Complainant is The Mentholatum Company of Orchard Park, New York, United States of America (“United States”), represented by Pearne & Gordon, LLP, United States.
Respondent is Caroline Brown of Salt Lake City, Utah, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 21, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 2019.
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 Respondent of the Complaint, and the proceedings commenced on March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 22, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 28, 2019. 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
Complainant has manufactured and sold skin salves and related products for more than a century. In 1905, Complainant registered with the United States Patent & Trademark Office (“USPTO”) the trademark MENTHOLATUM (Reg. No. 47483) in connection with salves for, among other things, “external application in the treatment of inflammations and eruptions of the skin and mucous membrane”. Complainant subsequently secured USPTO registrations for the mark MENTHOLATUM in 1993 (Reg. No. 1787807 for “medicated lip balms” used in commerce since 1948), 2000 (Reg. No. 2,732,863 for “non-medicated lip balm, skin moisturizer, sunscreen, topical deodorants,” etc. used in commerce since 2000).
Complainant also alleges that it has more than 750 trademarks worldwide for the mark MENTHOLATUM, either as a word mark or with other words, or in foreign characters, and sometimes with a logo, including more than 50 pending trademark applications or registrations in China. According to Complainant, the mark MENTHOLATUM “has achieved a well-known status in China.”
Complainant operates a commercial website at the address .
The Domain Name was registered on October 16, 2018. The Domain Name resolves to a website, apparently in Chinese characters, with the English text “Tips: The site is temporarily unavailable!” 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark MENTHOLATUM demonstrated by registration and use. The Panel concludes further that the Domain Name is identical to that mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain its bona fides in connection with the Domain Name. It is undisputed that Complainant never granted permission to Respondent to use the MENTHOLATUM trademark, as a domain name or otherwise. The mark MENTHOLATUM does not correspond to any dictionary word; it is a coined term (i.e., a fanciful trademark). On this record, the Panel cannot conceive of any legitimate reason why Respondent would have registered the Domain Name, which is identical to a longstanding and distinctive trademark used throughout the world.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant’s MENTHOLATUM mark in mind when registering the Domain Name, which is identical to Complainant’s mark. As noted above, the MENTHOLATUM mark reflects a coinage, not a dictionary word. It is also a long (ten-letter) mark, and therefore cannot be said to have been randomly chosen by Respondent because it is a short and catchy string of characters. Respondent has not disputed Complainant’s fairly plausible allegation that its MENTHOLATUM mark is well-known in China (recall that Respondent’s website appears to feature mostly Chinese characters).
The Panel also concludes on this record that Respondent is using the Domain Name in bad faith under the non-exclusive factors set forth in paragraph 4(b) of the Policy. To repeat, MENTHOLATUM is a lengthy, fanciful, distinctive mark used in commerce for more than a century, and the mark does not correspond to any dictionary word of which the Panel is aware. Respondent appears to have begun setting up a website, the precise nature of which is not explained in the Complaint and which is not known to this Panel. Respondent has not come forward to articulate some legitimate basis for using “mentholatum” as a Domain Name, such as noncommercial or fair use.
In sum, given the distinctiveness of the MENTHOLATUM mark, its widespread and longstanding use in the United States (where Respondent resides, despite the Chinese website content), the Panel’s finding (above) that Respondent probably targeted Complainant’s mark when registering the Domain Name which identically reproduces said mark, and Respondent’s failure to put into the record any reason for believing that her motives are legitimate, the Panel concludes that there is no conceivable basis on which Respondent is acting in good faith vis-à-vis this Domain Name, and thus finds that Respondent registered and uses the Domain Name in bad faith for purposes of the Policy.
Complainant has established 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: April 1, 2019
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