Brand Name Domain Name

Complainant is a Swiss limited liability company founded in 1866 by Henri Nestle and sells products and services all over the world in various industries, in particular the food industry, including baby foods, breakfast cereals, chocolate and confectionary, beverages, bottled water, dairy products, ice cream, prepared foods and food services.  It is the owner of over 100,000 international and national trademark registrations worldwide, consisting in or including "NESTLE".  Complainant has also registered the world "nestle" in domain names under several different gTLDS and ccTLDs and operates the website www.nestle.com as a main portal aimed at promoting its activities worldwide.

Respondent registered the domain name, "nestle-cereales.com" in September 2008, without Complainant's authorization, which at the time of the Complaint's filing pointed to a website"wwwnestle-cereales.com" where Internet users could find several sponsored links (pay-per-click pages) redirecting mainly to third party websites.  There was also a link reproducing the "Nestle" brand and by clicking on it, Internet users were redirected to an additional pay-per-click page where other dedicated links also displaying the brand "Nestle" were published.

As soon as Complainant became aware of Respondent's registration and use of the disputed domain, its legal representatives sent the domain holder a cease and desist letter, which went ignored.

Although the disputed domain included the descriptive term "cereales" (meaning "cereals" in Spanish), the Panel held that this did not exclude the confusing similarity with Complainant's NESTLE trademark, which was incorporated in whole in the disputed domain.  In addition, the evidence showing that Respondent used the domain name to host a "link farm", i.e. a list of sponsored links, was sufficient to determine that Respondent did not have any right or legitimate interest in the domain and had registered and used it in bad faith. Indeed, the Panel noted that the circumstances amounted to unduly taking advantage of the well-known nature of Complainant's mark to attract more Internet users and generate revenue presumably to Respondent's benefit in the form of pay-per-click.

As a further element evidencing Respondent's bad faith, the Panel noted that there was an attempt by Respondent to avoid submission to the UDRP proceeding, apparently by means of a privacy service.  The initial Respondent as per the Complaint initially submitted was "PrivacyProtect.org" of the Netherlands, who had been involved in prior UDRP proceedings, all of them decided for the transfer of the disputed domain name.  The WhoIs details of the disputed domain in this case were then changed to "Private Registration" of Panama and the Complainant chose to file an amendment to the Complaint.  The Panel noted a change in the ownership of a domain name after a cease and desist letter has already been dispatched by a trademark owner is often an indication of bad faith, i.e. a way to create difficulties for a trademark owner to assert its rights in a UDRP proceeding.  Similarly, a change in the WhoIs details is another evidence of bad faith.  The Panel ordered transfer of the disputed domain.  Societe des Produits Nestle S.A. v. Private Registration, WIPO Case No. D2009-1021

 

Red Bull Gets Back Its Wings

The Complainant, Red Bull GmbH, is a producer of energy drinks.  The Complainant holds an internationally registered trademark for a drink sold under the trademark RED BULL.  The Complainant first used its trademark in 1987 and since 1994 has made extensive international promotion and sale of its goods bearing the trademark.  The Respondent registered its domain name, www.redbullsucks.com, on April 19, 2007.

The Complainant alleged that the disputed domain name is confusingly similar to its registered trademark.  However, the Respondent claimed the disputed domain name was in protest of the harmful effects of energy drinks.  Ultimately, the Panel ordered the transfer of the disputed domain to the Complainant after finding that the Respondent violated the Complainant’s trademark rights in registering and using the domain in bad faith for commercial purposes.

Interestingly, the Panel rejected the Complainant’s argument that the term ‘sucks’ was a generic term and that the addition of the word ‘sucks’ to its trademark rendered it inherently confusing.  The Panel held that the term ‘sucks’ was widely known as an insult and “those people who have no appreciation of the pejorative nuance of the word ‘sucks’ form such an inappreciable part of the modern Internet audience that concern for their sensibilities should not be a factor in the assessment of confusing similarity under [the] Policy.”   Nonetheless, the Panel concluded that a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.  In other words, the issue [is] not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.” 

In this instance, the Panel found that the domain name was ‘confusingly similar’.  The Complainant alleged, the evidence showed, and the Respondent did not deny, that the Respondent’s website corresponding with the disputed domain name was being used to promote an energy drink in competition with the Complainant - this was found not to be a commercial use and the evidence showed it was clearly used for commercial gain.  The Panel also found that the name was registered and used in bad faith and ordered the immediate transfer of the disputed domain name to Red Bull.  Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253

Bakers Delight Undelighted by Domain Name

Complainant, Bakers Delight Holdings, is an Australian owned company established 27 years ago.  Complainant operates a bakery franchise, with over 600 bakeries in Australia and over 30 in New Zealand.  Complainant operates a website at www.bakersdelight.com.au.

Respondent created the disputed domain name, "bakersdelightlies.com" on June 22, 2007.  Responded used to be a franchisee of Complainant and uses the domain name to attack Complainant and, in particular, its treatment of franchisees.

While the disputed domain name does contain the Complainant's entire trademark, "Baker's Delight", it also contains at the end the word "lies".  For this reason, the Panel deemed the disputed domain name to fall into the category of so-called "sucks" cases (where a trademark is joined with a negative term).  A majority of panels dealing with "sucks" cases have found that a domain name can be confusingly similar to the trademark for various reasons, including because the domain name contains a trademark and a generic word.  However, some panels have found that these types of domain names are not confusing because it is obvious to Internet users that the Complainant would not use a domain name which consists of its trademark and a derogatory term.  The Panel in this case opined that "sucks" is a more forceful, obvious and derogatory term than "lies" and held to the majority view that the disputed domain was confusingly similar to the "Bakers Delight" mark.

Notwithstanding, the Panel denied the Complaint, holding that Complainant had failed to establish that Respondent has no rights or legitimate interests in the disputed domain name.  In so holding, the Panel found that the website did not have any commercial content and was dedicated to genuine criticism, with relevant non-commercial links, and nothing to establish that Respondent was making any commercial gain, from visitors or advertising or otherwise, or attempting to divert users looking for Complainant's site.  Bakers Delight Holdings Ltd. v. Andrew Austin, WIPO Case No. D2008-0006

The Domain Name Spirit...

Complainants are the producers and distributors of a number of spirits including the Scotch whisky brand "Chivas Regal", established as early as 1909.  In 2006, Complainants sold their whisky Chivas Regal in over 90 countries and, from December 2001 to December 2007, over 225,000,000 liters of Chivas Regal were sold worldwide.  As a result of extensive and long use, the name Chivas Regal has become widely-known worldwide and represents a goodwill and reputation of tremendous value to the Complainants, who own 162 trademark registrations in respect of "Chivas Regal".

Respondent has a pattern of cybersquatting and registered the disputed domain name, "chivasregal.com", in 2004 and used it in connection with a website providing links for third parties' products including products directly competing with those of Complainants.

Ordering transfer of the disputed domain name to Complainants, the Panel held that Respondent had clearly registered and used the disputed domain name in bad faith.  As to bad faith registration, the Panel held it inconceivable that Respondent registered the domain without knowledge of Complainants and their marks, given the high distinctiveness of the Chivas Regal marks and the high profile of Complainants dating back to 1909.  This is particularly so given the fact that Respondent used the disputed domain name to provide links including direct competitors of Complainant and the fact that the name "Chivas Regal" is in itself not descriptive of Complainants' products.

As to bad faith use, the Panel held that Respondent was, in all likelihood, trying to divert traffic intended for the Complainants' website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainants' website, by fully incorporating the Chivas Regal marks into the domain name and using the website as a parking website.  Chivas Brothers Limited et al. v. Demand Domains, Inc., WIPO Case No. D2007-1789.

Proceedings Boomerang. . .

Both Complainant and Respondent are involved in the production and/or marketing of vodka.  On November 10, 2005, Complainant filed its earliest application for trademark registration of the word "Boomerang".  The disputed domain name, "boomerangvodka.com", was registered by Respondent on October 7, 2005 and resolves to a website hosted by the registrar and mainly featuring links to what purport to be sites associated with vodka.

Although the registration of the disputed domain name pre-dates Complainant's earliest application for trademark registration of "Boomerang", Complainant contended that it had started trading earlier than that in 2005 and acquired common law rights.  Fatal to its claim, Complainant failed to submit any evidence as to the alleged nature and extent of the Complainant's purported trade and the Panel was unable to make any finding of common law rights.  Notwithstanding, Complainant overcame the first element of the Policy and established a trademark in which it had rights and which were identical to the disputed domain name, by virtue of its Australian registration of the mark "Boomerang" which came through on June 26, 2006.

Despite this, the Complaint was denied as Complainant failed to satisfy the Panel that the disputed domain name was registered and was being used in bad faith.  In so finding, the Panel pointed to Complainant's failure to produce any evidence of its allegations that it had established common law rights pre-dating the domain name registration or that Respondent had learned of Complainant's trademark through a distiller with whom both parties had dealings and that Respondent, a competitor, registered the domain with the intention of blocking the Complainant and disrupting Complainant's business.  In sharp contract, Respondent went to some lengths to respond to the Complaint and filed an affidavit in which its managing member deposed as to why he selected the domain name ('"Boomerang" is an ordinary word apt to indicate Australia as the geographic source of Respondent's vodka') and expressly denied Complainant's allegations.

Domain Dieting-A Weighty Issue Resolved. . .

Complainant is in the field of providing "weight-loss programs" food and products, under the registered trademark "Nutrisystem" and various iterations thereof.  Complainant has also operated or owned a website at "www.nutrisystem.com" for 10 years.  Respondent registered the disputed domain name "nutrisystems.com", merely adding an "s" to Complainant's marks and domain name.  Complainant instituted a WIPO proceeding seeking transfer of the disputed domain name, thereafter suspending the proceeding for almost 2 months while attempts were made to settle between the parties.  When settlement could not be reached, at Complainant's request, the proceeding was reinstated.

In response to the reinstated proceeding, Respondent agreed to the relief requested by the Complainant.  Since Respondent expressly consented to the remedy sought by Complainant and submitted no arguments or evidence in defense (although Respondent specified that its agreement was not an admission that the elements of paragraph 4(a) of the Policy were satisfied), the sole panelist held it to provide a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.  If only it were always that easy.   

Nutri/System, IPHC, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0864