Société des Produits Nestlé S.A. v. Bud light Beer
Claim Number: FA2106001952614
Complainant is Société des Produits Nestlé S.A. (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Bud light Beer (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nestlewater.us>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2021; the Forum received payment on June 25, 2021.
On June 26, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <nestlewater.us> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nestlewater.us. Also on July 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells a variety of products around the world, primarily in the food industry, including baby foods, breakfast cereals, chocolate & confectionery, coffee & beverages, dairy products, ice cream, prepared foods, pet food, as well as bottled water. Complainant has rights in the trademark NESTLÉ through its use in commerce since 1866, and its registration with multiple trademark agencies throughout the world including the World Intellectual Property Office (“WIPO”) and the United States Patent and Trademark Office (“USPTO”), the earliest of which dates to 1924. Complainant also owns a 2004 registration of the mark NESTLE WATERS at the Canadian Intellectual Property Office (“CIPO”). Further, one of Complainant’s sister corporations is named Nestlé Waters S.A. and, since the formation of that entity in 1992, it has become the world’s largest bottled water company worldwide offering such brands as PERRIER, SAN PELLEGRINO, and VITTEL. Complainant also owns a number of relevant domain names such as <nestle.us>, <nestlewater.com>, <nestle-water.com>, <nestlewaters.com>, and <nestle-waters.com>. Respondent’s <nestlewater.us> domain name, registered on June 27, 2020, is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the generic word “water” along with the “.us” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <nestlewater.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its NESTLÉ mark in any way. Respondent does not use and has never used the disputed domain name for any bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use thereof. Instead, it has sought pass itself off as Complainant in furtherance of a well-known vehicle wrap scam, and it now inactively holds the disputed domain name.
Complainant registered and uses the <nestlewater.us> domain name in bad faith. Respondent used false information for the WHOIS record of the disputed domain name. Respondent also seeks to attract internet users for commercial gain by passing itself off as Complainant in furtherance of a well-known vehicle wrap scam. After its hosting provider shut down its website, Respondent continues to inactively hold the disputed domain name which no longer resolves to any web content. Further, Respondent failed to respond to Complainant’s cease-and-desist letters and follow-up letters. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the NESTLÉ mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the NESTLÉ mark through its registrations with various trademark agencies throughout the world including the WIPO, the USPTO, and the CIPO. Registration with multiple trademark agencies is sufficient to establish rights to a mark under Policy ¶ 4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”) Here, Complainant has submitted copies of its trademark registration certificates or screenshots from the websites of the relevant trademark offices to verify its claim. The Panel finds sufficient evidence that Complainant has rights in the NESTLÉ mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <nestlewater.us> domain name is identical or confusingly similar to Complainant’s NESTLÉ mark as it incorporates the mark in its entirety and adds the word “water” along with the “.us” ccTLD. Under Policy ¶ 4(a)(i), adding a generic or descriptive word along with a TLD is generally insufficient to differentiate a disputed domain name from the asserted mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here ‘.us,’ is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel notes that one of the products sold by Complainant is bottled water. It further owns a Canadian registration for the trademark NESTLE WATERS. Upon consideration of the presented facts, the Panel finds that Respondent’s <nestlewater.us> domain name is confusingly similar to Complainant’s NESTLÉ and NESTLE WATERS marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel does not find any ground in support of Respondent under Policy ¶ 4(c)(i).
Next, Complainant argues that Respondent is not commonly known by the <nestlewater.us> domain name, nor has Complainant authorized or licensed Respondent to use its NESTLÉ mark in the disputed domain name. Under Policy ¶ 4(c)(iii), relevant WHOIS information may inform a Panel’s consideration of whether a Respondent is commonly known by a disputed domain name. Also, a lack of couterveiling evidence may affirm a complainant’s assertion that it never authorized or licensed respondent to use its asserted mark. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS record identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response). The WHOIS record for the <nestlewater.us> domain name identifies Respondent as “Bud light Beer” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. Respondent has filed no Response nor made any other submission in this case and so it does not provide any additional facts to inform the Panel’s analysis. Therefore, the Panel finds no evidence upon which to conclude that Respondent is commonly known as the <nestlewater.us> domain name under Policy ¶ 4(c)(iii).
Complainant further argues that Respondent does not currently use, nor has it previously used the <nestlewater.us> domain name for any bona fide offering of goods or services, or to make any legitimate noncommercial or fair use thereof. Under Policy ¶¶ 4(c)(ii) and (iv), using a disputed domain name to pass oneself off as a complainant in furtherance of fraudulent activity such as a vehicle wrap scam is not considered to be a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. In DD IP Holder LLC v. Alex Xuo, FA 1901391 (Forum July 22, 2020) the Panel noted that “Complainant provides a screenshot of the webpage resolving from the disputed domain name, which displays Complainant's mark and solicits users to apply to have an advertisement placed on their car. Complainant also provides articles from the U.S. Federal Trade Commission and YouTube search results explaining how this practice corresponds to a common scam. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).” Here, Complainant provides screenshots of the domain name’s previous resolving website. The site claims to offer users the opportunity to make money through an “auto wrap” program and contains no notice that the site is unaffiliated with Complainant. According to consumer warning articles also submitted into evidence by Complainant, this is a common type of online fraud. The potential victim either receives emails with a click-through link or otherwise browses to the <nestlewater.us> website which displays photos of Complainant’s bottled water products as well as the NESTLÉ PURE LIFE logo which is used on such products. The website explains that “you will be compensated with $500 per week” in exchange for having a car or other vehicle wrapped with a visual advertisement for Nestlé Water. The victim is asked to input their name, phone number, and home address into an “Application Form”. The reports of other car wrap scams, as noted in the articles supplied by Complainant, indicate that the victim then receives a paper check in the mail in an amount that is significantly larger than the offered compensation. Instructions are provided to deposit this check into the victim’s bank account and then immediately wire a significant portion of the amount (minus the offered compensation) to a specified bank account which is claimed to cover fees charged by the company that will undertake the installation of the vehicle wrap advertisement on the victim’s car. However, this other account is actually owned by the scammer and there is, in fact, no vehicle wrap provider involved. By the time the victim’s bank rejects the deposited paper check as fraudulent (a number of days after its deposit), the scammer has absconded with the wired funds and the victim is left with a debit to its own account for the amount of the wired funds plus any bank charges for the returned fraudulent check. In the Panel’s view, the evidence presented by Complainant appears to fit squarely into the above-described scam process and, as such, does not meet the standard for being a bona fide offering of goods or services nor a legitimate noncommercial use of Complainant’s marks under Policy ¶¶ 4(c)(ii) or (iv).
Complainant also provides a screenshot of the disputed domain name’s current resolving website, which features no content apart from an error message. Such non-use of a disputed domain name also does not evidence any rights or legitimate interests under the examples of Policy ¶¶ 4(c)(ii) or (iv). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(iv) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”)
As Complainant has presented a prima facie case that has not been rebutted by Respondent, then upon a preponderance of the evidence before it, the Panel finds that Respondent does not use, and has never used the disputed domain name for any bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(ii) and (iv).
Complainant asserts that Respondent registered the <nestlewater.us> domain name with actual knowledge of Complainant’s NESTLÉ mark. Under Policy ¶ 4(a)(iii), actual knowledge provides a foundation upon which to build a case for bad faith and this may be established through incorporation of a well-known mark into a disputed domain name, and/or Respondent’s particular use of the domain name (i.e., the content of emails or a resolving website). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant claims that NESTLÉ is a “household word” and that it is inconceivable that Respondent was unaware of the mark. In support, it has submitted evidence of the broad reputation of its NESTLÉ mark including its placement at number 82 on the FORTUNE® Global 500 list, its ranking as the 63rd most valuable trademark in the world on the Interbrand list of Best Global Brands, samples of its own brand promotion, and a list of its other website addresses that incorporate the NESTLÉ mark in many different TLDs. Further, the Panel notes that the website which resolves from the disputed domain name displays Complainant’s mark and product graphics and appears to show Respondent passing itself off as Complainant. From the evidence presented, the Panel finds little room for doubt that Respondent had actual knowledge of Complainant’s rights in the well-known NESTLÉ mark and an express intention to target that mark when it registered the <nestlewater.us> domain name.
As additional evidence that Respondent registered the disputed domain name in bad faith Complainant points to its use of fabricated WHOIS information. The use of false WHOIS information may demonstrate bad faith registration where it indicates that a respondent is seeking to avoid responsibility for improper activities carried out with a disputed domain name. See Spectrum Health v. Johnathan Susich, FA 1953590 (Forum July 26, 2021) (“Respondent registered the disputed domain name using false WHOIS contact information, and this can evince bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Respondent lists its name as “Bud light Beer” and, in view of the famous brand of beer by the same name, the use of the disputed domain name for a fraudulent scheme, and the Respondent’s non-participation in this case, the Panel makes the reasonable inference that this name is not reflective of Respondent’s real identity. As such, it provides evidence that Respondent acted in bad faith when registering the disputed domain name under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and used the <nestlewater.us> domain name in bad faith under Policy ¶ 4(b)(iv). Using a disputed domain name’s resolving website to pass oneself off as a complainant in furtherance of a scam is evidence of bad faith attraction for commercial gain. See Securities Investor Protection Corporation v. John Smith / Open Trade FX, FA 1951198 (Forum July 13, 2021) (bad faith found where “Respondent’s scam email leaves its recipient with a false impression that a payment needs to be made (per Respondent’s direction) to release otherwise blocked funds.”). The Panel notes Complainant’s submitted screenshots of the website that previously resolved from the disputed domain name which feature Respondent passing itself off as Complainant and offering what appears to be a car wrap scam. Respondent has not appeared in this case and offers no other explanation for its actions. Therefore, upon a preponderance of the evidence presented, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
As the car wrap scam has been removed from the <nestlewater.us> website after Complainant’s representative sent an abuse notice to the concerned hosting provider, Complainant also argues that Respondent currently uses the disputed domain name in bad faith by inactively holding the name and resolving it to a non-functioning website. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name may be considered evidence of bad faith use when viewed in light of all of the facts of the case. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA 1522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The Complainant submits a screenshot of the disputed domain name’s currently resolving website, which features no content but only an error message. The Panel finds that this provides further support for the conclusion that Respondent uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s bad faith is also highlighted by its failure to respond to Complainant’s cease-and-desist letters. Under Policy ¶ 4(a)(iii), failure to respond to a cease-and-desist may suggest the existence of bad faith depending upon all of the other circumstances of the case. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist letter may evidence bad faith). Complainant provides copies of three cease-and-desist letters that it sent to Respondent, along with successful delivery reports, and states that it has received no response to any of these letters. In light of Respondent’s other actions in this case, the Panel finds that such failure to respond to these cease-and-desist letters does buttress Complainant’s assertion of bad faith by Respondent under Policy ¶ 4(a)(iii).
For all of the foregoing reasons, the Panel finds strong evidence to conclude that Respondent registered and uses the disputed domain name in bad faith so as to satisfy its burden of proof under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nestlewater.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 2, 2021
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