WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Henkel AG & Co. KGaA v. Olga Shiropaeva
Case No. D2008-1019
1. The Parties
The Complainant is Henkel AG & Co. KGaA, Dusseldorf, Germany, represented by the law firm Taylor Wessing, Germany.
The Respondent is Olga Shiropaeva, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2008. On July 7, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name at issue. On July 7, 2008, eNom, Inc transmitted by email to the Center its verification response naming Respondent as the registrant and providing the contact details. However, after the proceedings were formally commenced on July 11, 2008, the Center received an email communication from Respondent informing the Center that the technical contact of the registrar had erroneously named her as registrant of the disputed domain name. This so-called “mistake” was communicated in an email from the Center to Complainant’s attorney dated July 11, 2007. The Center was then informed by Respondent that the disputed domain name holder was allegedly another individual from Saint Petersburg, Russian Federation, and not Respondent.
The Center verified that the Complaint naming Respondent as the registrant of the disputed domain name satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2008. Respondent did not submit any formal Response. Accordingly, the Center notified Respondent’s default on August 4, 2008.
The Center appointed Paul E. Mason as the sole panelist in this matter on August 15, 2008. 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.
Shortly after appointment, the matter of Respondent’s identity was brought to the Panel’s attention by the Center. Complainant made a Supplemental Submission on this question dated August 15, 2008. The Panel was informed by the Center that this other individual referred to above had in fact received a copy of Complaint, albeit not as a party to it.
The Center was informed by Complainant’s attorney that it was possible that the real Respondent could be this other individual from St. Petersburg. The Panel and Center agreed to send a letter to the Registrar asking to clarify the identity of the holder of the domain name. The letter was sent to the Registrar on August 22, 2008.
The Registrar responded the same day confirming Respondent as the domain name registrant.
At the same time the Center sent another email communication to this other individual inviting him to participate in the proceedings, giving him until September 3, 2008 to participate. No Response was received from him as of the date of this Decision.
If there is an error by the Registrar in identifying the domain name holder, the Center has done all it can to try and clarify this matter by asking the Registrar to reconfirm the identity of the domain name holder. The Registrar came back with the same registrant information as from the Center’s initial inquiry, and the other possible party was notified twice by the Center. Waiting any further to proceed would unduly prejudice the rights of Complainant in this case.
Although Respondent is based in Russia, the language of the Registration Agreement for the domain name is English, so under the UDRP this proceeding shall be conducted in English.
4. Factual Background
Complainant’s company has been in business since 1876 in Germany, expanding to many other countries from there. It carries the Henkel founding father’s name. It manufactures products globally, primarily in three business sectors: laundry & home care, cosmetics & toiletries, and adhesive technology. It is also very active in the transportation and automotive sectors, in the development, manufacture and maintenance of vehicles and transportation systems. It has been doing business in the Russian Federation – where Respondent is located – for 15 years. (Complaint, page 5).
It has registered numerous HENKEL trademarks in Germany, the Russian Federation and other countries beginning in 1921 according to page 6 of the Complaint. There were international registrations beginning in 1988 and running to 2002 and 2005.
5. Parties’ Contentions
A. Complainant
Complainant contends that:
- The disputed domain name is confusingly similar to its registered trademarks because it fully incorporates the marks as part of the domain name;
- Complainant never authorized Respondent or any of Respondent’s representatives to use its trademarks; and
- These marks were registered and used in bad faith by Respondent, which:
(1) Via a vaguely related entity called Stanley Trading LL.C., improperly tried to register HENKEL trademarks in the United Arab Emirates, a place where trademark registrations are claimed to be automatically allowed upon application, without subsequent examination; and
(2) Set up a website deriving from the disputed domain name in order to market automobile lamps, thus improperly treading on the good name of Complainant.
B. Respondent
Respondent did not file a Response or otherwise reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that in accordance with a long line of UDRP decisions, the disputed domain name which incorporates fully Complainant’s HENKEL trademark is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant has made out its prima facie case by stating in the Complaint that it has not licensed or otherwise authorized Respondent to use or hold any rights or legitimate interests in a domain name incorporating Complainant’s mark. Since Respondent did not reply to the Complaint or otherwise attempt to rebut Complainant’s prima facie case, e.g., by showing that any of the circumstances under the Policy, paragraph 4 (c) applies, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
1. Bad faith registration: Given the Panel’s finding below, it is not necessary to comment on the effect under the Policy, if any, as to unexamined trademark applications. However, in this case we are apprised that Complainant has been doing business under the Henkel name in the Russian Federation – with offices in Moscow where Respondent is located – for 15 years, and had its trademarks registered in the Russian Federation as well for some time. The Panel finds these facts sufficient to show bad faith registration of the disputed domain name by Respondent.
2. Bad faith use: This question turns on the definition of what constitutes a bona fide offering of goods and services. A primary defense against a bad faith use of a disputed domain name charge is that the website deriving from the disputed domain name is used for a bona fide offering of goods and/or services.
In this case, the Panel attempted to visit the website “www.” on August 15, 2008, but it did not resolve. The Complainant provided a screenshot of this website (undated) in apparent German translation of the home page, with an accompanying product price list in English (Exhibits 15 & 16 to the Complaint).
The list indicates some 32 auto lamp products with accompanying pricing, almost all of them carrying the Henkel name or some close derivative thereof.
While Complainant makes no claim of also manufacturing or selling auto lamps, it does say it is quite active in the automotive sector and has built up a good reputation there both in the Russian Federation and worldwide. Thus its argument that Respondent is treading on its good name in the same industry sector is valid, especially in view of the fact that Complainant’s trademarks have been registered and in use for so long a time. Therefore, the Panel finds that Respondent has used the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Paul E. Mason
Sole Panelist
Dated: September 3, 2008
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