The Complainant is Reckitt Benckiser Plc of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Rominvent S.A., Romania.
The Respondent is Dullux Srl of Timis, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with RNC.ro. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2011. On May 9, 2011, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the disputed domain name. On May 10, 2011, RNC.ro 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2011.
The Center appointed Mihaela Maravela as the sole panelist in this matter on June 24, 2011. 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.
On July 11, 2011 the Panel issued the Procedural Order no. 1, by which the Complainant was requested to:
Provide evidence of ownership of trademark rights in the mark CILLIT BANG under paragraph 4(a)(i) of the UDRP;
Or
Indicate whether the Complainant has used or is using the trademark CILLIT BANG and / or why the Complainant believes that it may derive rights from the registrations issued in the name of Reckitt Benckiser NV.
The Complainant sent a Response to the Procedural Order No. 1 on July 13, 2011, within the extended deadline imparted by the Panel. The Respondent did not file any observations on the Complainant’s response to the Procedural Order No. 1 within the deadline imparted by the Panel or thereafter. Language of proceedings
As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
RNC.ro has informed the Center that the language of the relevant registration agreement is Romanian.
As the Complaint had been submitted in English, on May 9, 2011, the Center forwarded a notice to the parties stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be in English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings. On May 11, 2011 the Complainant filed a request that the language of the proceedings be English.
Although properly notified, at the contact details provided by the registrar, in both languages on the commencement of the proceedings, the Respondent chose not to object the Complainant’s request that English be the language of the proceedings and not to participate in the proceedings.
In accordance with previous decisions (see e.g., DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003; Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL,WIPO Case No. DRO2006-0004; Alphyra Romania S.A. v. Redpoint Software Impex S.R.L.,WIPO Case No. DRO2008-0001; Advanced Micro Devices, Inc. v. Softconcept SRL, Suciu Alexandru,WIPO Case No. DRO2008-0002; SC Tip Top Food Industry SRL v. S.C. WEB4COMM SRL/ web4COMM S.R.L. Romania,WIPO Case No. DRO2008-0013; Symantec Corporation v. SC SOFTCONCEPT S.R.L.,WIPO Case No. DRO2008-0014), the Panel determines according to the Rules under paragraph 11(a) that the language of these proceedings be English for the following reasons:
- The Center sent all the communications in both languages, Romanian and English. Further, the Center specifically advised the Respondent that if no objections were filed until May 16, 2011 it shall be proceeded on the basis that the Respondent had no objections to the Complainant’s request that English be the language of the proceedings;
- Despite the fact of being properly notified, the Respondent did not provide any Response and did not file any objection to English as the language of these proceedings;
- The Respondent contacted the Complainant’s representative in English language prior to the filing of the present Complaint. 4. Factual Background
The Complainant in this administrative proceeding is Reckitt Benckiser Plc, a leading worldwide manufacturer and supplier of household, healthcare and personal care and pharmaceutical products. The Complainant or companies in its group of companies is the owner of many well-known brands in the household cleaning, pharmaceutical and consumer healthcare markets, including LYSOL, HARPIC, DETTOL, AIRWICK, VANISH, VEET, CALGONIT, CILLIT BANG. Through the network of companies within the Complainant’s corporate group the Complainant supplies its products to nearly 200 countries and has operations in over 60 countries in Europe, North and South America, Asia, Australia, the Middle east and North and South America.
The Respondent in this administrative proceeding is Dullux Srl and the disputed domain name was registered on February 1, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that it holds international and community trademarks which include the verbal elements CILLIT BANG, such as the community registration No. 005139084 and 005138961 for CILLIT BANG or No. 004658035 for the community trademark CILLIT BANG UNIVERSAL STAIN & DRAIN. The Respondent’s domain name is identical to the Complainant’s CILLIT BANG trademark.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the name Cillit Bang. The name “Cillit Bang” is clearly associated with the Complainant and consumers have an expectation that the disputed domain name will direct them to a website controlled or authorized by the Complainant.
Also, the Complainant contends that the disputed domain name was registered and is being used in bad faith because it is implausible that the Respondent was not aware of the Complainant’s trademark CILLIT BANG when he registered the disputed domain name, and that the Respondent has not used or undertaken any demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The Complainant also argues that the effect of the Respondent’s registration of the disputed domain name was to prevent the Complainant reflecting its CILLIT BANG trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct, registering domain names corresponding to well-known trademarks of the Complainant. Also, the Respondent offered to sell the disputed domain name to the Complainant for the amount of Euro 1,650 and after receiving a counteroffer from the Complainant, for the amount of Euro 1,200. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, in the Procedural Order No. 1 the Panel requested the Complainant to provide evidence of trademark rights in the mark CILLIT BANG under paragraph 4(a)(i) of the UDRP or indicate whether the Complainant has used or is using the trademark CILLIT BANG and / or why the Complainant believes that it may derive rights from the registrations issued in the name of Reckitt Benckiser NV.
In its response to the Procedural Order No. 1, the Complainant alleged that Reckitt Benckiser N.V. is part of the Reckitt Benckiser group of companies and is a wholly owned subsidiary of Reckit Benckiser Plc. Having this in mind, the Complainant claims that it may derive rights from the registrations issued in the name of Reckitt Benckiser N.V. It is understood that the Complainant ultimately argues that any use of the trademark by a subsidiary should be considered as use by the Complainant.
The Complainant did not submit any document evidencing that it wholly owns the holder of the trademark, except for a statement signed by a person which appears to hold the position of Head of Trademarks of Reckitt Benckiser N.V. However, as other panels have held, in view of the fact that the Complainant and the holder of the trademark have the same name (except for the mention of the company’s legal form, depending on the applicable jurisdiction) and that the Respondent has not contested this assertion, the Panelist sees no reason to doubt this allegation and therefore admits it as true (see Reckitt Benckiser plc v. Noah, Madoud Bob, a/k/a Alfred Renud a/k/a WeiBo Chen a/k/a Bruno Da Silva a/k/a Mr. Ducon, WIPO Case No. D2002-0293).
The Policy requires that the domain name be identical or confusingly similar to a trademark in which the complainant has rights. It is not required that the complainant be the registered owner of the trademark at issue. In accordance with the consensus view of WIPO UDRP panelists, “In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, second edition, Section 1.8.). Therefore, if, as in the present case, the Complainant controls the registered owner of the trademark, it is justified to allow it to file a complaint under the Policy. Indeed, in such a situation, it must be considered that the Complainant has rights in the trademark, since it would be able to control its ownership and for example have it transferred to it if it wanted to (see Reckitt Benckiser plc v. Noah, Madoud Bob, a/k/a Alfred Renud a/k/a WeiBo Chen a/k/a Bruno Da Silva a/k/a Mr. Ducon, WIPO Case No. D2002-0293).
As regards the question of resemblance for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name fully incorporates the prior trademark CILLIT BANG on which the Complainant has proven rights. It is well accepted that a country-code top-level domain, is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (See, e.g. VAT Holding AG v. V,WIPO Case No. D2000-0607; Billa Aktiengesellschaft v. Ganea Nicolae,WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001).
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by a panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 consensus view of WIPO UDRP panelists concerning the burden of establishing lack of rights or legitimate interests in respect of a domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights and legitimate interests in the domain name. If the respondent fails to come forwards with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. (See, e.g., Barbara Brennan Inc. v. Texas International Property Associates,WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210). The Complainant alleges that the Respondent’s only reason in registering and using the disputed domain name is to prevent the Complainant to reflect its CILLIT BANG trademark in a corresponding domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.
In this case because the disputed domain name resolves to a landing page at which competitive services are offered, the Complainant has established that the Respondent’s use of this domain name is in bad faith. The disputed domain name appears designed to attract Internet users who are looking for the Complainant’s goods, appears to cause confusion with the Complainant’s marks and websites, appears to disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites, and does all of these things for commercial gain because the Respondent profits from the pay per click revenue generated by these websites. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The Respondent is ultimately responsible for the content of the website within its control. As such, the Respondent could not avoid responsibility for the automatic generation of links at the subject website. (For examples of recent findings along these lines, in connection with a portal website, see Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; State of Florida, Florida Department of Management Services v. Bent Pettersen,WIPO Case No. D2008-0039; Owens Corning v. NA,WIPO Case No. D2007-1143).
Also, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name and has not contested any of the allegations made by the Complainant. In the Panel’s view, any use of the disputed domain name would likely lead the public to the conclusion that the disputed domain name and its connecting websites, are associated with the Complainant.
For all the reasons, and because the Respondent first contacted the Complainant’s representative with an offer to sell the disputed domain name, the Panel concludes that the Respondent must have been aware of the Complainant’s trademarks at the time it registered the disputed domain name.
Accordingly, and because the Respondent has also used the disputed domain name in bad faith to attract Internet users to its pay-per-click landing page, and offered to sell the disputed domain name to the Complainant for an amount exceeding the registration costs, the Panel finds that the Complainant has satisfied its burden of proving that the Respondent registered and used the disputed domain name in bad faith. Also, it appears that the Respondent registered other trademarks of the Complainant as domain names but failed to pay for the registration fees or sold them to the Complainant for a sum exceeding out-of-the pocket expenses. 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 the Complainant.
Mihaela Maravela
Sole Panelist
Dated: July 22, 2011
Full & Egal Universal Law Academy