WIPO Arbitration and Mediation Center

The Complainant in these administrative proceedings is Société des Produits Nestlé S.A., a company incorporated under the laws of Switzerland and registered in the Commercial Register in CH-1800 Vevey, Switzerland, whose head office and principal place of business is also located in Vevey, Switzerland.

The Respondent in these administrative proceedings is Mr. Matthew Harper, 32 Boyd Court, Bracknell, Berks RG42 1 PX, England.

The Domain Name at issue is <rowntrees.com>. The registrar with which the domain name registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA. ("the Registrar").

On February 22, 2001 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and the hard copy was received on February 23, 2001.

On February 27, 2001 the Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail.

On February 27, 2001 the Center sent a request for Register Verification to the Registrar. On March 5, 2001 the Registrar responded to the Center by e-mail and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name <rowntrees.com>, confirmed that the Respondent was at that time the registrant of the said domain name, provided contact details for the Respondent including the administrative contact, the technical contact and the billing contact for the said domain name, and confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration and that the said registration had "active" status.

The Center reviewed the Complaint and was satisfied that the Complainant as amended complied with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.

On March 8, 2001 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name <rowntrees.com> to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on March 8, 2001 and that the Respondent was required to submit a Response to the Center on or before March 27, 2001.

On March 29, 2001 the Center received an e-mail from the Respondent, details of which are discussed infra, inter alia requesting the Administrative Panel to suspend or postpone the decision in these Administrative Proceedings.

On March 29, 2001 as no Response had been filed by the Respondent, the Center sent a Notification of Respondent Default to the Respondent by post/courier and email. A copy of said Notification was at the same time sent to the Complainant.

On April 4, 2001 the Center invited James Bridgeman to act as Administrative Panel in these proceedings.

On April 6, 2001 having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member. On the same date, the case file was transferred to the Administrative Panel.

In the view of this Administrative Panel, the proper procedures were followed and the panel was properly constituted.

On April 6, 2001 the authorised representatives of the Complainant sent an e-mail directly to this Administrative Panel. As this communication was in breach of paragraph 8 of the Rules and this Administrative Panel did not consider this communication.

On April 20, 2001, having considered the Complaint and the Response and having ascertained that there was a significant conflict between the submissions and the evidence submitted by the Complainant on the one hand and the statements made by the Respondent in his said e-mail to the Center on March 29, 2001, this Administrative Panel issued a Procedural Order, pursuant to Rule 12 of the Rules directing that the Complainant furnish to the Center for consideration by this Administrative Panel, print-outs of all original e-mails received by the Complainant, its servants or agents from the Respondent; that the Respondent furnish to the Center for consideration by this Administrative Panel certain documentation referred to in the Respondent's e-mail of March 29, 2001 relating to legal action allegedly taken by the Complainant. Each Party was given seven (7) days to submit the aforesaid documentation to the Center. Each Party was further directed to send copies of the said documentation by recorded delivery to the other Party. Additionally each Party was given liberty to furnish further written submissions limited strictly to the content of the aforesaid documentation within five (5) days of receipt of the said documentation.

On April 25, 2001 the authorised representatives of the Complainant furnished the additional documentation as directed. The Respondent failed to furnish the documentation within the deadline. The Respondent, however, submitted two e-mails, on April 28 2001 and May 15, 2001 respectively. According to paragraph 14 (a) of the Rules, unless there are exceptional circumstances, late filings shall not be considered by the Administrative Panel.This Administrative Panel did not consider the said e-mails from the Respondent.

The Complainant is the owner of a number of trademark registrations worldwide for the trademarks <ROWNTREE> and <ROWNTREE'S>, alone or in combination with other word and/or device elements.

The trademark originated as an element of the company name H.I. Rowntree & Co, which was established as early as 1869 and the trademark <ROWNTREE'S> was first registered in the United Kingdom by the predecessor in title to the Complainant on

January 23, 1908 under No. 299.838.

The core class of goods for which said trademarks are registered is Class 30 in respect of confectionery. Since the 1870's, the trademark <ROWNTREE'S> has been used continuously in the United Kingdom for confectionery products.

A subsidiary of the Complainant operates a www site accessible via the domain name www.rowntrees.co.uk. This is a promotional www site which is particularly designed to attract possible customers of the Complainant's confectionery products. The www site allows individuals to participate in a computer-game designed as "A Search for The Rowntree" The winners of the game, i.e. those which obtain the highest scores when playing, receive a backpack full of confectionery products.

The Respondent registered the said domain name <rowntrees.com> on

February 1, 2000. In the absence of any Response in these Administrative Proceedings, there is very little further information available regarding the Respondent, except for the registration details on the Registrar's database containing the Respondent's name and address and the technical, administrative and billing contact for the domain name registration.

The Complainant has submitted a detailed list of all current trademark registrations and applications for said trademarks <ROWNTREE> and <ROWNTREE'S> alone or in combination with other word and/or device elements, owned by the Complainant.

The Complainant has further provided copies of UK trademark registration and renewal certificates in respect of the said trademarks including evidence of that the said trademark <ROWNTREE> was first registered on 23rd January 1908 as registration number 299.838.

The Complainant submits that the said trademark <ROWNTREE'S> has been used continuously for confectionery and related goods in the United Kingdom since the 1870's.. It has also been used in many other countries, and given the English origin of the company, the trademarks have been used most extensively in the Commonwealth countries. The Complainant submits that the Complainant's said trademarks have become extremely well-known in the United Kingdom, and in certain other jurisdictions due to this extremely long and extensive use.

The Complainant submits that it is the parent company of Rowntree PLC, having acquired said Rowntree PLC on 25 June 1988. The Complainant states that the said trademarks are commercialised by a division of Nestlé UK Ltd., the UK affiliate and licensee of the Complainant. In support of its claims to such long established use by itself and its predecessors in title, the Complainant has submitted a number of documents outlining the history of the <ROWNTREE> brand of confectionery.

The Complainant submits that its said subsidiary Nestlé UK Ltd operates a www site under the domain name www.rowntrees.co.uk. This is a promotional www site which is particularly designed to attract possible customers of the Complainant's confectionery products. The Complainant states that the said www site allows individuals to participate freely in a computer-game entitled "A Search for The Rowntree". The winners of the game, i.e. those which obtain the highest scores when playing, receive a backpack full of the Complainant's <ROWNTREE'S> brand confectionery products.

The Complainant submits that this has become a very popular game, in particular among children. The Complainant submits that this www site has become extremely well known and frequently visited, having been promoted by television advertising and in the months of December 2000 and January 2001, the said www site, logged 22,923 and 26,269 visitor sessions respectively "whilst by the end of December 2001 (sic) over 7,000 visitors had registered to play the game." [It should be stated here that this Administrative Panel has interpreted this as a reference to the year 2000].

In support of its claim that the said domain name <rowntrees.com> is identical or confusingly similar to the Complainants <ROWNTREE'S> trademark, the Complainant submits that the absence of an apostrophe in the domain name does not make any relevant difference. Neither is the apostrophe noticed at all by the public at large, nor does it result in a phonetic difference, nor can an apostrophe be part of a domain name. The domain name is essentially identical with the Complainant's trademarks <ROWNTREE> and <ROWNTREE'S>.

The Complainant submits that the Respondent has no rights or legitimate interests in the said domain name. In support of this assertion, the Complainant submits that because the said trademark is so well known in the United Kingdom, the Respondent has always been aware that the domain name <rowntrees.com> corresponds to the Complainant's trademark. The Complainant further submits that the Respondent has admitted in his e-mail correspondence (infra) that he acquired the said domain name because of the nuisance value which it could have to the Complainant should it fall into the wrong hands.

Finally the Complainant submits that the said domain name was registered and is being used in bad faith.

The Complainant submits that the domain name <rowntrees.com> is linked to a www site at the domain name <niceonemate.com>. The Complainant states that this is a www site containing a section enlisting various domain name registrations which are for sale. The Complainant has submitted that the said domain name <rowntree.com> domain is being explicitly offered on this site and in support of this claim the Complainant has furnished this Administrative Panel with a print-out of part of this www site which contained the text: "If you are interested in any of the domain names then please call Mr. Harper on ..."

The Complainant submits that on June 26, 2000, the Respondent sent an e-mail to the said <rowntrees.co.uk> www site. The e-mail was addressed to "Professor Peel", the comic character of the said computer-game "A Search for the Rowntree",. It was received by Pilot Interactive Limited, the company which was engaged by Nestlé UK Ltd to design and operate the www site on its behalf. In this e-mail, a copy of which has been furnished to this Administrative Panel, the Complainant submits that the Respondent offered to "sell" the said <rowntrees.com> domain name. In the said e-mail the Respondent claimed to have "merely saved the name from being bought by unscrupulous people outside England who wanted to auction off rowntrees.com to the highest bidderPlease let me know how I can help you and how you can help me and my family."

Having duly consulted with Nestlé UK Ltd, Pilot Interactive Limited requested more information from the Respondent but did not enter into any negotiation about the acquisition of the said domain name and the Complainant states that nothing further happened until January 29, 2001.

The Complainant submits that on January 29, 2001, Respondent again sent an e-mail to Pilot Interactive Limited regarding the said domain name <rowntrees.com>. The Complainant has furnished this Administrative Panel with a copy of this e-mail. In this e-mail, the Complainant submits that the Respondent urged Pilot Interactive Limited to acquire the domain name on behalf of the Complainant. The Complainant submits that the Respondent openly threatened that unless the Complainant agreed to enter into negotiations, the Respondent would place a variety of advertising banners on this site, "some of which may not be suitable for younger children to look at" because of their "adult content". The Complainant submits that in this e-mail the Respondent effectively threatened to transform the www site accessible via the domain name <rowntrees.com> into a pornographic site.

The Complainant submits that these threats by the Respondent are all the more menacing in that the Respondent claims that he has tens of thousands hits on his site, evidently by people who are looking for the www site displaying Nestlé UK's promotional game "A Search for the Rowntree" but erroneously assuming that this is located on a www site accessible via the said domain name <rowntrees.com>. The Complainant submits that further pressure is exercised by the Respondent by saying that unless the Complainant responds to his "offer" to sell the domain name, his "only other option would be to sell it to XXX (pornographic) websites who have been offering (him) a lot of money."

The Complainant submits that at the end of his said e-mail of January 29 2001, the Respondent demonstrates unabashed cynicism by purporting to condemn as "morally wrong" any internet practices by which young audiences are misled to sites displaying pornographic content.

The Complainant states that in his e-mails, the Respondent has admitted to have acquired the domain name <rowntrees.com> because of the nuisance value which it could have to the Complainant should it fall into wrong hands. From very start, the Respondent has been aware of the identity or "quasi-identity" between the disputed domain name and the well-known trademark <ROWNTREES>, whose notoriety has further grown thanks to the promotional computer-game to be found on the www site <rowntrees.co.uk>.

The Complainant further submits that the Respondent's e-mail communications demonstrate very clearly that his sole purpose for registering the domain name has been and remains to use it as a means of extortion against Complainant. He is aware that Complainant's www site <rowntrees.co.uk> enjoys great popularity among many consumers of <ROWNTREES> confectionery and, in particular, among young people. He recognizes that any threat to "pollute" the www site <rowntrees.com> with pornographic banners and the like could affect Complainant's goodwill and reputation very negatively and indeed cause an irreparable damage to the Complainant's trademarks. He sees, therefore, that the Complainant must be extremely concerned about this risk. The situation can only be described as pure extortion. The Complainant submits that this "is a typical case of domain name squatting, but much worse than most cases, as it is combined with a threat to harm Complainant unless Complainant agrees to pay an yet unspecified sum to Respondent."

The Complainant submits that the registration and use of the said domain name <rowntrees.com> by the Respondent is merely intended to extort from the Complainant by threatening to disrupt the business of Complainant unless the Complainant buys the said domain name.

The Complainant furnished a number of print-outs of e-mails received from the Respondent in support of these claims.

Although the Respondent has not filed a Response, he has sent an e-mail to the Center requesting that these Administrative Proceedings be suspended or postponed pending the outcome of legal proceedings in the United Kingdom.

The essential points made in this e-mail are that the Respondent had withdrawn a Response to these Administrative Proceedings on the advice of his solicitor. He was awaiting a further consultation with his solicitor and in the meantime he was not in a position to respond fully in these Administrative Proceedings.

The said e-mail inter alia contains the following statement:

"I must confirm however, that I never have or threatened to put ANY pornographic material on ANY website that uses the domain name rowntrees.com IN ANY WAY. The information supplied to you by the complainant is not the truth and has been deliberately taken out of context and 'twisted' completely out of proportion to benefit their case in this dispute.

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-

This Administrative Panel directed that the Respondent furnish copies of the said documentation, however the Respondent has failed to comply with the directions and the documents were not furnished.

In the view of this Administrative Panel, the Complainant has made out a prima facie case that the Respondent has registered the said domain name primarily for the purpose of selling, renting, or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark <ROWNTREES> for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the said domain name. In accordance with the guidelines set out in paragraph 4(b)(i) of the Policy, such activity amounts to evidence that the said domain name was registered and is being used in bad faith.

With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name <rowntrees.com> confusingly similar to the Complainant's trademark mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <rowntrees.com> should be transferred to the Complainant.

James Bridgeman
Sole Panelist

Dated: May 16, 2001