Name was registered and is being used in bad faith.
6.16. In summary, as stated in 6.5 above the Complainants succeed under element 4 (a) (i) of the Policy. As stated in 6.10 above, the Complainants succeed under element 4 (a) (ii) of the Policy. The conclusion reached in each of the alternatives 6.11, 6.14 and 6.15 above is that the Complainants succeed under element 4 (a) (iii) of the Policy. The Complainants therefore have proven their case in total and the Decision is made in favour of the Complainants and against the Respondent.
7.1. The Decision of the Administrative Panel is that the disputed Domain Name "cerelac.com" is confusingly similar to the trademark CERELAC in which the Complainants have rights or legitimate interests; that the Respondent has no rights or legitimate interests in the Domain Name "cerelac.com"; and that the Respondent has registered and is using the Domain Name in bad faith. The Decision of the Administrative Panel is that the Domain Name "cerelac.com" shall be transferred to Complainant No. 1.
Clive N. A. Trotman
Dated: December 8, 2000