WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Procter & Gamble Company, Tambrands Inc. v. MM/M Morgan Case No. D2009-0237 1. The Parties
The Complainants are The Procter & Gamble Company, and Tambrands Inc., both of Cincinnati, Ohio, United States of America, both represented by Studio Barbero, Italy.
The Respondent is MM/M Morgan of Newfoundland, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2009. On February 23, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 23, 2009, eNom transmitted by email to the Center its verification response indicating the registrant and contact information for the disputed domain name which differed from the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 10, 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 the Respondent of the Complaint, and the proceedings commenced on March 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 20, 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
Procter & Gamble (P&G) is one of the largest companies in the world manufacturing a wide range of consumer goods in diverse areas, such as health care, including feminine care. P&G spends considerable sums on advertising and was named in 2008 the Advertiser of the Year.
In 1929 Dr. Earle Haas invented the applicator tampon. Haas later sold the patent to the founder of the Tampax Company, which was later renamed Tambrands, Inc. and subsequently purchased by P&G in 1997.
The Complainants are owners of multiple registrations over the trademark TAMPAX in various classes (mostly in class 5). One such registration owned by Tambrands, Inc, for the TAMPAX trademark was registered in the US and in Canada as early 1934.
TAMPAX related products worldwide sales amounted to US$760 million in 2008, out of which US$57 million worth of TAMPAX related products were sold in Canada.
The Complainants registered a number of domain names comprising the TAMPAX trademark to include , and . The main portal for the Tampax products is operated under the “www.” website. The Complainant also operates a website in Canada in relation to its activities under the “www.” website.
The disputed domain name was registered on December 3, 2004. At the time of this decision, the disputed domain name is resolved to a web site comprising sponsored links to various web sites and pop up advertisements. 5. Parties' Contentions A. Complainant
The Complainants argue that the disputed domain name registered by the Respondent is identical to the trademarks in which Complainants have rights.
The Complainants further argue that the Respondent has not provided any evidence showing that he has rights or legitimate interest to the disputed domain name; that the Respondent has not provided evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
In addition, the Complainants argue that the Respondent is not commonly known by the disputed domain name as an individual, business or other organization, and “tampax” is not his family name.
The Complainants further argue that the disputed domain name was registered and is being used in bad faith; that in view of the international reputation of the TAMPAX trademark and the use also in Canada of the said trademark, the Respondent could not have ignored the existence of the TAMPAX trademark registration which is identical to the disputed domain name at the time of registration.
The Complainants also argue that the Respondent is a professional registrant to whose name some 6,693 domain names are currently registered and that this fact is an indication of bad faith registration.
Finally, the Complainants argue that the Respondent is using the disputed domain name in bad faith when it is resolved to a web site which provides sponsored links to various web sites, some of which compete with the Complainant's business; and that he has approached the Complainant and made an offer of Euro85,000 to transfer the registration of the disputed domain name to the Complainants. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainants are the owners of numerous trademarks over the TAMPAX marks in various jurisdictions. For example, the Complainant Tambrands own US Federal trademark registration number 294959 for the TAMPAX trademark with a filing date of February 5, 1932 and registered on June 14, 1932. The Complainant P&G own Canadian trademark registration number UCA5609 with a registration date of December 1, 1934.
The only difference between the disputed domain name and the Complainants' trademark is the addition of the generic top-level domain “.org”.
The addition of a generic top-level domain (gTLD) “.org” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.org” is without legal significance since use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainants have rights. B. Rights or Legitimate Interests
Once the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110, Sampo plc v. Tom Staver,WIPO Case No. D2006-1135, Audi AG v. Dr. Alireza Fahimipour,WIPO Case No. DIR2006-0003.
In the present case the Complainants allege that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights.
The Panel finds the Complainants have established such prima facie case inter alia due to the fact that the Complainants have not licensed or otherwise permitted the Respondent to use the TAMPAX trademark. See Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134 “the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed Domain Name” (See also National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a ,WIPO Case No. D2000-0118, and N.C.P. Marketing Group, Inc. v. Entredomains,WIPO Case No. D2000-0387).
In addition, the disputed domain name is resolved to a website consisting a page displaying sponsored links which surely generate revenues to the Respondent via the pay per click system and at the same time damaging the Complainants' trademark rights.
The use of the disputed domain name via a redirection to the webpage currently on line, where services of competitors of the Complainants are advertised and sponsored links are published, is not a legitimate or fair use of the disputed domain name. Such use has been held by previous panels to be not associated with any legitimate purpose. See Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, and F. Hoffmann-La Roche AG v. Titan Net,WIPO Case No. D2006-0424.
Accordingly, and in view of the Panel's findings, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainants must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive that the Respondent registered the disputed domain name in bad faith where the trademark owned by the Complainants was registered long before the registration of the disputed domain name. The Complainants submitted evidence, which show that the Complainants' TAMPAX trademark was registered many years before the Respondent registered the disputed domain name. In addition, the Complainants showed that the TAMPAX trademark is well known in the health care business; and that their TAMPAX trademark is well recognized publicly. In view of these facts, it is unlikely that the Respondent did not recognize or was not familiar with the Complainant's trademarks at the time of registration. See The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran,WIPO Case No. D2002-0770.
Respondent's bad faith registration of the disputed domain name is also exacerbated by the fact that he is a serial or professional domain name registrant. Registration of thousands of domain names, also for use as landing pages indicate that the Respondent is making a living through the pay-per-click revenues generated by these pages at the expense of the trademark owners. This further indicates the sole purpose for registering the disputed domain name was for obtaining profit through the unlawful use of the TAMPAX trademark owned by the Complainants. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
According to paragraph 4(b) of the Policy, certain circumstances shall be evidence of the registration and use of a domain name in bad faith. These include in sub-paragraph (iv) the fact that the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.
The use of the disputed domain name as a landing page where Internet users can click on various sponsored links some of which directing the users to web sites of competitors of the Complainants which provides the Respondent with revenues, is a bad faith use of the disputed domain name. Such use is an intentional attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's TAMPAX trademark. See Deutsche Telekom AG v. Gary Seto, and Chinmoy Kumar Ghose v. ICDS and Maria Sliwa,WIPO Case No. D2003-0248.
Finally, the offer made by the Respondent for the sale of the disputed domain name is another clear indication that the disputed domain name was registered and is used in bad faith. The sum offered by the Respondent of Euro85,000 is clearly intend to enrich the Respondent and is in excess of reasonable out-of-pocket costs directly related to the disputed domain name transfer to the Complainants. See Benetton Group SpA v. Domain for Sale,WIPO Case No. D2001-1498.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using 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 Complainants.
Jonathan Agmon
Sole Panelist
Dated: May 4, 2009
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