The Complainant is Reckitt Benckiser Plc of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Lewis Silkin LLP, UK.
The First Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (the “USA”). The Second Respondent is Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. Together they are referred to as “the Respondents”. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2013, the Registrar 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. The Center sent an email communication to the Complainant on August 27, 2013 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 amended Complaint on August 30, 2013.
The Center verified that the Complaint together with the amended 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 September 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2013.
The Center appointed Jane Lambert as the sole panelist in this matter on October 9, 2013. 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 is a wellknown public company that is quoted on the London Stock Exchange. It came into being through the merger in 1999 of Reckitt & Colman Plc with Benckiser N.V. The company manufactures and distributes healthcare, household and personal care products in nearly 200 countries around the world. The consolidated turnover of the Complainant and its subsidiaries was GBP 9.5 billion in 2012 and its expenditure on advertising was GBP 75 million. Although those goods are sold under such brand names as Strepsils, Dettol and Veet the Complainant is nearly always identified as the supplier. By reason of such sales and advertising, the public associates the names Reckitt and Benckiser and the initials “RB” in relation to healthcare, household and domestic care products with the Complainant and none other.
One of the Complainant’s subsidiary companies has registered the words RECKITT BENCKISER as a Community trade mark for a wide range of goods in classes 1, 3, 5, 21, 35 and 42 under registration number 001416056 filed on December 8, 1999. There are corresponding registrations in the USA and many other countries.
A device mark that incorporates the letters “r” and “b” in a delta shape is also registered by the same subsidiary as a Community trade mark for a wide of goods in the classes 1, 3, 5, 11, 35, 36 and 42 filed on January 22, 2009 under registration number 007544811.
The disputed domain name was registered on April 28, 2013 under a privacy shield. The Registrar identified the Second Respondent as the proprietor of the registration. Save that its business address is a post office box in the Cayman Islands, very little is known of that Respondent.
The Panel keyed the disputed domain name into her browser on October 25, 2013, which led her to a landing page displaying the disputed domain name in bold white letters against a blue and black speckled banner. The remainder of the page was divided in two columns. The narrower column was headed “Related Links” which included a search box and a number of links labeled “Benckiser”, “Benkiser”, “Buy HP Laptop” and the like. The broader column advertised flights to Amsterdam by KLM, an energy comparison website and other goods and services. In the top right hand corner a red ribbon advertised a domain same with a telephone number in the USA. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name on the grounds that:
- it is confusingly similar to trade marks in which the Complainant has rights;
- the Respondents have no rights or legitimate interests in that domain name; and
- the disputed domain name was registered and is being used in bad faith.
As to the first ground the Complainant relies on the trade mark registrations mentioned above and its right to bring proceedings to restrain the use of the words “Reckitt” and “Benckiser” and the initials “RB” in relation to healthcare, household and personal care products. It notes not only that the disputed domain name incorporates the Complainant group’s word and initial marks but it is also identical to the sub-domain , of the Complainant. Upon seeing the disputed domain name, members of the public are likely to infer that it originates from or is otherwise associated with the Complainant,
As to the second ground, the Complainant claims that the Respondents are not commonly known by the names “Reckitt” or “Benckiser” or the initials “RB” and appear to have no intention of using those signs except in relation to the disputed domain name.
As to the third ground, the Complainant submits that its corporate name and initials and trademarks are so well-known that the Respondents could not possibly have been unaware of them. The Complainant further claims that the ribbon advertising the disputed domain name for sale on the Respondents’ landing page clearly indicates an intention to ransom the disputed domain name to the Complainant or perhaps to a competitor at a profit. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The agreement by which the disputed domain name was registered incorporated paragraph 4(a) of the Policy which provides:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Complainant can succeed if, and only if, the Panel is satisfied that each and every one of those probanda is established. A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The disputed domain name incorporates the initials “rb” which is registered as a Community trade mark under registration number 007544811 and the sign RECKITT BENCKISER which is registered as a Community trade mark under registration number 001416056. A significant proportion of the public wishing to visit the Complainant’s website are likely to find themselves on the Respondents’ landing page either because they have an imperfect recollection of the Complainant’s domain name or because that is where their search engine or browser leads them if they key in any of those names and initials in any combination. B. Rights or Legitimate Interests
The Panel is satisfied that the second element is present.
The Complainant says that there is no evidence that the Respondents have ever been known by any of the signs that comprise the disputed domain name and that they have never used and has no intention to use such signs. Given the Complainant’s reputation and goodwill in relation to those signs and the likelihood that the Complainant’s marks have a reputation in the European Union it is difficult to see how they could be used lawfully in any EU member State.
Further, paragraph 4(c) of the Policy lists a number of circumstances which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to a disputed domain name for the purposes of paragraph 4(a)(ii). This paragraph provided an opportunity to the Respondents to prove that they had rights or legitimate interests in the disputed domain name. By not responding to the Complaint, the Respondents failed to take advantage of that opportunity. C. Registered and Used in Bad Faith
The Panel is satisfied that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is provided by sub-paragraph (iv):
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel has already found that the disputed domain name is confusingly similar to two of the Complainant’s marks and that members of the public are likely to find themselves on the Second Respondent’s landing page by keying in the disputed domain name or any of its components into a browser or search engine. Once there, at least some of them will click some of the sponsored links or searches which will generate click through revenue for the Respondent from the advertiser. There is therefore an attempt to attract Internet users to the landing page from which there is likely to be commercial gain. That falls full square within the language of paragraph 4(b)(iv) of the Policy and therefore constitutes evidence of registration and use in bad faith.
Another of the circumstances constituting evidence of registration and use in bad faith is provided by sub-paragraph (i):
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
The appearance of the ribbon advertising the disputed domain name for sale on the landing page is also a relevant consideration for determining whether the disputed domain name was registered and is being used in bad faith though not conclusive. Having found for the Complainant under paragraph 4(b)(iv) of the Policy it is unnecessary to consider paragraph 4(b)(i) further. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: October 25, 2013
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