The Complainant is LRC Products Limited, United Kingdom, represented by Studio Barbero S.p.A., Italy.
The Respondent is Imran H, Airnom, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2020. On August 18, 2020, the Center transmitted by email to the Registrar, Web Commerce Communications Limited dba WebNic.cc, a request for registrar verification in connection with the disputed domain name. On August 19, 2020, the Center received an email from Web Commerce Communications Limited dba WebNic.cc stating that the disputed domain name is currently managed by another Registrar, PDR Ltd. d/b/a PublicDomainRegistry.com. On August 25, 2020, the Center transmitted by email to the Registrar, PDR Ltd. d/b/a PublicDomainRegistry.com, a request for registrar verification in connection with the disputed domain name. On August 25, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on August 27, 2020 providing the new contact information of the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 27, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. The Center received an email communication from the Respondent on August 29, 2020. Accordingly, on September 18, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on September 25, 2020. 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 LRC Products Limited, The London Rubber Company, founded in 1915 and acquired in 2010 by one of the global leaders in consumer health, hygiene and home products, Reckitt Benckiser Group plc. The mark DUREX was registered in 1929, and in 1950 the Complainant released its first lubricated condom under this mark. Currently, DUREX products are sold in almost 200 countries worldwide and the Complainant is the market leader in approximately 40 countries. DUREX stands for the abbreviation of “durability, reliability and excellence”, it has been used for over 90 years, including in Pakistan, where the Respondent is located. The Complainant owns several registrations in different jurisdictions for the mark DUREX, including the following: -European Union Trade Mark Registration No. 000200923 for the word mark DUREX, filed on April 1, 1996 and registered on December 8, 1999 in classes 5 and 10, and -Pakistan Trademark Registration No. 7538 for the word mark DUREX, registered on August 10, 1949, in class 10. The Complainant also owns several domain names consisting of the mark DUREX, covering both generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), including The disputed domain name was registered by the Respondent on August 14, 2018 and has pointed to a website offering for sale purported DUREX products, condoms and lubricants with contraceptives and sex toys of Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant argues that the Respondent registered the disputed domain name on August 14, 2018, which entirely reproduces its DUREX trademark with the addition of the letters “pk”. According to the Complainant, the disputed domain name is confusingly similar to its trademark since the addition of the letters “pk” is insufficient to prevent user confusion. On the contrary, such addition is likely to reinforce the confusion as “pk” is an abbreviation for Pakistan, a country where DUREX products are sold and, therefore, Internet users may believe that the disputed domain name belongs to the Complainant offering for sale genuine DUREX products in Pakistan. The Complainant alleges that the word “durex” is not a natural or ordinary word in English or in any other language, that the Respondent is not an authorized agent or licensee of the Complainant, and that it is not commonly known by the disputed domain name. In addition, the Complainant mentions that the Respondent has not made a bona fide offering of goods or services and/or a legitimate noncommercial or fair use of the disputed domain name. Instead, the disputed domain name resolves to a website offering for sale purported DUREX products along with competitor’s items, without any explanation that the website was not related with the Complainant. Furthermore, the Respondent reproduces a logo “DurexPK Comdoms & Lubricants” as well as the misleading statement “Copyright 2020 © Durex PK” to create a likelihood of confusion among Internet users. The Complainant also informs that products offered on the Respondent’s website have been confirmed by its factory as counterfeit. The Complainant comments that it is impossible to say that the Respondent was unaware of the Complainant and the DUREX trademarks and that the Respondent has intentionally attempted to cause confusion with the DUREX trademarks by misleading Internet users to believe that its website belongs to or is associated with the Complainant for commercial gain, which demonstrates the Respondent’s bad faith. Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent On August 29, 2020, the Respondent sent an email to the Center informing the following: “Let's suspend the present dispute as I am ok to explore the settlement talks. Let me know how to proceed it further”. On August 31, 2020 the Center informed the Complainant that for settlement purposes it should submit a request for suspension. On September 1, 2020, the Complainant sent an email to the Center informing that it was not willing to suspend this proceeding to explore settlement options in this case. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The evidence presented in the Complaint demonstrates that the Complainant is the owner of numerous trademark registrations for DUREX around the world as well as several different domain names comprising the DUREX trademark. The disputed domain name comprises the Complainant’s trademark DUREX in its entirety. The addition of the letters “pk” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd,WIPO Case No. D2001-0110). As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark DUREX. There is no evidence that the Respondent is commonly known by the disputed domain name. There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was used in bad faith. The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy. For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The trademark DUREX is registered by the Complainant in several jurisdictions and has been used since a long time. Also, the Complainant registered many different domain names consisting of the mark DUREX. The Complainant’s DUREX mark is very distinctive, widely known and has a strong worldwide visibility. Thus, a domain name that reproduces such a well-known mark is already suggestive of the registrant’s bad faith. It is indeed not conceivable that the Respondent would not have been aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2018). In addition to the above, the Complainant showed evidence in the Complaint that the disputed domain name was used by the Respondent to mislead Internet users into believing that the corresponding website was related to or authorized by the Complainant, by advertising and offering products under the mark DUREX, infringing the Complainant’s rights, along with products of competitors. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant. This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark DUREX as described in paragraph 4(b)(iv) of the Policy has been demonstrated. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used 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 Mario Soerensen Garcia
Sole Panelist
Date: October 7, 2020
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