Société des Produits Nestlé S.A. v. Patricia Stroup / VirtualOffice
Claim Number: FA1807001795157
Complainant is Société des Produits Nestlé S.A. (“Complainant”), represented by Luca Barbero of Studio Barbero S.p.A., Italy. Respondent is Patricia Stroup / VirtualOffice (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nestleusa.us>, registered with Wild West Domains, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2018; the Forum received payment on July 3, 2018.
On Jul 03, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <nestleusa.us> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2018 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@nestleusa.us. Also on July 5, 2018, 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 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, founded in 1866, currently markets its products, including baby foods, breakfast cereals, chocolate & confectionery, coffee & beverages, bottled water, dairy products, ice cream, and pet food, in over 190 countries worldwide.
Complainant holds a registration for the NESTLÉ trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,534,496, registered April 11, 1989.
Respondent registered the <nestleusa.us> domain name on January 16, 2018.
The domain name is confusingly similar to Complainant’s NESTLÉ mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise permitted Respondent to use the NESTLÉ mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name for fraudulent purposes, having created an email address based on the domain name which includes the name of a manager of Complainant’s USA affiliate by which Respondent delivers email communications to third-parties seeking payment for services or products purportedly on behalf of Complainant’s affiliate.
Respondent also uses the domain name to redirect Internet users to a static parking page.
Respondent has no rights to or legitimate interests in the domain name.
It is inconceivable that Respondent was unaware of Complainant’s NESTLÉ trademark at the time of registration of the disputed domain name.
Respondent registered and uses the domain name in bad faith.
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; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the NESTLÉ trademark sufficient for the purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <nestleusa.us> domain name is confusingly similar to Complainant’s NESTLÉ trademark. The domain name contains the mark in its entirety, with only the removal of the diacritical mark over the letter “e,” the addition of the geographic reference “usa,” which relates to an aspect of Complainant’s business, plus the country code Top Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Doosan Corporation v. philippe champain, FA 1636675 (Forum October 13, 2015) (finding that geographic designations or terms descriptive of a UDRP complainant’s business do not remove a domain name from the realm of confusing similarity). See also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum April 24, 2000) (finding that punctuation is not significant in determining the question of confusing similarity between a domain name and a mark). Finally see Lockheed Martin Corp. v. Roberson, FA 323762 (Forum October 19, 2004) (finding that the ccTLD “.us” did not differentiate a disputed domain name from a UDRP complainant’s mark). This is because every domain name requires a TLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <nestleusa.us> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <nestleusa.us> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the NESTLÉ mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Patricia Stroup / VirtualOffice,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <nestleusa.us> domain name to facilitate a fraudulent financial scheme, commonly called “phishing,” by which it holds itself out as a manager of Complainant’s US affiliate in order to prise payment for fictional products or services from unsuspecting third parties. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):
Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is plain from the evidence that Respondent uses the <nestleusa.us> domain name to impersonate Complainant in furtherance of a fraudulent “phishing” scheme. It should go without saying that such a use of the challenged domain name evinces Respondent’s bad faith in registering and using it. See, for example, SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 581255 (Forum October 29, 2014):
The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.
It is also evident from the record that Respondent knew of Complainant and its rights in the NESTLÉ mark when it registered the <nestleusa.us> domain name. This further demonstrates Respondent’s bad faith in registering it. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <nestleusa.us> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 31, 2018
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