WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reckitt Benckiser Plc v. Dominios Internacionales Case No. DTV2009-0001 1. The Parties
The Complainant is Reckitt Benckiser Plc, Slough, United Kingdom of Great Britain and Northern Ireland (“UK”), represented internally.
The Respondent is Dominios Internacionales, Cayman Islands. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2009. On February 18, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On February 18, 2009, eNom 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 February 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 19, 2009.
The Center appointed Ian Blackshaw as the sole panelist in this matter on March 25, 2009. 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 leading worldwide manufacturer and supplier of household, healthcare and personal care and pharmaceutical products. The Complainant was formed in December 1999 through the merger of the long-standing UK Company Reckitt & Colman plc and the Dutch Group Benckiser N.V. The Panel has been provided with an extract from the UK Companies' House records showing the incorporation of Reckitt Benckiser Plc (a public limited company).
The Complainant is the owner of many well-known brands in the household cleaning, pharmaceutical and consumer healthcare markets, including LYSOL, HARPIC, DETTOL, AIRWICK, VANISH, VEET, GAVISCON, WOOLITE, FINISH, CALGONIT, CILLIT BANG, EASY OFF BAM, FRENCH'S, STREPSILS, NUROFEN and CLEARASIL. Through the network of companies within the Complainant's corporate group (all of which are referred to in this Complaint as “the Complainant”), the Complainant supplies its products to 180 countries and has operations in over 60 countries in Europe, North and South America, Asia, Australasia, the Middle East and North and South Africa. As a result, the Complainant has become well-known to the public and to members of the household, healthcare and personal care sectors as a leader in these fields.
The Complainant spends millions of dollars every year on media advertising and many of its brands have a significant worldwide reputation. For example, in 2007, the Complainant's net revenue was GBP5.3 Billion and in 2008, this rose to GBP 6.5 Billion. By way of example, in 2007, the Complainant was the fifth largest advertiser in the UK, with a total advertising spend of GBP 89.69 Million (GBP 87.63 Million of this was on television advertising).
Again, the Panel has been provided with materials showing information about the Complainant's business. In addition, the Panel has been provided with a print-out showing the results of Internet searches for the words “Reckitt Benckiser” using a number of different search engines, which show that the Complainant's corporate website is always listed in the top position. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions: A1. The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant is the registered proprietor of trade marks and applications for trade marks in a substantial number of jurisdictions for the trade mark RECKITT BENCKISER. Details of the extensive relevant trade mark registrations held by the Complainant worldwide have been provided to the Panel.
In addition to the registered rights detailed above, the Complainant also owns extensive worldwide unregistered (common law) rights in the name Reckitt Benckiser. Examples of the use made by the Complainant of the trade mark RECKITT BENCKISER include the Complainant's registration and continued use of the following domain names:
Details of the above domain names have also been provided to the Panel.
The Disputed Domain Name is confusingly similar to the trade mark RECKITT BENCKISER, as well as being confusingly similar to the Complainant's company name and domain names listed above. The Disputed Domain Name comprises the words, RECKITTT BENCKISER, together with the country-code Top Level Domain “.tv”.
The Disputed Domain Name strongly conveys that it is sponsored by, affiliated to or endorsed by the Complainant when this is not the case. A2. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
The Panel has been provided with a copy of the webpage obtained for the Disputed Domain Name as at February 17, 2009 and the Disputed Domain Name resolves to an inactive webpage.
The Respondent is not currently using or commonly known under, never has used or been commonly known under, and has no bona fide intent to use or be commonly known under the name “Reckitt Benckiser”, except in connection with the registration of the Disputed Domain Name.
The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain. Instead, the Respondent is using the Disputed Domain Name misleadingly to divert consumers or to tarnish the company name and trade mark, RECKITT BENCKISER. Indeed, the fact that the Disputed Domain Name currently resolves to an inactive webpage is indicative of the Respondent's desire to block the Disputed Domain Name from registration by the Complainant.
The Respondent, therefore, has no rights in respect of the Disputed Domain Name in accordance with Policy, paragraph 4(a)(ii) and Rules, paragraph 3(b)(ix)(2). A3. The domain name was registered and is being used in bad faith;
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))
The Respondent has no justification for registering a domain name which consists of the company name and trade mark RECKITT BENCKISER and the surrounding circumstances clearly indicate that the Disputed Domain Name was registered in bad faith.
The Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant (Policy, paragraph 4(b)(iii)). The Respondent must have been aware that registering a domain name incorporating a sign that is confusingly similar to the Complainant's trade marks would have the effect of preventing the Complainant from registering the Disputed Domain Name. As the Respondent has made no active use of the Disputed Domain Name, it is clear that the Respondent's primary reason for registering the Disputed Domain Name was to disrupt the business of the Complainant and to disparage and tarnish the Complainant and its trade marks.
Previous WIPO panels have ruled that, when taking into account all the circumstances of the case, the passive holding of a domain name can amount to the use of a domain name in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Complainant submits that the following factors show that the Respondent's passive holding of the Disputed Domain Name amounts to acting in bad faith:
The Complainant's company name and trade marks RECKITT BENCKISER have acquired a huge global reputation and are widely known.
The Respondent has made no attempt to use the Disputed Domain Name in connection with a bona fide offering of goods or services since registration of the Disputed Domain Name.
The Complainant submits that, in all the circumstances and for the reasons set out above, the Respondent's passive holding of the Disputed Domain Name amounts to the registration and use of a domain name in bad faith under Policy paragraph 4(a)(iii). B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the Disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant's favor solely based on the Respondent's default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the Disputed Domain Name incorporates in its entirety and without any modification the Complainant's widely-used trade mark RECKITT BENCKISER, which is also the Complainant's corporate business name and also the subject of other domain names owned by the Complainant as specified above.
The addition of the suffix “.tv” to the Disputed Domain Name does not affect the legal position for trade mark distinguishing purposes, as its presence in the Disputed Domain Name is for Internet registration purposes only. See Samsung Electronics Col. Ltd. v. Selim Civelek,WIPO Case No. DRO2008-0005 and the other UDRP cases cited therein.
In view of all this, the Panel finds that the Disputed Domain Name registered by the Respondent is identical to the Complainant's widely-used trade mark RECKITT BENCKISER, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and substantial goodwill through wide commercial use of the same prior to the registration of the Disputed Domain Name by the Respondent. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the Disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's widely-used trade mark RECKITT BENCKISER. Indeed, the adoption by the Respondent of a domain name identical to the Complainant's widely-used trade mark RECKITT BENCKISER inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below) and the possible consequential tarnishing of the Complainant's widely-used trade mark RECKITT BENCKISER and also the valuable goodwill that the Complainant has established in this trade mark through its commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the Disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the Disputed Domain Name, is trading on the Complainant's valuable goodwill established in its widely-used trade mark RECKITT BENCKISER.
Again, by registering and using the Disputed Domain Name incorporating without any modification the Complainant's widely-used trade mark RECKITT BENCKISER, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the Disputed Domain Name includes without any modification the widely-used trade mark RECKITT BENCKISER of the Complainant, held and widely-used by the Complainant prior to the date the Respondent registered the Disputed Domain Name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name would typically be used in good faith by the owner of the respective right or possibly by a licensee, neither of which is the situation in the present case.
Also, the Panel further agrees with the Complainant's contention, for the reasons stated above, that the passive holding of the Disputed Domain Name by the Respondent, and also in view of the Respondent's actual or imputed knowledge of the Complainant's rights in its widely-used trade mark RECKITT BENCKISER, which is incorporated in the Disputed Domain Name without any modification, is also a basis for establishing the existence of bad faith on the part of the Respondent. See Akbank Turk A.S. v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0572. The Panel would add that the passive holding by the Respondent of the Disputed Domain Name prevents the Complainant from using the Disputed Domain for its own commercial purposes and, therefore, has the effect of disrupting the business of the Complainant contrary to the provisions of Policy, paragraph 4(b)(iii). In the absence of any explanation to the contrary by the Respondent, of which none is forthcoming, the Panel draws the inference that this behaviour was intentional and is a further indication of bad faith on the part of the Respondent under the above-cited provisions. See the discussion and finding on this point of so-called “passive/inactive use” of a domain name generally in Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaV,WIPO Case No. D2005-0615 (“[…] in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behavior.”).
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular circumstances into account and for the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 7. Decision
For all 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.
Ian Blackshaw
Sole Panelist
Dated: March 31, 2009
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