The Swiss Société des Produits Nestlé S.A., represented by Studio Barbero S.p.A., filed a complaint with the WIPO Center for Arbitration and Mediation regarding the disputed domain name “nespresso.kiev.ua”.
The administrator of the public domain .UA sent an email to the Center in which he indicated that for the disputed domain name “nespresso.kiev.ua” there is a registered mirror domain name “nespresso.kyiv.ua”. According to the section of the Regulation (Policy) on the specifics of registration of third-level private domain names in the kyiv.ua and kiev.ua domains from July 1, 2023, if there is a mirror domain name, the registrar change operation (transfer) can be performed only simultaneously for two mirror domains domain names.
The registrar emailed the Center its response to the request, which states that the registrant and contact information for the mirror domain name “nespresso.kyiv.ua” is the same as for the registrant of the disputed domain name “nespresso.kiev.ua”.
The Claimant has registered the trademark “NESPRESSO” in several generic top-level domains (“gTLDs”) and national top-level domains (“ccTLDs”), including “nespresso.com”, which is the Claimant’s main website for global promotion dedicated to of the “NESPRESSO” brand and “nespresso.com.ua”.
The disputed domain name “nespresso.kiev.ua” was registered on August 4, 2015, and redirects to a website (available in Ukrainian and Russian) that reproduces the Nespresso trademark and product visuals and offers Nespresso products for sale, including coffee machines, coffee pods, and accessories. The disputed mirror domain name “nespresso.kyiv.ua” was registered on September 21, 2023, and redirects to a website (available in Ukrainian and Russian) that reproduces the Nespresso trademark and product visuals and offers Nespresso products for sale, including coffee machines, coffee capsules, and accessories.
In connection with the absence of contact data of the registrant in public WhoIs records and the absence of an e-mail address on the website to which the disputed domain name “nespresso.kiev.ua” leads, in January 2020 to the e-mail address specified in the WhoIs records, the registrar was sent a cease-and-desist letter with a request to forward it to the Defendant. Despite reminders sent in February 2020 and November 2023, no response to this letter has been received.
The Administrative Commission of the WIPO Center for Arbitration and Mediation found that the disputed domain names are identical to the trademark for which Nestlé S.A. has rights and that the defendant has no rights or legal interests in the disputed domain names.
The commission decided that the disputed domain names “nespresso.kiev.ua” and “nespresso.kyiv.ua” should be re-delegated to Société des Produits Nestlé S.A.