Henkel AG & Co. KGaA v mesut erdogan

WIPO Case No. D2024-4412

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Henkel AG & Co. KGaA v. mesut erdogan

Case No. D2024-4412

1. The Parties

The Complainant is Henkel AG & Co. KGaA, Germany, represented by CSC Digital Brand Services Group

AB, Sweden.

The Respondent is mesut erdogan, Türkiye.

2. The Domain Names and Registrar

The disputed domain names <pattexpro100.com>, <pattexpro150.com>, <pattexpro200.com>,
<pattexpro400crystal.com>, <pattexpro500express.com>, <pattexpro600.com>,
<pattexpro600hightack.com>, <pattexpro800express.com>, <pattexpro90fixotac.com>, and

<pattexpro900hightack.com> are registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2024. On October 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 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 (REDACTED FOR PRIVACY / Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2024, 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 November 6, 2024.

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 November 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2024.

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The Center appointed Áron László as the sole panelist in this matter on December 2, 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 was established in Germany in 1876. The Complainant is active in both industrial and consumer businesses, including hair care products, detergents, fabric softeners, adhesives, sealants and functional coatings. The Complainant has operations in 124 countries and employs 47,750 people

worldwide. In the financial year 2023, the Complainant reported a turnover of EUR 21.5 billion.

The Complainant owns several PATTEX trademarks worldwide, including the following:

-	European Union trademark PATTEX (word) Registration No. 010297489 registered on January 24,
2012;
-	International Registration designating inter alia Türkiye PATTEX (word) Registration No. 603897

registered on May 10, 1993.

The Complainant also owns several trademarks incorporating the term “Pattex” (the “PATTEX Pro

Series” trademarks), including the following:

- European Union trademark PATTEX PRO100 (figurative) Registration No. 018993004 registered on

June 22, 2024;

- European Union trademark PATTEX PRO150 (figurative) Registration No. 018993005 registered on

June 22, 2024;

- European Union trademark PATTEX PRO200 (figurative) Registration No. 018992545 registered on

June 25, 2024;

- European Union trademark PATTEX PRO600 (figurative) Registration No. 018992646 registered on

June 25, 2024;

- European Union trademark PATTEX PRO90 FIXOTAC (figurative) Registration No. 018992950

registered on June 25 2024;

- European Union trademark PATTEX PRO400 CRYSTAL (figurative) Registration No. 018992541

registered on June 22, 2024;

- European Union trademark PATTEX PRO500 EXPRESS (figurative) Registration No. 018993008

registered on June 22, 2024;

- European Union trademark PATTEX PRO800 EXPRESS (figurative) Registration No. 018993006

registered on June 25, 2024;
- European Union trademark PATTEX PRO600 HIGH TACK (figurative) Registration No. 018993037 registered on June 22, 2024;

- European Union trademark PATTEX PRO900 HIGH TACK (figurative) Registration No. 018993007 registered on June 25, 2024.

The Complainant owns several brands of adhesives, including PATTEX. The PATTEX brand covers a wide range of adhesives. The Complainant owns <pattex.com> and <pattex.fr>. The Complainant uses <pattex.com> to direct Internet users, depending on their geographical location, to its website for more information on the types of PATTEX adhesive products available in their country.

The disputed domain names <pattexpro100.com>, <pattexpro150.com>, <pattexpro200.com>,
<pattexpro400crystal.com>, <pattexpro500express.com>, <pattexpro600.com>,
<pattexpro600hightack.com>, <pattexpro800express.com>, <pattexpro90fixotac.com>, and
<pattexpro900hightack.com> are registered by the Respondent.

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The Respondent is an individual residing in Türkiye. All of the disputed domain names were registered on February 29, 2024, with the exception of <pattexpro500express.com> and <pattexpro90fixotac.com>, which were registered on the following day, March 1, 2024.

The disputed domain names are currently redirecting Internet users to “ listing them for sale. The disputed domain names are being offered for sale at a price of USD 2,850. The disputed domain names were, at the time of filing of the Complaint, offered for sale at the same price on

“ itself a GoDaddy brand.

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 names.

In particular, the Complainant alleges that the disputed domain names are identical or confusingly similar to
trademarks in which the Complainant has rights. The disputed domain names correspond to the
Complainant’s registered trademarks. These trademarks are themselves based on the Complainant’s
PATTEX trademark, with the addition of certain numbers (“100”, “150”, “200”, “600”, “90”, “400”, “500”, “800”,
and “900”) and other terms that the Complainant claims are descriptive (“fixotac”, “crystal”, “express”, and
“hightack”).

The Complainant alleges that the Respondent has merely added to the Complainant’s PATTEX trademark with generic and descriptive terms “pro”, “fixotac”, “crystal”, “express” and “hightack” and the numbers “100”, “150”, “200”, “600”, “90”, “400”, “500”, “800”, “900”, thereby rendering the disputed domain names confusingly similar to the Complainant’s PATTEX trademark. These terms per se correspond to the names of the Complainant’s PATTEX Pro product line and the Complainant’s respective registered trademarks.

As regards the second element, the Complainant submits that the Respondent is not commonly known by the disputed domain names. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any way, let alone in domain names. The Respondent is not sponsored by or affiliated with the Complainant in any way.

The disputed domain names currently direct Internet users to domain name listings for sale on a domain name marketplace. As such, the Respondent is not using the disputed domain names in a bona fide offering of goods or services as permitted by paragraph 4(c)(i) of the Policy, nor is it making a legitimate noncommercial or fair use as permitted by paragraph 4(c)(iii) of the Policy. Panels have confirmed that such use does not confer any legitimate rights or interests on a respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.3 (“A respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests.”).

As to the third element, the Complainant alleges that the disputed domain names were registered and are being used in bad faith. The Complainant and its PATTEX trademarks are internationally known, with trademark registrations in numerous countries. The Complainant has marketed and sold its goods and services under this trademark since 1924, well before the Respondent’s registration of the disputed domain names on February 29, 2024 and the following day. By registering these ten disputed domain names, each of which contains the PATTEX trademark in its entirety, along with the addition of terms related to Complainant’s PATTEX Pro Series of adhesive products, the Respondent has demonstrated knowledge of and familiarity with Complainant’s trademark and business. Furthermore, the 10 disputed domain names correspond exactly to the 10 trademarks registered by the Complainant for its PATTEX PRO line of adhesive products. Previous panels have found bad faith in similar cases where the coincidences could not be explained otherwise.

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The timing of the registration of the disputed domain names also indicates bad faith. Most of the disputed domain names were registered on the same day that the Complainant filed the corresponding European Union trademark applications with the European Union Intellectual Property Office (“EUIPO”). The Respondent most likely preyed on the Complainant by monitoring the Complainant’s newly filed trademark applications. Such a practice of registering domain names as soon as the corresponding trademarks have been filed with a trademark office is a well-known practice among cybersquatters.

The Respondent is currently offering to sell the disputed domain names, which constitutes bad faith under paragraph 4(b)(i) of the Policy. The Respondent has demonstrated an intent to sell the disputed domain names for valuable consideration in excess of its out-of-pocket expenses. It is well established that the

intent to profit from the sale of confusingly similar domain names containing a third party’s trademark
constitutes bad faith.

The Respondent has registered the 10 disputed domain names, each of which infringes the Complainant’s PATTEX mark. This number of disputed domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

i. the domain name registered by the respondent is 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 domain name; and
iii. the domain name has been registered and is being used in bad faith.

In view of the Respondents’ failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

The Panel may accept all reasonable allegations set forth in a complaint. However, the Panel may deny
relief where a complaint wholly contains mere conclusory or unsubstantiated arguments.

WIPO Overview 3.0, section 4.3.

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 names. WIPO Overview 3.0, section 1.7.

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.

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The entirety of the mark PATTEX is reproduced within the disputed domain names. Accordingly, the
disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7. Although the addition of other terms, here, “pro”, “fixotac”, “crystal”,
“express”, and “hightack”, and the addition of the numbers “100”, “150”, “200”, “600”, “90”, “400”, “500”,
“800”, and “900” may bear on assessment of the second and third elements, the Panel finds the addition of
such terms does not prevent a finding of confusing similarity between the disputed domain names and the

mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel also notes that each of the disputed domain names incorporates each of the corresponding

Complainant’s PATTEX Pro Series trademarks in its entirety.

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 disputed domain names.

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.

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 names. 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 names such as those
enumerated in the Policy or otherwise.

The Respondent’s name is mesut erdogan, which does not match any of the disputed domain names, all of which contain the Complainant’s trademark PATTEX. The Respondent is offering the disputed domain names for sale, which does not confer any rights or legitimate interests on the Respondent under the circumstances of this case.

The Respondent has not rebutted the Complainant’s statements.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that there appears to be no conceivable explanation for the and is a well-known trademark. The disputed domain names clearly correspond to the names of the Complainant’s products in the PATTEX Pro Series product line and the Complainant’s PATTEX Pro Series trademarks. The registration of the 10 disputed domain names also indicates a pattern of conduct on the

Respondent’s registration of these 10 disputed domain names other than prior knowledge of the

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part of the Respondent. Moreover, eight of the 10 disputed domain names were registered on the same
day that the Complainant filed the PATTEX Pro Series trademark applications with the EUIPO, and two other
disputed domain names were registered the day after. Again, this cannot be a mere coincidence. These
factors lead the Panel to conclude that the disputed domain names were registered in bad faith.

With respect to the use in bad faith, the Respondent is currently offering to sell the disputed domain names, which constitutes bad faith under paragraph 4(b)(i) of the Policy. The Respondent is offering the disputed domain names for sale at a relatively high price, USD 2,850, which most likely exceeds its out-of-pocket

expenses. It is well established that seeking to profit from the sale of confusingly similar domain names

containing a third party’s trademark constitutes bad faith.

The Panel finds that the Complainant has established the third element of the Policy.

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 names <pattexpro100.com>, <pattexpro150.com>, <pattexpro200.com>, <pattexpro400crystal.com>, <pattexpro500express.com>, <pattexpro600.com>,

<pattexpro600hightack.com>, <pattexpro800express.com>, <pattexpro90fixotac.com>, and
<pattexpro900hightack.com> be transferred to the Complainant.

/Áron László/ Áron László Sole Panelist Date: December 16, 2024