The Complainant is Reynolds Consumer Products, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator, XZ.COM, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2021, 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 verified that 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 29, 2021. 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 BackgroundThe Complainant is an American producer and marketer of aluminum-based consumer products, founded in 2010. The most widely-known product of the Complainant is the “Reynolds Wrap”, an aluminum foil product introduced in 1947 by Reynolds Metals Company, a predecessor of the Complainant. The Complainant’s annual revenue for 2020 was around USD 3.26 billion.
The Complainant is the owner of several trade marks including:
- United States trade mark REYNOLDS no. 0748108 registered on April 16, 1963;
- United States trade mark REYNOLDS no. 0765763 registered on March 3, 1964
(hereinafter referred to as the “Trade Marks”).
The Trade Marks were originally registered in the name of Reynolds Metals Company, and have been transferred to the Complainant.
In January 2019, and again in January 2020, the Complainant released the “Reynolds Hunger Harness”, a pouch strapped to the users which enables them easy access to food and drink, for consumers to enjoy during the “Super Bowl” sport event. The introduction of the “Reynolds Hunger Harness” received wide media coverage.
The Domain Name was registered by the Respondent on February 23, 2021. The Domain Name resolves to a website which contains texts portraying adult-themed content and hosts links to websites with adult-themed and pornographic content.
The Complainant’s representative sent a cease-and-desist letter dated July 19, 2021, inter alia pointing out the Complainant’s rights to the Trade Marks and requesting transfer of the Domain Name, to which the Respondent did not respond.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the Domain Name is confusingly similar to the Trade Marks as it contains the element REYNOLDS in its entirety. According to the Complainant, the addition of the words “Hunger Harness” refers to the “Reynolds Hunger Harness” product marketed by the Complainant and therefore connoting the Complainant and the Trade Marks, while the generic Top-Level Domain (“gTLD”) “.com” should be disregarded as it is a standard registration requirement.
The Complainant states that to the best of its knowledge the Respondent does not have any trade mark rights to the term REYNOLDS nor any other terms used in the Domain Name and that the Respondent has not received a license from the Complainant to use a domain name featuring the Trade Marks. The Complainant further submits that the Respondent’s use of the Domain Name to attract and redirect traffic to third-party adult-themed websites is not a bona fide offering of goods or services. In addition, the Complainant contends that the Respondent is not commonly known by the REYNOLDS mark, nor is it offering any goods or services under that mark, so that there is no plausible reason for the registration and use of the Domain Name by the Respondent, other than to take advantage of the goodwill and valuable reputation of the Trade Marks. The Complainant also points out that the Respondent is likely to earn revenue from redirecting online users to various third-party websites, which therefore is not noncommercial or legitimate use of the Trade Marks.
According to the Complainant, the Domain Name has been registered in bad faith since the Respondent was or should have been aware of the Trade Marks when it registered the Domain Name. The Complainant points out that at the time of registration the oldest Trade Mark had already been registered for around 58 years and contends that if the Respondent had carried out a Google search prior to registration for the terms comprising the Domain Name, this would have listed the Trade Marks and the “Reynolds Hunger Harness” product as the top results. Furthermore, the Complainant submits that it previously used the Domain Name for its limited-edition “Reynolds Hunger Harness” product and that the Respondent has used a “drop-catching” service to register the Domain Name when the Complainant had abandoned use thereof.
The Complainant submits that the Respondent has used the Domain Name in bad faith, by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Trade Marks. This is particularly so, the Complainant contends, where the Respondent presumably attracts commercial gain through redirecting traffic to third-party websites with adult-themed content. The Complainant states that redirecting unsuspecting Internet users to adult content, where the Domain Name does not relate to such content, is bad faith use, which tarnishes the Trade Marks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the Trade Marks in its entirety. The addition of the terms “hungerharness” does not prevent a finding of confusing similarity. The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name and has not acquired trade mark rights in the Domain Name. In assessing whether the Respondent has a legitimate interest in the Domain Name, it should also be taken into account that (i) since the Domain Name incorporates the Trade Marks in their entirety and is confusingly similar to the Trade Marks, it carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1); and (ii) the Respondent has not provided evidence, nor is there any indication in the record of this case, that the Respondent is commonly known by the Domain Name. Furthermore, in view of the fact that the Domain Name resolves to a website providing adult-themed content and links to other websites with adult-themed or pornographic content, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name nor does such use constitute a bona fide offering of goods or services.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad FaithBased on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since
- the Respondent’s registration of the Domain Name occurred almost 58 years after the registration of the earliest of the Trade Marks;
- the use of a drop-catching service for the registration of the Domain Name, showing that the Respondent intended to obtain the Domain Name upon expiry of its registration;
- the incorporation of the entirety of the Trade Marks along with the terms “hungerharness”, which the Complainant had used and extensively marketed throughout 2019 and 2020 in connection with its “Reynolds Hunger Harness” product for the Super Bowl event;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the lack of a reaction to the cease and desist letter of July 19, 2021, and the lack of a formal Response of the Respondent;
- the use of the website to which the Domain Name resolves for (links to websites with) adult-themed content.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.
7. DecisionFor 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
Wolter Wefers Bettink
Sole Panelist
Date: November 12, 2021