The Complainant is LRC Products Limited of Slough, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Lewis Silkin LLP, UK.
The Respondent is Domain Admin, Privacy Protection INC d/b/a PrivacyP of Queensland, Australia / Tamerlan of Vladikavkaz, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Cloud Group Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2014. On February 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2014, 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 March 3, 2014, 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 March 4, 2014.
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 March 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Center received several informal email communications from the Respondent in English and Russian between March 3 and March 27, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 27, 2014.
The Center appointed Assen Alexiev, Ian Lowe and Olga Zalomiy as panelists in this matter on April 25, 2014. The Panel finds that it was properly constituted. Each member of 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.
With its communication of March 3, 2014, the Respondent alleged not to understand English and requested that all correspondence be sent to it in the Russian language. The Panel notes that under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement in the present case is English, as confirmed by the Registrar. The Respondent has not brought to the attention of the Panel any circumstances that may warrant the use of a different language and with its communications to the Center has shown that it understands the contentions of the Complainant and the requirements of the Policy. Therefore, the Panel decides that the administrative proceeding shall take place in the English language.
With its communication to the Center of March 27, 2014, the Respondent has referred to paragraph 17 of the Rules and has repeated that it is ready to transfer the disputed domain name to the Complainant, as previously declared on March 5, 2014. In this regard, the Panel notes that with its communication of March 5, 2014, the Complainant has confirmed that it will not request a stay of the proceedings to explore the possibility for settlement of the dispute, but has requested their continuation. In this situation, the Panel finds that there are no grounds for termination of the proceedings and the dispute has to be resolved through a decision of the Panel. 4. Factual Background
The Complainant manufactures the Durex range of condoms and other associated Durex products such as massage gels, lubricants and sex toys. Since 2010, it has been a member of the Reckitt Benckiser group of companies, which together comprise a leading manufacturer and worldwide supplier of household, healthcare, personal care and pharmaceutical products.
The Complainant is the owner of numerous registered trademarks around the world for DUREX, including the following registrations (the "DUREX Trademarks"):
- the word trademark DUREX - a Community trademark with registration number 000200923, registered on December 8, 1999 for goods in International Classes 5 and 10;
- the word trademark DUREX - a Community trademark with registration number 000200907, registered on December 16, 1999 for goods and services in International Classes 1, 5, 9, 10, 16, 17, 21, 25, 37, 41 and 42;
- the word trademark DUREX - a Community trademark with registration number 002641850, registered on September 8, 2003, for goods in International Classes 18, 25 and 28;
- the word trademark DUREX - a United States trademark with registration number 2584678, registered on June 25, 2002 for goods in International Class 5; and
- the word trademark DUREX - a Russian Federation trademark with registration number 42323, registered on August 16, 1971 for goods in International Classes 5 and 10.
The disputed domain name was registered on December 8, 2013. 5. Parties' Contentions A. Complainant
The Complainant submits that its DUREX range of condoms is currently the most popular range of condoms in the world, accounting for over 30% of worldwide sales of branded condoms. During each of the financial years 2010-2012, the Complainant's sales of DUREX products were in excess of GBP 1,000,000,000 worldwide, including GBP 500,000,000 in Europe. As a result, the Complainant's DUREX Trademarks have accrued substantial goodwill particularly related to sexual health and enjoyment.
According to the Complainant, the disputed domain name is identical to the DUREX trademarks of the Complainant. The disputed domain name comprises the element DUREX, which is identical to the DUREX Trademarks, and the ".info" generic Top-Level Domain ("gTLD").
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the word "durex" is not a natural or ordinary word in the English language or in any other language. It is an artificial word created as an acronym for Durability, Reliability and Excellence.
The Complainant states that the disputed domain name was registered and is being used in bad faith. The disputed domain name is identical to the DUREX trademarks and is likely to create an immediate association with the Complainant's Durex products. According to the Complainant, the Registrant knew or should have known the DUREX trademarks and products, so the registration of the disputed domain name was made with bad faith intent. A good faith registrant should and would have carried out a search engine search to establish that the domain name intended to be registered did not cut across the rights of another.
The Complainant points out that the Respondent uses the disputed domain name to refer web traffic to third party websites which purport to offer the arranging of sexual relationships and include explicit pornographic imagery. The Complainant is unaware whether such referrals are made for money or whether the Respondent is the proprietor of or linked to the proprietors of those websites. In either event, such use of the disputed domain name is an attempt by the Respondent to attract for commercial gain Internet users to third party websites by creating a likelihood of confusion with the Complainant's DUREX trademarks as to the source, sponsorship, affiliation, or endorsement of those websites.
The Complainant also submits that the Respondent is tarnishing the Complainant's DUREX trademarks and goodwill in relation to DUREX by linking the disputed domain name to third party websites displaying explicit pornographic content. The Complainant is engaged in various promotional activities to promote sexual openness and sexual freedom amongst consumers in general, their brand message being to love sex safely. The Durex brand whilst sexually open in its advertising is very careful not to be explicit so as not to alienate sections of the general public and to encourage some more conservative members of the general public to be more open about sex. Associating the Durex brand with websites with explicit content is damaging because it is inconsistent with the approach and content of the Complainant's marketing and has the potential to alienate wide sections of the general public by shocking them. Those who look for the Complainant's Durex products might think that there is some sort of endorsement by the Complainant of the activity advertised by the explicit third party websites or make a subsequent negative judgment of the Complainant and its Durex products.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent has sent several informal communications to the Center but has not submitted a formal Response.
The Respondent explains its actions by pointing out that the disputed domain name was available for registration and could be registered by anyone. The Respondent alleges that it did not intend to violate anyone's rights when registering the disputed domain name and that it has not received any notices of violation of anyone's rights. The Respondent claims not to have known that "durex" was registered as a trademark and that the disputed domain name violates the rights of others.
The Respondent alleges that it has registered the disputed domain name for a website dedicated to homeless dogs.
Finally, the Respondent submits that it is ready to transfer the disputed domain name to the trademark owner. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name 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 disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
The Respondent has chosen not to submit a formal Response, and has instead made a series of informal statements sent to the Center in the course of the procedure. The Panel takes these statements into account in reaching its decision on the dispute. A. Identical or Confusingly Similar
The Complainant has provided information and evidence and has thus established its rights in the DUREX trademarks, registered in various territories around the world, including the Russian Federation, where the Respondent is located. The Respondent does not dispute the trademark rights of the Complainant.
It is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") such as the ".info" section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its "durex" section. This section is identical to the Complainant's DUREX trademarks.
For these reasons, the Panel finds that the disputed domain name is identical to the DUREX trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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."
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the word "durex" is an artificial word, and is not a natural or ordinary word in the English language or in any other language. The Complainant also contends that the Respondent attempts to exploit the reputation of the Complainant's DUREX trademarks for its own commercial gain by misleading and diverting Internet users from the Complainant to third parties' websites with explicit pornographic content. Thus, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not expressly denied any of the contentions of the Complainant and has not brought to the Panel's attention any circumstances that could give rise to rights or legitimate interests in the disputed domain name. The Respondent alleges that the disputed domain name was registered for a website dedicated to homeless dogs, but provides no evidence for the existence of such a website and does not specify what connection there might be between the disputed domain name and the theme or content of such a website. The Respondent has expressly stated its readiness to surrender the disputed domain name to the Complainant.
Taking all the above into account, the Panel concludes that the Respondent has not rebutted the prima facie case made by the Complainant for the lack of rights and legitimate interests of the Respondent in the disputed domain name. The Panel accepts the Complainant's contention that "durex" is an invented word that does not exist in English or in any other language, and the Respondent has not provided any convincing explanation for its choice of a domain name. The Panel sees no connection between the disputed domain name and the alleged website for homeless dogs. By not denying any of the contentions of the Complainant and not bringing forward any arguments in their rebuttal, and by agreeing to the transfer of the disputed domain name to the Complainant, the Respondent has effectively acknowledged that it has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent has no rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring its registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's 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.
In the present case, the Complainant's products are extensively sold worldwide. For many years the Complainant has maintained trademark registrations for DUREX in a large number of jurisdictions, including the Russian Federation. The Respondent claims that it was unaware of the Complainant's DUREX Trademarks when registering the disputed domain name for an alleged website for homeless dogs. At the same time, the Respondent does not deny that the disputed domain name has been linked to third party websites with explicit pornographic content.
The Respondent has provided no explanation how "durex" is connected to the intended purpose for its purported website, and the Panel is not aware of any connection between the disputed domain name and homeless dogs. The word "durex" does not appear to be a natural word in English or in Russian - the language of the Russian Federation, where the Respondent resides. The Panel is of the view that this word refers only to the Complainant's Durex condoms and associated products, and that it is more likely than not that the Respondent knew of the Complainant's Durex brand and had it in mind when it registered the disputed domain name. Indeed, the Panel finds no other explanation for the choice of domain name made by the Respondent, especially in view of its use discussed below. In this situation, the Panel concludes that the disputed domain name was registered in bad faith.
The Complainant contends that the Respondent has used the disputed domain name for a portal to other websites with pornographic content for commercial gain. Currently, the website at the disputed domain name does not refer users to any third party websites. Instead, it displays a form in the Russian language for communication with the administrator of the disputed domain name, and does not offer the disputed domain name for sale. Due to the use of "robots.txt" at the website associated to the disputed domain name, it is difficult to say whether this website used to refer to the websites contended by the Complainant. However, the Respondent does not dispute this contention of the Complainant. To the Panel, an attempt to attract Internet users to sexually explicit websites by using a well-known trademark for condoms does not seem illogical. Therefore, the Panel finds it more likely that the Complainant's allegations are true, and the disputed domain name was linked to third party websites offering explicit sexual content. In the Panel's view, such use of the disputed domain name, identical to the Complainant's DUREX trademarks, was made in bad faith, in an intentional attempt to attract, for commercial gain, Internet users to third party websites, by creating a likelihood of confusion with the Complainant's DUREX trademarks as to the source, sponsorship, affiliation, or endorsement of these websites and of the services offered there.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 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.
Assen Alexiev
Presiding Panelist
Ian Lowe
Panelist
Olga Zalomiy
Panelist
Date: May 9, 2014
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