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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sociйtй des Produits Nestlй SA v. Patricia Anderson

Case No. D2007-1177

1. The Parties

The Complainant is Sociйtй des Produits Nestlй SA, Vevey, Switzerland, represented by Studio Barbero, Italy.

The Respondent is Patricia Anderson, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nessquik-club.com> is registered with PSI-USA, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2007. On August 10, 2007, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain name at issue. On August 20, 2007, PSI-USA, Inc. 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”), 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 August 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2007.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on October 11, 2007. 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.

4. Factual Background

According to the Complaint, the Complainant is a Swiss limited liability company that was founded in 1866 by Henri Nestle. It sells products and services all over the world in various industries, more in particular in the food industry, including baby foods, breakfast cereals, chocolate and confectionery, beverages, bottled water, dairy products, ice cream, prepared foods, and food services; furthermore, the company operates in the pharmaceutical and the pet-care industry. It has over 250,000 employees and more than 470 factories around the world.

It is further stated in the Complaint, that the Complainant has been using the trademark NESQUIK for over fifty years for chocolate milk and breakfast cereals and that this is now one of the Complainant’s most important brands for cereal products. It appears that Nestlй Quik, the first powdered chocolate milk mix, was developed in the United States of America in 1948. It soon became a “family favourite” and, in the 1950’s, the product was launched in Europe as Nestlй Nesquik. In the United States, the name NESTLЙ QUIK was changed to the worldwide brand NESQUIK in 1999. In 1973, the NESQUIK Bunny was chosen to represent the brand and soon became a favourite among kids (as per Annex 5 to the Complaint). Today, Nesquik is sold in more than 60 countries worldwide and continues to be the leader in powdered milk flavourings. Other flavours, such as strawberry and sugar free chocolate, have been added to the range and it has also been sold in new forms, such as ready-to-drink, syrup and ice cream novelties. The Complaint says further that, in 2000, Nesquik Powder was fortified with added calcium, vitamin C, and other essential vitamins and minerals to help build strong bones.

So far as trade mark registrations are concerned, these are listed in Annexes 3 and 4 to the Complaint. Those in Annexe 3 cover the following:

- International Registration NESQUIK (word mark) N.413545 registered on February 5, 1975 and duly renewed thereafter in classes 5, 29, 30, 31, and 32 covering Austria, Bosnia and Herzegovina, Benelux, Czech Republic, Germany, Algeria, Egypt, Spain, France, Croatia, Hungary, Italy, Liechtenstein, Lithuania, Morocco, Monaco, Montenegro, The former Yugoslav Republic of Macedonia, Mozambique, Portugal, Romania, Republic of Serbia, Slovenia, Slovakia (Annex 3-1 to the Complaint).

- Community Registration NESQUIK (word mark) N. 3338696 filed on September 5, 2003 and registered on March 17, 2005 in classes 9, 11, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 35, 41,43 (Annex 3-2 to the Complaint).

- US Registration NESQUIK (word mark) N. 2576460 filed on March 26, 1999 and registered on June 4, 2002 in classes 29 and 30 (Annex 3-3 to the Complaint).

Annex 4 to the Complaint contains an extensive list of national registrations for NESQUIK that appears to include virtually every country that has a registered trade mark system. According to the Complaint, the Complainant also has registrations for over ninety domain names that comprise the words “Nesquik” or “Nesquik Club” and variations thereof in various top level domains. In particular, the Complainant and its subsidiaries operate a number of websites specifically for children under such domain names as “www.nesquik.com”, “www.nesquik.info”, “www.nesquik-club.com”, “www.nesquik-club.be”, “www.nesquik-club.co.uk”, “www.nesquik-club.eu”, “www.nesquik-club.ch”, where products and services offered under the NESQUIK brand are promoted (Annex 6 to the Complaint). Examples of these are provided in the Complaint itself and further printouts from some of these sites are contained in Annex 7.

As noted above, the Respondent is the registrant of the domain name <nessquik-club.com> and was registered as such on March 19, 2007 with an expiry date of March 19, 2008. According to the Complaint, the Complainant became aware of the existence of the site as the result of a communication from a customer in Spain who had accessed what she thought was the Complainant’s site but misspelled the domain name and found that she and her child were led to pornographic sites under the domain “www.nessquik-club.com” rather than the usual children’s website at “www.nesquik-club.com”. The Complainant subsequently sent a cease and desist letter to the Respondent but received no reply (Annex 11 to the Complaint). No reply was received to a similar communication to the Respondent about another website at “www.nessquik-club.de” (Annex 12 to the Complaint). Subsequently, the adult links on both sites appear to have been deactivated, and the company hosting the web paged on their servers has informed the Complainant that it has decided to “blacklist” the domain name as of July 26, 2007.

The Complainant has had no success in contacting the Respondent, but notes that it has found that the telephone and fax numbers listed in the official WHOIS corresponds to the telephone number of the information switchboard of the Los Angeles airport. The panellist has confirmed this personally by a Google search.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the requirements of paragraph 4(a) of the Policy are made out as follows:

- The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)). The Complainant submits here that its trade mark NESQUIK and the disputed domain name <nesquik-club.com> are still sufficiently similar for there to be confusion between them and refers to a range of prior panel decisions on similar facts. It also points to the extensive list of trade mark registrations that it has for NESQUIK and variations thereof.

- The Respondent has no rights or legitimate interests in the domain name (paragraph 4(a)(ii)), referring here to the failure by the Respondent to provide any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. It argues further that there has been no legitimate, non-commercial or fair use of the domain name, pointing here to the sponsored links appearing on the web page, in particular the sponsored links leading to “adult” websites. In addition, the Complainant argues that there is no evidence that the Respondent is commonly known by the domain name as an individual, business or other organization, and that the “Nesquik” is not the Respondent’s family name. Finally, the Complainant points to the fact that no response has been received to its correspondence and no attempt has been made by the Respondent to explain its use. In this regard, the Complainant argues that, given that it has shown prima facie evidence of the lack of any legitimate interest on the part of the Respondent under paragraph 4(a)(ii), the burden of proof has now shifted to the Respondent to show otherwise.

- The domain name was registered and is being used in bad faith (paragraph 4(a)(iii)). In this regard, the Complainant argues that the trade mark NESQUIK is well known and is intensively used in the United States of America where the Respondent appears to be registered. It therefore contends that it is not conceivable that the Respondent would not have had actual notice of its trade mark at the time of registration of the domain name. So far as use in bad faith is concerned, the Complainant refers to the sponsored links of the Respondent’s website and the commercial gain to the Respondent flowing from this. It also refers to the fact that some of these link to pornographic websites and cites many prior Panel decisions to the effect that this constitutes use in bad faith and will harm the Complainant’s reputation. It therefore contends that the Respondent’s conduct falls within par 4(b)(iv) of the Policy. In addition, it refers to the false telephone number and address provided by the Respondent as another indicator of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a). At the same time, it should be noted that paragraph 14(b) of the Rules provides that:

“…if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Respondent’s domain name:

“is identical or confusingly similar to a trademark or service mark in which the complainant has rights.”

So far as the first part of this paragraph is concerned, there are the following differences between the domain name and the various registered marks that mean that they are not identical: the domain name comprises two words separated by a hyphen, with the word “nessquik” being misspelled and with the .com suffix, while the marks consist simply of the word NESQUIK.

Nonetheless, the Panel accepts the Complainant’s contention that the composite domain name is still confusingly similar to the registered marks. The misspelling is of minimal significance, and the addition of a descriptive term, such as “club”, does not provide sufficient differentiation to move this confusion. The Complainant refers here to a number of Panel decisions involving similar descriptive terms that have been added to domain names, but one in particular that appears to be directly relevant to the present case is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Mark Tusla d/b/a Toshiba-Club.com, WIPO Case No. D2004-1066; see also Caesars Entertainment, Inc v Michael Ulrich/HardcoreDVD.com, WIPO Case No. D2004-0463.

The Panel also accepts the Complainant’s submission that the .com suffix to the end of the domain name does not affect the domain name for the purpose of establishing whether it is identical or confusingly similar: in addition to the cases cited by the Complainant, see also Rollerblade Inc v. Chris McCrady, WIPO Case No. D2000-0429, see Bang & Olafsen a/s v Unasi Inc, WIPO Case No. D2005-0728 and Deutsche Welle v. Diamond Ware Ltd., WIPO Case No. D2000-1202. The Complainant has therefore satisfied this aspect of paragraph 4(a)(i).

The second part of paragraph 4(a)(i) is also satisfied, in that the Complainant has proved that it has “rights” in the trade mark NESQUIK, with numerous registrations worldwide. It also seems reasonable to conclude that this is a well known mark that has been in use for many years.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in par 4(b) which provides that:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

Essentially, these are matters for a Respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist.

Thus, there is no evidence that points to either of the matters referred to in paragraph 4(c)(i) or (ii); furthermore, the Respondent is not a licensee, authorized agent of, or in any other way associated with the Complainant. Further indications of a lack of legitimate noncommercial or fair use of the domain name within the meaning of paragraph 4(c)(iii) are shown by the sponsored links, now deactivated, that appeared on the Respondent’s website, in particular those linking to various “adult” websites. The appearance of these sponsored links must also lead to the inference that the Respondent was deriving some commercial benefit from them. Finally, the Respondent has not replied to the Complainant’s allegations and has made no attempt to counter them.

Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) has been made out.

C. Registered and Used in Bad Faith

Under par 4(a)(iii), the Complainant must further show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that 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:

(i) circumstances indicating that you [the Respondent] 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 [the Respondent] 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 [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the Respondent] 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.

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E & J Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under Paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw, from such default such inferences, as it considers appropriate.

On the material before it, there is no evidence before the Panel to indicate that the circumstances referred to in paragraph 4(b)(i) or (ii) of the Policy arise here. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists; in particular, it is unclear whether the Complainant and Respondent are, in fact, competitors. However, the circumstances outlined in these sub-paragraphs are not exclusive, so it is possible for the Panel to have regard to other matters that might point to registration in bad faith by the Respondent. In the present case, it is difficult not to conclude that the Respondent must have, or should have, been aware of the existence of the Complainant’s trade mark at the time it registered the disputed domain name. The Complainant’s marks have been registered for some years prior to the date of registration of the domain name, and, more generally, it appears that the mark has been widely used by the Complainant. While it appears that constructive knowledge arising from the fact of registration alone is not a factor that UDRP panels have usually held to justify a finding of bad faith, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that this concept has been applied in a few cases where a complainant had a United States registered trademark and the respondent was also located in the United States. In such cases, the US doctrine of constructive notice may be held to be applicable: see, for example, Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Obviously, such a finding will be easier in cases where there are other circumstances indicating bad faith, including evidence that the relevant trade mark had been widely used beforehand both in the United States of America and elsewhere, and was well known, quite apart from the fact of registration: see, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 and Ticketmaster Corp v Spider Web Design Inc., WIPO Case No. D2000-1551. Another instance is Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the TELSTRA mark was obviously widely known and used in Australia prior to the registration of the disputed domain name. The present case also appears to fall within this category of cases: while the US registration of NESQUIK goes back only to 2002, the registrations in other jurisdictions, especially in Europe, are much older, and there is some basis also for finding that the mark has been widely used by the Complainant, both in the United States of America and elsewhere. Accordingly, the Panel finds that the Respondent must have been aware of the existence of the trade mark at the time it registered the domain name <nessquik-club.com> and that this indicates that its registration was therefore made in bad faith.

A further indication of bad faith at the time of registration is to be found in the misspelling of the trade mark in the domain name – an instance of typosquatting: see further the cases cited by the Complainant, National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 and Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536.

Finally, the Panel is prepared to infer that the disputed domain name was, until its deactivation, being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, through its provision of sponsored links to other sites, in particular “adult” websites. Clearly, when users were attracted to the website through the misspelt domain name and the reference to “club”, they would have done so in the belief that the website was run by or associated with the Complainant. It is then likely that the Respondent would have achieved some commercial benefit through the diversion of such users to these other sponsored sites. Although the website is now apparently deactivated, the Respondent’s bad faith use has not thereby been “purged”, as it could only resume its use of the domain name in circumstances where confusion with the Complainant’s trade marks will occur. Accordingly, the continued passive and anonymous holding of the domain name by the Respondent will still constitute use in bad faith for the purposes of para 4(a)(iii) of the Policy: see further Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In light of the above, the Panel concludes that the Complainant has made out the third requirement of paragraph 4(a), namely that both the registration and use of the domain name was, and is, in bad faith.

7. Decision

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 <nessquik-club.com> be transferred to the Complainant.

Staniforth Ricketson
Sole Panelist

Dated: October 25, 2007