ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Henkel AG & Co. KGaA v. Ronald Mawejje, Polly Muya Case No. D2024-3268 1. The Parties The Complainant is Henkel AG & Co. KGaA, Germany, represented by CSC Digital Brand Services Group AB, Sweden. The Respondents are Ronald Mawejje, Uganda, and Polly Muya, Uganda. 2. The Domain Names and Registrar The disputed domain names , , and are registered with Cosmotown, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2024. On August 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 12, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on August 15, 2024. On August 13, 2024, the Center received an email from the Respondent (Ronald Mawejje), stating that it had registered the disputed domain names on behalf of clients, and offering that they be deleted or transferred. On August 14, 2024, the Center sent an email regarding the possible suspension of the proceeding for the purpose of settlement. However, the Complainant did not request the suspension of the proceeding. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2024. The Respondents did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process on September 6, 2024. The Center appointed Steven A. Maier as the sole panelist in this matter on September 10, 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. Consolidation of proceedings The Complainant requests that the proceedings in respect of all three disputed domain names be consolidated, on the basis that the disputed domain names are in common control. As disclosed by the Registrar, the disputed domain names and have the same registrant. The Complainant provides evidence (among other matters) that the disputed domain names and have been used for the purposes of the same email fraud, on which basis the Panel finds that those two disputed domain names are clearly in common control. The Panel finds further that consolidation would be fair and equitable to all parties, and therefore determines that the proceedings in respect of all three disputed domain names be consolidated (see section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The named Respondents are collectively referred to as the Respondent in the remainder of this decision. 5. Factual Background The Complainant is a supplier of industrial and consumer goods, including hair care products, laundry detergents, adhesives and sealants. It was founded in 1876, employs 47,750 individuals, with a presence in 124 countries, and reported sales of EUR 21.5 billion for the 2023 fiscal year. The Complainant is the owner of numerous registrations in various jurisdictions for the trademark HENKEL. Those registrations include, for example: - Germany trademark registration number 271795 for the word mark HENKEL, registered on September 13, 1921 in numerous International Classes; and - International trademark registration number 159194 for the word mark HENKEL, registered on January 28, 1952 in numerous International Classes. The Complainant operates official websites at locations including “www.henkel.com”. The disputed domain names were registered on the following dates: on January 24, 2024 on June 30, 2024 on July 29, 2024 There is no evidence that any of the disputed domain names has ever resolved to any active website. However, the Complainant provides evidence that the disputed domain names and have been used for the purpose of fraudulent emails, purporting to have been sent by the Complainant, as further discussed below.
page 3 6. Parties’ Contentions A. Complainant The Complainant submits that all of the disputed domain names are confusingly similar to its HENKEL trademark. It contends that all of the disputed domain names incorporate its HENKEL trademark in full, that the additional terms “chemical” and “chemicals” are both descriptive (and relate to the Complainant’s business), and that the additional term “ltd” is a common abbreviation for a limited liability company. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has no relationship with the Respondent and has never authorized it to use its HENKEL trademark, that the Respondent has not commonly been known by the disputed domain names, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names. The Complainant submits evidence that the Respondent has, in fact, used the disputed domain names and for the purpose of attempted email fraud. In particular, the Complainant exhibits emails sent from “procurement@henkelchemical.com” and “procurement@henkelchemicals.com” to potential suppliers. The emails purport to come from the Complainant’s subsidiary, Henkel South Africa (Pty.) Ltd, are signed by a named individual, who is in reality one of the Complainant’s Board members, and purport to place purchase orders. The Complainant submits that these emails represent “phishing”, aimed at obtaining financial information from the relevant third-party recipients. The Complainant submits that the disputed domains name were registered and are being used in bad faith. It contends that the Respondent was obviously aware of its internationally-known HENKEL trademark when it registered the disputed domain names, and did so in order to impersonate the Complainant, and one of its Board members in particular, for fraudulent purposes. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The email sent to the Center on August 13, 2024, from the Respondent (Ronald Mawejje) stated: “We are ICT, we register domain names on behalf of your clients. We don’t want to be involved in legal wars. Please delete the domain names or transfer them.” 7. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar All three of the disputed domain names include the Complainant’s trademark HENKEL in full. The Panel finds that none of the additional terms “chemical”, “chemicals” or “ltd” prevents the Complainant’s trademark from being recognizable within the disputed domain names, and finds therefore that all of the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
page 4 B. Rights or Legitimate Interests, and C. Registered and Used in Bad Faith The Panel finds it appropriate to consider the second and third elements under the Policy together in this case. The Complainant has established to the satisfaction of the Panel that the Respondent has used the disputed domain names and for the purposes of email fraud. Not only are those disputed domain names inherently misleading, as inevitably suggesting to Internet users that they are owned or operated by, or otherwise legitimately affiliated with, the Complainant, but the Respondent has expressly used them to impersonate the Complainant’s South African subsidiary company, and one of its Board members, in approaching and purporting to place orders with third-party suppliers. The use of a domain name to impersonate a trademark owner for the purpose of fraud can never give rise to rights or legitimate interests in respect of that domain name. Furthermore, it is clear in this case that the Respondent registered each of the disputed domain names in the knowledge of the Complainant’s HENKEL trademark and with the intention of using the disputed domain names to impersonate the Complainant for fraudulent purposes. While there is no evidence of a specific similar use having been made of the disputed domain name as the others, the Panel finds this disputed domain name also to be inherently misleading and is unable to conceive of any legitimate use that the Respondent could make of it. Moreover, in view of the Respondent’s use of the other two disputed domain names under its common control, the Panel has no hesitation in concluding that this disputed domain name also runs afoul of the requisite bad faith provisions of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names, and that all of the disputed domain names have been registered and are being used in bad faith. 8. 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 names , , and be transferred to the Complainant. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: September 18, 2024
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