The Complainant is Edgewell Personal Care Brands, LLC of Shelton, Connecticut, United States of America (“United States” or “US”), represented by Thompson Coburn LLP, United States.
The Respondent is Shimir Satyendra of Gurgaon, India. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2016, 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 July 29, 2016 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 1, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2016.
The Center appointed Marilena Comanescu as the sole panelist in this matter on August 26, 2016. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is a US company providing personal care products in numerous countries worldwide. The BINKY mark is a source identifier since 1935, being first time registered as a mark in the US back in 1936.
The Complainant and/or its corporate affiliates hold registrations for the trademark BINKY in numerous countries worldwide, such as the US registration no. 334946 for the word mark BINKY registered since May 19, 1936 for goods such as teething rings and pacifiers.
The disputed domain name was registered on August 16, 2015 and, at the time of the Complaint filing, it was used to redirect Internet users to a pay-per-click website displaying links to the Complainant’s competitors’ websites. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or at least confusingly similar to its world-renowned trademark BINKY, that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds trademark registrations for the BINKY trademark for eight decades. The disputed domain name incorporates the Complainant’s trademark in its entirety.
Further, it is well established in decisions under the UDRP that indicators for generic Top-Level Domain (“gTLDs”) (e.g., “.xyz”, “.com”, “.net”, “.org”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is virtually identical to the Complainant’s trademark BINKY, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for BINKY worldwide and has been using it in commerce for eighty years in connection with baby goods. Searches made in the trademark registries or simply using the Internet tools would lead to results for the Complainant’s BINKY mark and goods.
The Respondent registered the disputed domain name reproducing the Complainant’s mark in 2015 and failed to provide any arguments or reasons supporting its choice in this name.
For the above, the Panel finds that the disputed domain name was registered in bad faith, targeting the Complainant’s trademark.
Further, according to the case file evidence, at the time of the Complaint filing the disputed domain name was used for a pay-per-click (“PPC”) website, diverting Internet users to websites operated by the Complainant’s competitors. Thus, registering and using a domain name that reproduces without authorization a third party’s mark, using such domain name for a farm webpage which promotes competing goods to those offered by the Complainant under its mark; all such facts divert Internet users searching for the Complainant to competitors’ websites, dilute the value of the mark BINKY, potentially generate unfair revenues for the Respondent and ultimately constitute bad faith under paragraph 4(b)(iv) of the Policy.
In a communication sent by the Registrar to the Center it is claimed that the Respondent has no control over the disputed domain name as this “is currently pointed to Namecheap’s (i.e., the Registrar) default parking page which uses an algorithm/commercial search engine to automatically generate advertising links. The parking page is neither owned by nor operated by the Respondent. The Respondent was not involved in the selection of these randomly generated advertising links.” It has been long established that domain name registrants are normally deemed responsible for the content appearing on the website at the disputed domain name, even if such registrant may not be exercising direct control over such content. See paragraph 3.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In following, the Panel finds that such commercial use satisfies paragraph 4(b)(iv) of the Policy. Moreover, even if the Panel was to disregard the PPC links generated, by the Registrar, treating the disputed domain name as in fact passively held by the Respondent, it is well established by the long line of cases starting with Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 that the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions and the passive holding of the disputed domain name does not prevent a finding of bad faith. See also paragraph 3.2 of theWIPO Overview 2.0.
The Respondent registered the disputed domain name using a privacy shield, provided inaccurate contact details and did not respond to the Complaint. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: September 7, 2016
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