ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Colgate-Palmolive Company v. Rahul Kumar, Rahul Kumar Case No. D2023-5219 1. The Parties The Complainant is Colgate-Palmolive Company, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States. The Respondent is Rahul Kumar, Rahul Kumar, India. 2. The Domain Name and Registrar The disputed domain name is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2023. On December 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2023, 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 (Domain Administrator) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2023, 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 the same day. 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 December 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2024.
page 2 The Center appointed Tommaso La Scala as the sole panelist in this matter on January 17, 2024. 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 a well-known United States multinational consumer products company, specialized in the production, distribution, and provision of household, health care, personal care, and veterinary products, which employs over 33,000 people in over 100 countries and territories around the globe and with global sales in 2022 of over USD 17.9 billion. The COLGATE trademark has been in use in the United States for more than 200 years and has been registered both at a national and international level worldwide, including in the United States, among others under Registration Nos. - 60,595 (granted on Feb. 12,1907, and duly renewed); - 227,647 (granted on May 10,1927, and duly renewed); - 427,475 (granted on February 11,1947, and duly renewed). The Complainant also owns, among others, the domain name , registered in 1995 and connected to a website with averages almost 1.7 million unique visitors per month. The disputed domain name has been registered on October 15, 2023, and currently redirects to a blocked inactive webpage. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant is the owner of a considerable amount of trademark registrations in dozens of jurisdictions worldwide that consist of or include the mark COLGATE. The disputed domain name fully incorporates the well-known COLGATE trademark and is therefore confusingly similar to the Complainant’s mark. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant confirms it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the COLGATE trademark in any manner. The disputed domain name was registered in bad faith, since given the renown of the COLGATE trademark there is no possible use in good faith that the Respondent could make of it. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has established rights to the COLGATE mark, as demonstrated by its registrations and widespread continued use. The disputed domain name is confusingly similar to the Complainant’s well-known mark because it contains the entirety of the Complainant’s mark with the addition of terms “cge-67” and “wshteak”. Numerous UDRP panels deciding cases under the Policy have held that the incorporation of a complainant’s mark in full in a disputed domain name is a compelling factor in favor of a finding of confusing similarity, and that the addition of other generic terms does not prevent such finding. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Complainant has shown that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Rather, the Respondent is simply passively holding the disputed domain name. The Respondent is not using the disputed domain name in a noncommercial manner without intent for commercial gain and did not even reply to the Complainant’s allegations; therefore, the Respondent cannot establish rights or legitimate interests under the Policy. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
page 4 Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The disputed domain name was registered decades after the Complainant first started using its COLGATE trademark and the Complainant’s evidence establishes extensive global use of its mark as at the date of registration of the disputed domain name. Given the confusing similarity between the latter and the Complainant’s mark, it is clear that the Respondent was aware of the Complainant and its COLGATE mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel similarly finds the Respondent’s registration of the disputed domain name to have been, more likely than not, in bad faith. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. There is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, either through service of a response to these proceedings or otherwise. These factors, along with the degree of distinctiveness or reputation of the Complainant’s COLGATE mark and the Respondent’s concealing its identity or use of false contact details (considering that the courier sent by the Center to the Respondent seems to have been not delivered), collectively point to bad faith registration and (passive) use of the disputed domain name. The Panel therefore finds the Respondent to have 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. /Tommaso La Scala/ Tommaso La Scala Sole Panelist Date: January 31, 2024
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