Decision for dispute CAC-UDRP-108974

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

United States of America Trademark Registration No. 2576460 NESQUIK registered for various goods in classes 29 and 30 with an effective registration date from 26 March 1999.

The Complainant is a member of the Nestle' Group of companies.  It owns a majority of that groups trademarks. The Nestle' Group is a global food products company which sells its products in 190 countries and employs approximately 275,000 people worldwide. NESQUIK is the trademark for one of the group's beverage brands, which was first used in Europe in the 1950's for a powered milk flavouring product. It is still used for flavoured milk products and has now been extended to other products. NESQUIK products have been marketed globally through various mediums including television, print and digital media. 

The Complainant is the owner of numerous trademarks in numerous jurisdictions that contain or consist of the word NESQUIK, including the above-mentioned US trademark registration.

The disputed domain name was registered on 10 June 2026.  It does not resolve to an active webpage. However, it is offered for sale through the GoDaddy/Afternic marketplace service at a "Buy it now" price of USD $1,450 or, alternatively, a lease-to-own arrangement price of USD $242 per month.

The Registrant has provided its name as "Bartlomiej Zakrzewski" and its address as a location in Poland.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name registered by the Respondent should be transferred to the Complainant:

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant asserts it has a United States trademark registration for "NESQUIK". This registration predates the registration date of the disputed domain name by over two decades.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a trademark that predates the registration of the disputed domain name in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO 7 May 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). The Complainant has clearly satisfied such in relation to the trademark NESQUIK.

The next question is whether the disputed domain name is confusingly similar to the NESQUIK trademark.

The Panel disregards the gTLD suffix ".shop" for the purpose of this comparison. Past panels have found that gTLD's are of no relevance in determining whether a domain name is identical or confusingly similar to a trademark (See F.Hoffmann-La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451). Domain names, and the format in which they appear, are globally observed by internet users and consumers every day. They are part of everyday human experience and commonly marketed via offline means (e.g. signage, branded stationary, merchandise, print advertisements, television) in addition to being observed online. Hence, the average person who is using the internet is going to clearly understand that in the format of a domain name the gTLD at the end of the domain name is not commonly an element that identifies one particular trader, but rather is used generically by multiple traders. This understanding remains so for common gTLDs like ".com", ".net" and ".org" and for less common gTLDs like ".shop". This common format of domain names is now well understood by the average person and for this reason they will not see ".shop" as being of any brand significance. If anything, it merely indicates the domain name may be used commercially to enable or promote purchases.

However, NESQUIK is a unique trademark that would carry brand significance in the eyes of the average web user. This trademark is entirely reproduced in the disputed domain name.

The disputed domain name is therefore confusingly similar to the NESQUIK trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455). Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Respondent is not identified in the Whois database as having a name related to the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the owner of the disputed domain name. Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy (c)(ii).”).

There are no other facts that would indicate the Respondent has any rights or legitimate interests in the disputed domain name. In such circumstances, the Complainant has made out its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

The Complainant's trademark is distinctive and very well known internationally. Further, the NESQUIK trademark has a strong, long-standing international reputation in relation to flavoured milk and other food products.

Given this reputation, and the fact that the Respondent previously used the disputed domain name to redirect to a website that flagrantly displayed the Complainant's logo, it is beyond doubt that the Respondent registered the strikingly similar disputed domain name with full knowledge of the Complainant's rights to the NESQUIK trademark. Such similarity will inevitably confuse web-users. It is further reasonable to infer that the only foreseeable purpose that the Respondent had to so register the domain name and direct it to a website was to opportunistically profit from such confusion. Namely, by offering the disputed domain name for sale at prices well above the costs of registration.  

The disputed domain name has been registered and is being used in bad faith.