WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Unilever PLC and Unilever N.V. v. Pluto Domain Services Private Limited Case No. D2008-1789 1. The Parties
The Complainants are Unilever PLC of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Unilever N.V. of the Netherlands, represented by Baker & McKenzie LLP.
The Respondent is Pluto Domain Services Private Limited of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Lead Networks Domain Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2008. On November 21, 2008, the Center transmitted by email to Lead Networks Domain Pvt. Ltd. (“the Registrar”) a request for registrar verification in connection with the Domain Name. On December 2, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on December 4, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 8, 2008. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on December 8, 2008. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 30, 2008.
The Center appointed Tee Jim Tan S.C. as the sole panelist in this matter on January 19, 2009. 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 Complainants are, as part of the Unilever group of companies, amongst the world's leading developers, manufacturers and retailers of home, personal care and food products. The Unilever group of companies has more than 400 brands of products being sold in 150 countries, and employs more than 174,000 staff operating in 100 countries.
The Complainants are the owners of several United Kingdom, United States and Community trade mark registrations for the UNILEVER mark in respect of a wide range of goods and services. The Complainants and the Unilever group of companies also own a number of domain names incorporating the UNILEVER mark, including , and . These domain names are used in relation to websites approved by the Complainants and/or the Unilever group of companies, and provide information on the Unilever group of companies and their goods and services.
The Respondent is the registrant of the Domain Name at which the website “www.” (the “Website”) is located. The Website offers sponsored links to further websites advertising a variety of goods and services, including goods sold by the Complainants' competitors.
The Complainants became aware of the Domain Name in about March 2008 and contacted the administrative and technical contact for the Domain Name to enquire about purchasing the same. The Respondent offered to sell the Domain Name for the price of USD 15,950 but the Complainants did not take up the offer. As the Respondent's contact information was protected by the Registrar, the Complainants instructed investigators to look into the ownership of the Domain Name. The investigators did not manage to obtain the contact details of the registrant of the Domain Name, but were informed by the Registrar that all emails sent to the address would be forwarded to the registrant of the Domain Name.
On May 27, 2008, the Complainants requested, by way of letter sent through their lawyers, that the Domain Name be transferred to the Complainants. The letter was sent by post, fax and email to the Registrar using contact information obtained through the WhoIs search results for the Domain Name, and the Registrar was requested to pass the letter on to the Respondent. In the event, neither the Respondent nor the Registrar responded to the letter, fax or email.
On June 10 and 13, 2008, the Complainants' lawyers contacted the Registrar by telephone and spoke to a “Mr. Samalia”. Mr. Samalia confirmed that the Registrar had received the Complainants' letter dated May 27, 2008, and informed that the letter would be passed on to the Respondent and that the Registrar would also respond to the letter. Despite the confirmation, both the Respondent and the Registrar failed to respond to the letter.
The Complainants' lawyers made several further attempts to contact the Respondent in order to obtain a substantive reply to their original letter dated May 27, 2008. In the absence of a reply, the Complainants filed this Complaint with the Center for resolution pursuant to the Policy. 5. Parties' Contentions A. Complainants
The Complainants contend that:
(1) The Complainants own several trade mark registrations for the UNILEVER mark and therefore can challenge the validity of a domain name containing the said mark.
(2) The UNILEVER name and mark has been used throughout the world for more than 70 years. The extensive use is evidenced by significant turnover figures both in Europe and worldwide, and evidence of the frequent mention of the Unilever name in the media. As a result, the Unilever group of companies enjoys a substantial reputation in the UNILEVER name and mark, which has become closely, associated with the Complainants (and other members of the Unilever group of companies) in the minds of consumers and the general public;
(3) The Domain Name is identical or confusingly similar to the UNILEVER name and mark for the following reasons:
a. The Domain Name incorporates the UNILEVER mark, using seven of the eight characters in the UNILEVER mark in the same order, with a minor typographical change through the omission of the letter “e”.
b. The UNILEVER mark is highly distinctive of the Complainants' business;
c. A domain name that differs by only one letter from a trade mark has a greater tendency to be confusingly similar to the trade mark where the trade mark is highly distinctive;
d. The “.com” element is widely-recognised as a descriptor, merely provides an Internet identity and does not detract from the core element of the Domain Name, namely, the word “unilver”; and as a top-level domain, should be disregarded when assessing the identity or similarity of a trade mark and a domain name;
e. The use of lower case instead of upper case letters in the Domain Name is insufficient to avoid any confusion.
(4) The Respondent does not have rights or legitimate interests in respect of the Domain Name for the following reasons:
a. Neither the Complainants nor any other member of the Unilever group of companies authorised the Respondent to use the UNILEVER name and mark or anything confusingly similar in any business or other activities, including in any domain name;
b. The website facilitates the advertisement and sale of products originating from many of the Complainants' competitors, and the Complainants did not authorise the Respondent to use the UNILEVER mark or name, or anything confusingly similar, to advertise and offer for sale non-UNILEVER brand products;
c. The incorporation of another's mark into a domain name in order to sell competitors' goods is not a legitimate use of the mark;
d. The Respondent has been using the Domain Name to capture Internet traffic, particularly from users who mistakenly enter the incorrect domain name when attempting to visit the Complainants' websites (including “www.”), and to divert such Internet traffic to the website.
e. The use of the Domain Name leads Internet users to think that the Complainants and the Unilever group of companies are associated with or sponsor the Website, or that some connection exists between the Respondent and the Complainants, where no such association, sponsorship or connection exists;
f. The Respondent was merely seeking, or has sought, to exploit the UNILEVER name and mark, in which the Complainants have rights, to create a commercial gain for itself on the Internet;
g. The Respondent would have responded to the Complainants' letter of May 27, 2008 had they owned any rights or had legitimate interests to claim in respect of the Domain Name.
(5) The Respondent has not been commonly known by the Domain Name for the following reasons:
a. The website does not contain any reference setting out the identity of the Respondent or indicating that the Respondent is associated with the name “unilver”;
b. The Respondent could only have chosen a domain name confusingly similar to the UNILEVER name and mark in order to create an unfair commercial advantage for itself;
c. The Respondent has not adduced evidence to show that it has been commonly known by the Domain Name prior to the date of registration of the Domain Name by reason other than the use of the Domain Name;
d. The UNILEVER name and mark is so well-known and recognisable throughout the world that it is inconceivable that a domain name incorporating the said name and mark, or one that is confusingly similar, could be used to promote household products without the authority of the Complainants or members of the Unilever group of companies.
(6) The Domain Name has been registered and/or is being used in bad faith for the following reasons:
a. The circumstances show that the Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting or transferring the registration of the Domain Name to the Complainants, who are the owners of the UNILEVER trade mark or service mark, or to a competitor of the Complainants, for valuable consideration exceeding the documented out-of-pocket costs directly related to the Domain Name;
b. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line locations by creating a likelihood of confusion with the Complainants' UNILEVER trade marks;
c. The Respondent's failure to respond to the Complainants or their lawyers' correspondence amounts to an acknowledgment that it has been acting in bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Elements of the Policy
Under paragraph 4(a) of the Policy, the Complainants must prove that each of the following three elements is present in order to succeed in the Complaint:
i. The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainants have rights;
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent fails to comply with time frame for submitting the Response and exceptional circumstances are absent, the Panel shall proceed to a decision based on the Complaint. B. Identical or Confusingly Similar
The Complainants have provided evidence of its registrations in relation to its UNILEVER trade mark in numerous classes in the United Kingdom, United States of America and the European Community. The Complainants have also shown prima facie evidence of the reputation and goodwill they enjoy (together with the Unilever group of companies) in the UNILEVER trade mark via significant United Kingdom, European and worldwide sales figures and evidence of media and consumer recognition of the same. On the basis of the evidence, the Panel is satisfied that the UNILEVER trade mark is highly distinctive of the Complainants' business and that the Complainants have rights in the trade mark.
The Domain Name is visually and phonetically similar to the UNILEVER trade mark. It incorporates the trade mark almost in its entirety, except for the second letter “E”. The omission of this letter does not obviate the similarity to any extent. It is another instance of a common practice known as “typo-squatting”. In this regard, the Panel respectfully agrees with the statement in Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441 that a domain name that differs by only one letter from a highly distinctive trade mark has a greater tendency to be confusingly similar with the said trade mark. This aside, it is unlikely that likelihood of confusion can be dispelled by the mere omission of a letter from a distinctive trade mark. In the present case, the likelihood of confusion is also not lessened to any extent by the use of the “.com” element (which has now been widely recognised as a descriptor) and the use of the lower case. Hence, the Panel finds that the Domain Name is confusingly similar to the Complainants' UNILEVER trade mark.
The Panel accordingly finds for the Complainants in relation to the first element. C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may establish its rights to or legitimate interests in the Domain Name by showing any of the following:
(i) The Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) The Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As the Respondent failed to file a Response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name. In this Panel's view, the Respondent's failure to provide the circumstances is itself an acknowledgement that it has no rights or legitimate interests in the Domain Name.
There is no evidence that the Respondent was or was commonly known by the Domain Name prior to its registration or that it has been dealing in goods or services under or by reference to the mark “unilver”. Indeed, its website bearing the Domain Name does not identify the Respondent or indicate that the Respondent is in some way associated with the name “unilver”. The irresistible inference is that the purpose of the website is to misleadingly divert consumers to the website by capturing and diverting Internet users who intend to visit the Complainants' website, “www.”. The Panel is satisfied that the Respondent's use of the Domain Name, which contains a misspelling of the Complainants' UNILEVER trade mark was indeed for the purpose of taking commercial advantage of a trade mark, which has become highly distinctive, by creating the erroneous impression that its website is the Complainants' or is associated with the Complainants. Such use is not fair use.
The Panel therefore finds for the Complainants in relation to the second element. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants who are the owners of the trade mark or service mark, or to a competitor of the Complainants, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
By failing to file a Response, the Respondent has failed to invoke any of the circumstances that could demonstrate that it did not register and use the Domain Name in bad faith and to assist the Panel in this regard. In this Panel's view, the Respondent's failure amounts to an acknowledgement that it could not justify its registration and use of the Domain Name and that it registered and used the Domain Name in bad faith.
It is probable that the Domain Name was registered by the Respondent in order to illegitimately profit from it. This is evidenced by the price (USD 15,950) at which the Respondent offered to sell the Domain Name to the Complainants. In the Panel's view, this price exceeds any out-of-pocket costs that could have arisen in relation to the Domain Name.
As mentioned above, there is no evidence that the Respondent was or was commonly known by the Domain Name prior to the registration of the Domain Name or that it has been dealing in goods or services under or by reference to the mark “unilver”. In contrast, the UNILEVER trade mark has been extensively used in several countries by the Complainants and their related companies for over 70 years in relation to a wide variety of goods and services. It is likely that the Respondent was aware of the use. Such awareness, plus the adoption of a domain name which is very similar to the UNILEVER trade mark (except for the missing second letter “e”), indicates the Respondent's blatant attempt to exploit the trade mark for its own purposes. Specifically, it represents an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' UNILEVER trade mark in relation to goods and services that do not originate from the Complainants.
The Panel therefore finds for the Complainants in relation to the third element. 7. Decision
For all the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainants.
Tee Jim Tan, S.C.
Sole Panelist
Dated: February 2, 2009
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