WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Henkel Corporation v. Private Whois Service/Katarzyna Bieniek Case No. D2010-0147 1. The Parties
The Complainant is Henkel Corporation of Rocky Hill, Connecticut, United States of America, represented by Schiedermair Rechtsanwälte, Germany.
The Respondents are Private Whois Service of Nassau, Bahamas (Respondent No. 1) and Katarzyna Bieniek of Mazowiecki, Poland (Respondent No. 2). 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2010.
On February 2, 2010, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On February 2, 2010, I Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
Following this verification response, the Center sent an email communication to the Complainant on February 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 15, 2010. 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 both Respondents (i.e., Respondent No. 1 as the registrant at the date of filing of the Complaint and Respondent No. 2 as the respondent identified by the Registrar at the date of its verification response to the Center) of the Complaint, and the proceedings commenced on February 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2010.
On February 17, 2010, Respondent No. 2 reacted to the electronic notification of the Complaint by sending an email to the Center requesting a justification for the notification of the Complaint to two separate Respondents. The Center responded to that communication on February 17, 2010 by informing Respondent No. 2 that Respondent No. 1 was the Respondent originally named in the Complaint and that the Center had the obligation under the Rules to notify all case-related communications to the Respondent as originally named in the Complaint. On February 17, 2010 again, Respondent No. 2 informed the Center in another electronic communication that it was the only owner of the disputed domain name and therefore required to be the only one against whom a UDRP complaint should be filed. In a second response also dated on February 17, 2010, the Center restated to Respondent No. 2 its obligation to notify all communications in relation to the case to all Respondents as named in the Complaint and that the question of the quality of the Respondent was a matter for consideration of the Panel.
Following these communications, none of the two Respondents did submit any Response. Accordingly, the Center notified the Respondents' default on March 10, 2010.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on March 15, 2010. 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 Complainant, Henkel Corporation, is a private American company incorporated under the laws of Delaware, and is a 100% subsidiary of Henkel of America, Inc., another American company being itself a majority-owned subsidiary of Henkel AG & Co. KGaA, a company incorporated under German laws. The all three above-quoted companies are members of the Henkel group (hereinafter “Henkel”), active in the manufacturing and the distribution of industrial and consumer goods.
In 1997, Henkel acquired the Loctite Corporation, a company active in the market of industrial adhesives marketed under the LOCTITE brand. After acquiring the Loctite Corporation, the Complainant has continued to market numerous adhesive products of the LOCTITE brand.
Complainant is the owner of numerous registered trademarks incorporating the word “loctite” or simply of the registered word-mark LOCTITE in numerous countries. This includes the registered American trademarks LOCTITE No. 725497 and No. 952639 filed respectively on January 9, 1961 and October 5, 1971, that were respectively registered on December 26, 1961 and February 6, 1973 under US class 005 (international class 1) for the first one and under US class 023 (international classes 7 and 8) for the second one.
The Complainant itself does not own any website incorporating the LOCTITE trademark. Its parent company however, Henkel AG & Co., owns hundreds of domain names incorporating the LOCTITE trademark, including the domain name since 1995.
The disputed domain name was registered on May 29, 1998.
It is a sponsored advertising “parking page” featuring sponsored advertising links to Complainant's competitors' websites or unrelated websites. 5. Parties' Contentions A. Complainant
The Complainant first contends that the disputed domain name is confusingly similar to its registered LOCTITE trademark, the only difference between its trademark and the disputed domain name being the insertion of the letter “k” between the “c” and the “t” of the word “loctite” and the addition of a gTLD suffix not being relevant in the analysis of the identity of the terms. It is the contention of the Complainant that the disputed domain name contains a voluntary misspelling of its LOCTITE trademark.
The Complainant further asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain name. First, the Complainant argues that the Respondents are not making any use of the disputed domain name in a bona fide offering of goods and services and have no intention of making any such use. The Complainant further contends that the Respondents are in fact rather known to be typical cyber-squatters, having recently registered numerous domain names that conflicted with third parties trademark rights or offering privacy services to the registrant. The Complainant adds that the Respondents are not known by the disputed domain name and that there is clearly no link between the names of the either Respondent and the disputed domain name or the word “locktite”.
Additionally, the Complainant asserts that it has never granted any license or any type of authorization of use of the LOCTITE trademark to any of the Respondents, which are not making any legitimate non-commercial or fair use of the disputed domain name. On the contrary, it is the opinion of the Complainant that the Respondents are making commercial gains through advertising revenues and that no fair use of the disputed domain name can be found in the present case.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith by Respondents. Complainant indeed asserts that Respondents are creating a likelihood of confusion for consumers with Complainant's trademark with the purpose of attracting commercial gain. Furthermore, in its amended Complaint, Complainant emphasizes that by hiding its true identity for no legitimate reason, Respondent No. 2 had the intention to encumber the enforcement of the trademark owner's rights. B. Respondent
Set aside the above mentioned exchange of emails with the Center, the Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of the Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Before addressing the above, a preliminary matter needs to be examined by this Panel, i.e., the issue of the identity of the proper Respondent to the present Complaint. A. Respondent Identity
As stated in the brief summary on the procedural history above, the Complaint was originally filed against Private Whois Service as the sole Respondent, consistent with the WhoIs-listed registrant information appearing in the Registrar's database as of February 2, 2010, when the Complaint was filed with the Center.
The Complaint has however been amended following the disclosure by the Registrar of Respondent No. 2's identity in its verification response to the Center. The amended Complaint thus now names the two Respondents and has been notified to all named Respondents.
The situation where a registrant wants to acquire a domain name but does not want to disclose its identity and therefore uses the services of privacy companies to register the said domain name is not unknown from UDRP panelists. The various questions raised by that situation and in particular the question of the identity of the proper respondent between the privacy service originally named in the Complaint and the underlying registrant disclosed by the Registrar has already been discussed and did not so far result in a unified position among the other learned Panelists.
The Panel is of the opinion that the correct approach in that type of cases is the pragmatic approach to treat both the privacy service and the underlying registrant as the respondents (see Aluship Technology SP. Z O.O v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028 and Reasearch in Motion Limited v. Privacy Locked LLc/Nat Collicot, WIPO Case No. D2009-0320). The Panel is indeed satisfied that the Complaint was originally filed against the correct Respondent since it was the one appearing as the registrant at the time of the filing. The Panel also believes that it is correct to also treat the underlying registrant as a respondent in the commenced proceedings. In Mark Alan Pearson and Marco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253, the panel expressed the following view to which we adhere: “The Panel proposes to treat the Second Respondent [the underlying registrant] as the substantive Respondent”.
This opinion appears to the present Panel as a sensible and pragmatic position since the underlying registrant will be the party with the power to transfer the disputed domain name, should this be the final decision of the Panel. The privacy company needs however also to be treated as the Respondent in this Panel's view since it results from the Rules, paragraph 1, that a UDRP complaint must be filed against the person identified as the registrant in the WhoIs database at the time the Complaint is submitted.
In conclusion, this Panel is of the opinion that the Complaint was originally filed against the valid Respondent – Respondent No. 1 – and the amended Complaint identified a valid second Respondent – Respondent No. 2 – that will be treated as the substantive Respondent in the present case. B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i) the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the right holder of the trademark LOCTITE validly registered in numerous countries, among which is found the word-mark LOCTITE No. 725497 and No. 952639, respectively filed with the USPTO on January 9, 1961 and October 5, 1971 and registered on December 26, 1961 and February 6, 1973, validly renewed since then. The Complainant is thus the right holder of a valid trademark as required by the Policy, paragraph 4(a)(i).
The disputed domain name is almost identical to the Complainant's registered trademark. As stated by numerous learned Panelists before, the addition of the gTLD suffix “.com” is not relevant for the analysis of the identity. In the present case, the insertion of the letter “k” just before the letter “t” in the word “loctite” does not exclude the similarity between the disputed domain name and the Complainant's trademark. On the contrary, the two words remain phonetically identical and visually highly similar, making the domain name quasi identical to the Complainant's trademark.
Furthermore, the only difference between the disputed domain name and the LOCTITE trademark constitutes a purposeful misspelling, a situation commonly known as “typo-squatting” (see Backstreet Productions, Inc. v. John Zuccarini, Cupcake Party, Cupcake Real Video, Cupcake-show and Cupcake-First Patrol, WIPO Case No. D2001-0654, Research in Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320) and where the confusing similarity can hardly be denied.
The disputed domain name being confusingly similar to the Complainant's registered trademark, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied. C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require the complainant to prove a negative fact, a difficult, if not impossible, task”. Thus, since this decision, a consensual view has been developed by the UDRP panels that it is deemed sufficient for the complainant to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once a prima facie case has been made, it is the respondent's burden to prove the contrary (see e.g. paragraph 2.2 of the WIPO overview of WIPO Panel views on Selected UDRP Questions and Cases).
In the present case, the Panel finds that the Complainant has made a prima facie case that the Respondents have neither rights nor legitimate interests in the domain name. First, the Panel is of the opinion, based upon the evidence brought by the Complainant that it has never granted any license, nor right to use its registered trademark to the Respondents, nor did it have any relationship of any nature with the Respondents. The Panel's opinion is reinforced by the fact that the Complainant did not know of the identity of the underlying registrant at the time it filed its Complaint with the Center.
Additionally, the use of the disputed domain name by the Respondents as a “parking page” featuring sponsored links, many of which are links for the Complainant's direct competitors' websites, adds weight to the Complainant's contention that the Respondents wished to make commercial gains through advertising revenues by using the Complainant's goodwill and reputation.
Respondents did not file a response. More specifically, Respondents do not demonstrate that:
(i) before any notice to it of the dispute, they used or made 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) either of the Respondents is commonly known by the domain name; or
(iii) either of the Respondents is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Consequently, the Panel considers the Policy, paragraph 4(a)(ii) to be satisfied. D. Registered and Used in Bad Faith
For the Complaint to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith, according to paragraph 4(a)(iii) of the Policy.
To have registered the disputed domain name in bad faith, the Respondents must first have been aware of the existence of the Complainant. The Panel finds that is the case here.
The registered trademark to which the disputed domain name is confusingly similar is a widely renown trademark in the field of industrial adhesive and is well known by consumers. By using the disputed domain name as a parking page featuring sponsored advertising links, the Respondents purposefully hoped to attract Internet users who have mistakenly misspelled the Complainant's registered trademark. As already stated in previous UDRP decisions, the fact to take advantage of consumers' known disposition to misspell domain names to divert Internet traffic to a respondent's website, thereby earning substantial revenue from advertisers, tends to indicate the bad faith of the respondent in the use and registration of the disputed domain name (see Encyclopaedia Britannica v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330).
Furthermore, as evidenced by the Complainant in its amended Complaint, the fact that both Respondents have registered other domain names containing a purposeful misspelling clearly conflicting with the rights of third parties (see for example randstadt, craigslist) and that other UDRP proceedings have in the past been initiated against them (see Association Robert Mazars v. Private Whois Service c/o mazarsrevengecom,WIPO Case No. D2009-0183) clearly show a general pattern of misuse of famous trademarks for illegitimate purposes (see Yahoo!, Inc. v. Cupcakes Patrol and John Zuccarini, WIPO Case No. D2000-0928).
Finally, the use of privacy services by Respondent No. 2 to conceal its identity and therefore avoid or encumber any potential enforcement proceedings is an additional indication of its bad faith. Furthermore, the Respondent No. 2 in this Panel's opinion clearly had the intention to use the Complainant's reputation to make commercial gain through sponsored links displaying products of the Complainant's competitors.
The Panel therefore finds the Policy, paragraph 4(a)(iii) to be satisfied here. 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.
Philippe Gilliéron
Sole Panelist
Dated: March 29, 2010
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