Société des Produits Nestlé S.A. v Hope Lee
WIPO Case No. D2023-3611
•06-11-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Société des Produits Nestlé S.A. v. Hope Lee
Case No. D2023-3611
1. The Parties
The Complainant is Société des Produits Nestlé S.A., Switzerland, represented by Studio Barbero, Italy.
The Respondent is Hope Lee, China.
2. The Domain Name and Registrar
The disputed domain name <pureencapsulationpro.com> (the “Disputed Domain Name”) is registered with
Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2023. connection with the Disputed Domain Name. On August 30, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (REDACTED FOR PRIVACY, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 1, 2023.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2023.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 23, 2023.
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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
The Complainant is part of a Swiss multinational food consumer products company founded in 1866 that
operates a business with 328,000 employees worldwide. The Complainant is the owner of several
trademark registrations worldwide for PURE ENCAPSULATIONS, including, for example: United Kingdom
Trademark Registration No. UK00909109844 for PURE ENCAPSULATIONS (word mark), registered on
November 30, 2010, in classes 05, 29, and 35, and United States of America Trademark Registration No.
4111705 for PURE ENCAPSULATIONS (word mark), registered on March 13, 2012, in international classes
5 and 44.
The Complainant’s PURE ENCAPSULATIONS trademark is promoted online using domain names that
include <includingpureencapsulations.com> registered on November 19, 1996, and
<pureencapsulationspro.com> registered on April 28, 2021.
The Respondent registered the Disputed Domain Name <pureencapsulationpro.com> on May 20, 2021. The Disputed Domain Name subsequently redirected to other PPC webpages with sponsored links redirecting users to various commercial websites related to PURE ENCAPSULATIONS products and to competitors’ dietary supplements.
5. Parties’ Contentions
A. Complainant
The Complainant cites its trademark registrations internationally for the mark PURE ENCAPSULATIONS as prima facie evidence of ownership.
The Complainant submits that its rights in the mark PURE ENCAPSULATIONS predates the Respondent’s registration of the Disputed Domain Name. It submits that “[t]he [Disputed] Domain Name incorporates the Complainant’s PURE ENCAPSULATIONS trademark with the mere omission of the final letter ‘s’ and the
addition of the term ‘pro’” and that the identicality is not removed by the addition of the generic Top-Level
Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that “Respondent is not a licensee, authorized agent of Complainants or in any other way authorized to use Complainants’ trademark.” It also contends that “notwithstanding the words ‘pure’ and ‘encapsulation’ encompassed in the Domain Name might have a dictionary meaning, there is no element in this case suggesting that Respondent might have used the Domain Name for purposes other than to trade off Complainant’s trademark”.
Finally, the Complainant alleges that the Respondent registered and is using the Disputed Domain Name in
bad faith and that “The [D]isputed [D]omain [N]ame was registered on May 20, 2021, 30 years after the
PURE ENCAPSULATIONS brand was created, over 20 years after Complainant started using its domain
name <pureencapsulations.com> to promote its brand and products online and less than a month after
Complainant registered its domain name <pureencapsulationspro.com>. In view of the composition of the
[Disputed] Domain Name <pureencapsulationpro.com>, confusingly similar to Complainant’s prior trademark
PURE ENCAPSULATIONS and almost identical to Complainant’s prior domain name
<pureencapsulationspro.com> - from which it differs only by the omission of one single letter ‘s’,
Respondent’s registration of the [Disputed] Domain Name cannot amount to a mere coincidence.”
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B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
| and | |
| (iii) | that the Disputed Domain Name has been registered and is being used in bad faith. |
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark PURE ENCAPSULATIONS in numerous jurisdictions. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the PURE the word “pro”; (c) followed by the gTLD “.com”.
ENCAPSULATIONS trademark, the Panel observes that the Disputed Domain Name comprises: (a) the
It is well established that the gTLD used as technical part of a domain name may be disregarded. The
relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name, specifically:
“encapsulationpro” (see section 1.11.1 of the WIPO Overview 3.0).
In this case, the Disputed Domain Name incorporates the entirety of the Complainants trademark except for the final letter “s”. It is also well-established that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing
(see WIPO Overview 3.0, section 1.7).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate
interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish
the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of
the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put
forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production
then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because (i) the Disputed Domain Name resolves to a website hosting PPC links that
redirect to competitors; (ii) the Respondent has not acquired or owned any trademark or service mark rights
in the name PURE ENCAPSULATIONS, and has not been commonly known by the name PURE
ENCAPSULATIONS; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the
Disputed Domain Name without intent for commercial gain.
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The Panel accepts the Complainant’s uncontested submission that use to direct Internet traffic to a PPC
webpage is “neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair
use of the [Disputed] Domain Name, without intent for commercial gain” and that “ the combination of the
terms ‘pure’ and ‘encapsulation’ with the suffix ‘pro’ in the Domain Name strongly suggests that
Respondent’s intent was indeed to attract and divert to its website users looking for Complainant’s website at
<pureencapsulationspro.com>”.
In this Panel’s view, the composition of the Disputed Domain Name does indicate an awareness and targeting of the Complainant with the intention to take unfair advantage of its trademark, which does not support a finding of any rights or legitimate interests.
The Panel finds for the Complainant on this element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy requires that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed
Domain Name in bad faith.
On the issue of registration, given the composition of the Disputed Domain Name, the Panel is satisfied that
the Respondent targeted the Complainant’s trademark PURE ENCAPSULATIONS when it registered the
Disputed Domain Name and the Panel is prepared to infer that the Respondent knew, or should have known,
that its registration would be identical or confusingly similar to the Complainant’s trademark (see
WIPO Overview 3.0, section 3.2.2).
In addition, the gap of several years between registration of the Complainant’s trademark and the this case is a further indicator of bad faith. In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration of the trademark PURE ENCAPSULATIONS by approximately 10 years.
Respondent’s registration of the Disputed Domain Name, along with the composition of the Disputed Domain
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name resolved to a PPC landing page displaying links that redirect Internet traffic to third-party competitor websites unaffiliated with the Complainant. This Panel accepts the Complainant’s uncontested evidence as evidence of bad faith use. Targeting of this nature is a common example of bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see WIPO Overview 3.0, sections 3.1.4 and 3.2.1).
| UDRP proceedings that are easily located by a search of the Center’s public website. See, e.g., PC | The Panel also observes that the Respondent has been the unsuccessful respondent in a number of other Verizon Trademark Services LLC v. Hope Lee, WIPO Case No. D2023-1232. The Panel therefore finds that that the Respondent is a serial offender who deliberately targeted the Complainant and is engaged in a pattern of bad faith conduct. The sheer number of those adverse decisions involving a known bad actor indicates to this Panel a pattern of conduct that supports a further finding of bad faith against the Respondent (See WIPO Overview 3.0, sections 3.1.2 and 4.4.5). |
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In the absence of responsive evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has registered and used the Complainant’s trademark PURE ENCAPSULATIONS in the Disputed Domain Name, without the Complainant’s consent or authorization, for the likely purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the
Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <pureencapsulationpro.com>, be transferred to the Complainant.
/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: November 6, 2023
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