WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reckitt Benckiser Plc v. PrivacyP/ C. D. Case No. D2009-0220 1. The Parties
Complainant is Reckitt Benckiser Plc of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Tanya Dolamore, United Kingdom.
Respondent is PrivacyP of Moergestel, Netherlands and C. D., United Kingdom. 2. The Domain Names and Registrar(s)
The disputed domain names and (“the Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd d/b/a PublicDomainR 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2009. On February 20, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On February 23, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 26, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 27, 2009.
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 Respondent of the Complaint, and the proceedings commenced on March 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on April 6, 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 Domain Names were registered on January 1, 2009.
Complainant is a worldwide manufacturer and supplier of household, healthcare and personal care and pharmaceutical products. It has its registered office in Berkshire, United Kingdom. It supplies its products through a network of companies within its corporate group to 180 countries and has operations in over 60 countries.
Complainant is the registered proprietor of trade marks and applications for trademarks in a substantial number of jurisdictions for the trade mark CALGON. Complainant also owns extensive worldwide unregistered rights in the mark CALGON including its registration and use of a number of domain names. As an example it has used the mark CALGON in connection with a water softening product for over 50 years and this product is sold in over 20 countries. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has become well-known to the public and to members of the household, healthcare and personal care sectors as a leader in these fields. It says that it spends millions of dollars annually on media advertising and that many of its brands have a significant worldwide reputation.
Complainant asserts that the Domain Names are confusingly similar to the trademark CALGON as well as being confusingly similar to other domain names held by Complainant. Complainant states that the Domain Names comprise the mark CALGON, together with a country signifier (UK) and the generic top-level domain (.com and .net, respectively). Complainant suggests that the Domain Names convey that they are sponsored by, affiliated to or endorsed by Complainant when it is not the case.
Complainant states that when entering the domain name into an Internet browser, it reverts to an active website incorporating adult content, and when entering the domain name into an Internet browser, it reverts to an inactive website. For these reasons Complainant believes that Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. Complainant suggests that Respondent is not making legitimate noncommercial or fair use of the Domain Names without intent for commercial gain and suggests that Respondent is using Domain Names to divert consumers or to tarnish the established trade mark CALGON, particularly the domain name which it suggests is being used in an aggravated and lewd way.
Complainant states that it first became aware of Respondent’s use of the Domain Names in January 2009 and advises that a cease and desist letter was sent to Respondents to the address appearing on their website. Complainant contends that following this cease and desist letter the content of the web page changed to feature photographic images of naked women with the banner “la la la, you will never get this”.
Complainant submits that for the above reasons Respondent has registered both Domain Names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. Accordingly, the Panel proceeds on the basis that Complainant’s contentions stand uncontradicted. 6. Discussion and Findings A. Identical or Confusingly Similar
It is clear from the submissions and evidence filed that Complainant is the owner of the CALGON trademark (“the Trademark”) by virtue of its registered and common law rights in the Trademark. It is also clear that these rights extend to not just the United Kingdom, where Complainant is based, but to a large number of other countries in which it operates.
Complainant submits that the Domain Names are confusingly similar to the Trademark, as well as being confusingly similar to other domain names held by Complainant. The Panel accepts this submission along with the further submission that by adding a descriptive term, such as “UK”, to a known trademark or name does not render it different or distinctive from that trademark or name.
It is clear that the Domain Names include the Trademark and that the Trademark is identifiable within the Domain Names. In the light of the evidence before it and additionally in the absence of any explanation as to why Respondent chose to use the Trademark in the way it has, or indeed at all, the Panel finds that the Domain Names are confusingly similar to the Trademark.
It is therefore found that Complainant has rights in the Trademark and that the Trademark comprises a dominant and confusing part of the Domain Names.
The requirements of Paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
It is clear that Respondent is not affiliated with Complainant and has not been authorised by Complainant to use and register its trademarks or to seek the registration of any domain name incorporating the Trademark.
The registration and use of the Trademark preceded the registration of the Domain Names. The Domain Names make an obvious and direct reference to the Trademark, including on water softening products made or distributed by Complainant for a large number of years in a number of countries.
Complainant asserts that the domain name resolves to an active website incorporating adult content, while the domain name resolves to an inactive website. The inference which the Panel draws is that is being used to divert Internet traffic whereas is being parked and held for possible future use or disposal by Respondent.
Complainant also points to the alteration of the web page on the site which was evidently changed to feature photographic images of naked women with the banner “la la la, you will never get this”. It is unclear whether this statement is directed at Complainant. However, it does suggest that Respondent is not using for legitimate non-commercial or other purposes but perhaps to embarrass Complainant.
The Panel finds that under the circumstances and in the absence of any effort to explain its motivation for doing so that Respondent has failed to demonstrate or otherwise point to some right or legitimate interest in the Domain Names.
The requirements of Paragraph 4(a)(ii) of the Policy are therefore met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Respondent has registered and uses the domain name in bad faith.
It is not difficult, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant’s Trademark at the time it registered the Domain Names. So CALGON appears to be a widely-known trademark with a well-established and widespread international reputation. The use of the Trademark on water softening products for approximately 50 years and in a large number of countries is itself sufficient to establish that Respondent was likely to have known of Complainant’s Trademark at the relevant time.
Respondent’s conduct in either using the Domain Names to divert Internet users or by way of passive holding may amount to bad faith use and registration, depending on the circumstances. In the present case Complainant has laid a sound evidential basis for its submission that Respondent’s conduct is improper.
In the absence of comment or contradiction by Respondent the Panel finds that the Domain Names were both registered and used in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. 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 Names and be transferred to the Complainant.
Clive L. Elliott
Sole Panelist
Dated: 24 April 2009
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