Societe des Produits Nestle SA -v- Don Vitali [2003] DRS 840 (24 March 2003)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

The Complaint was received by Nominet on 6 February 2003. Nominet validated the Complaint and sent a copy to the Respondent on 11 February 2003.

On 13 March 2003 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as the Expert with effect from 20 March 2003.

The Complainant is part of the well-known Nestlé group of food companies. It owns a number of UK trade mark registrations for the mark NESTLE.

1. The Complainant has rights in a trade mark which is similar to the Domain Name:

(1) The Complainant is the proprietor of 43 registered trade marks in the UK for the mark NESTLE (in various forms). The Complainant and its related group company, Nestle UK Limited, have also made extensive use of the NESTLE mark in the UK for very many years, leading to the mark being extremely well-known.

(1) Before the Domain Name was registered, a business called DRS, which is the trading name of a company called Domain Registrar Services, made contact with the Complainant and Nestle UK Limited on a number of occasions, stating that an unauthorised third party was seeking to register the Domain Name and effectively suggesting that the Complainant should therefore register it first themselves.

(2) The Respondent registered the Domain Name on 6 September 2002. The Respondent's address is 32 Blue Street, Carmarthen, Carmethenshire SA31 3LE. This is the same address as the registered office of Domain Registrar Services.

(3) As at the date of the Complaint being filed, the Domain Name resolved to the website at www.cadburys.com of Cadbury, a major competitor of the Complainant. The linking has not been authorised by Cadbury and the Complainant believes it to be an attempt by the Respondent to demonstrate to them that it should have purchased the Domain Name when it was offered to it by DRS.

(4) It is unclear whether the Respondent is an actual person or a fictitious creation. On contacting directory enquiries with the name of the Respondent and the address, the Complainant's solicitors were informed that there was no match.

(5) As the Domain Name can only refer to the Complainant, its registration in the hands of any third party is likely to be abusive. In this case it is being linked to the website of a major competitor which is likely to lead to confusion as to the association between the two companies. The linking also means that the NESTLE trade marks are being used in relation to chocolate other than the Nestle group's own chocolate brands.

(6) The Domain Name is an Abusive Registration in that it was purchased in full knowledge of the Complainant's rights in the name NESTLE, and is linked directly to a competitor's website in infringement of the Complainant's trade mark rights in a manner which is likely to mislead consumers.

No Response
The Respondent has not filed any Response. It should nevertheless be pointed out that, in spite of this, it is still for the Complainant to prove its case on the balance of probabilities.
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

The Complainant owns a number of UK trade mark registrations for various forms of the NESTLE mark, including the plain word itself. In addition, substantial use has been made by the Complainant and its related group company, Nestle UK Limited, of the NESTLE mark in the UK and there is no doubt that it therefore has unregistered trade mark rights in that name. I therefore find that the Complainant has Rights in the name/mark NESTLE.

Disregarding the generic .co.uk suffix, the Domain Name is similar to the NESTLE mark, the additional "UK" element adding very little and certainly not enough to render the Domain Name dissimilar.

The Complainant has therefore proven what is required under the first part of paragraph 2 of the Policy.

"A Domain Name which either:
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

In light of the common address of the Respondent and DRS, I find on the balance of probabilities that the Respondent is connected with DRS or is a fictitious name created by DRS. It is also clear from the repeated contact which DRS made with the Complainant and Nestle UK Limited prior to the Domain Name being registered that DRS was well aware of the Complainant having strong rights in the NESTLE mark. Drawing together these two conclusions, and combining them with there being no credible alternative reason for the Respondent having registered the Domain Name, I find on the balance of probabilities that the Respondent registered the Domain Name in bad faith, probably with a view to seeking substantial compensation from the Complainant for the transfer of the Domain Name; and that the registration was therefore unfairly detrimental to the Complainant's Rights. On that basis the Domain Name is an Abusive Registration under sub-paragraph 1Ai of the Policy (as set out above).

In addition, the Domain Name has been used in such a way that it links straight through to the website of Cadbury, a major competitor of the Complainant. The Complainant states that it knows this linking has not been authorised by Cadbury. In order to support this, it would have been helpful for the Complainant to put forward some supporting evidence, such as a letter from Cadbury. Nevertheless, it makes little or no difference in the circumstances whether or not Cadbury authorised the link (and I am certainly not in any way suggesting that it did so). The fact of the matter is that the use of the Domain Name, including to which website it resolves, is fully within the control of the Respondent. The fact that the Domain Name links to Cadbury's website is likely to cause confusion as to an association between the two companies and as between their products. It is clear from this that the Domain Name has been used in a manner which is unfairly detrimental to the Complainant's Rights; and that the Domain Name is therefore also an Abusive Registration under sub-paragraph 1Aii of the Policy.

The above conclusions are reinforced by the Respondent having chosen not to put forward any explanation of how the Respondent came to register the Domain Name and the manner of its use.

Having found that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, nestleuk.co.uk, be transferred to the Complainant.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Societe des Produits Nestle SA -v- Don Vitali [2003] DRS 840 (24 March 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/840.html Cite as: [2003] DRS 840