LRC Products Limited v Melissa H. Patridge

WIPO Case No. D2025-0218

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

LRC Products Limited v. Melissa H. Patridge

Case No. D2025-0218

1. The Parties

The Complainant is LRC Products Limited, United Kingdom (“U.K.”), represented by Studio Barbero S.p.A.,

Italy.

The Respondent is Melissa H. Patridge, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <durexdickerations.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2025. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on January 21, 2025, 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 Protection Services, Inc.) and contact information in the Complaint.

The Center sent an email communication to the Complainant on January 22, 2025, 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 amendment to the Complaint on January 23, 2025.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 31, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 20, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 24, 2025.

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The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 28, 2025. 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 company founded in 1915, selling imported condoms and barber shop supplies. It has been acquired in 2010 by Reckitt Benckiser Group plc, a global leader in consumer health, hygiene, and home products.

The Complainant is the owner of several registered trademarks for DUREX to promote its activities and services (the “DUREX Trademarks”) including:

- the European Union word trademark DUREX No. 000200923, registered on December 8, 1999, and
regularly renewed for products in classes 5 and 10;
- the European Union word trademark DUREX No. 000200907, registered on December 16, 1999, and
regularly renewed for products in classes 1, 5, 9, 10, 16, 17, 21, 25, 37, 41 and 42;
- the International word trademark DUREX No. 1684485, registered on June 10, 2022, for products in class
10;

- the U.S. semifigurative trademark No. 6988135, registered on February 28, 2023, for products in

classes 3, 5, and 10.

Another entity of the Complainant’s group (Reckitt Benckiser SARL) is also the owner of several domain names incorporating the DUREX Trademarks, such as <durex.com> registered in 1995, which is the primary web portal for global promotion of products commercialized under the DUREX Trademarks.

The disputed domain name was created and registered in 2005 by the prior owner of the DUREX
Trademarks and used in connection with a campaign from 2007 named “Durex Dickorations”. Between 2011
and 2017, the disputed domain name was acquired by Reckitt Benckiser SARL and redirected to the
Complainant’s main website “

On August 12, 2024, the Respondent registered the disputed domain name which had expired in 2017. The disputed domain name pointed to a website displaying an image taken from a Complainant’s advertising campaign and reproducing the DUREX Trademarks along with a hyperlink named “List with super cool Incest porn sites”, which redirected to a site displaying adult content and promoting other pornographic websites.

On November 6, 2024, the Complainant’s representative sent a cease-and-desist letter to the Respondent and received no reply.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights. The Complainant submits that the disputed domain name incorporates the whole of its DUREX Trademarks. The Complainant highlights that the addition of the term “dickeretions” does not

prevent a finding of confusing similarity between the disputed domain name and the DUREX Trademarks.
Indeed, the Complainant stands that the term “dickerations” does not have any dictionary meaning and that

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the Complainant – via one of its affiliated companies – registered the disputed domain name in the past

years as it was a pun on “decorations” used in connection with a past DUREX campaign.

Then, the Complainant states that the Respondent has no rights or legitimate interests in respect of the
disputed domain name. For the Complainant, the Respondent is not an employee, a licensee, or authorized
agent of the Complainant or was in any other way authorized to use the DUREX Trademarks. The
Complainant also highlights that the Respondent cannot reasonably claim to be commonly known by the
disputed domain name. Moreover, according to the searches conducted by the Complainant’s
representative on online trademark databases, no trademark application or registration for DUREX could be
found in the name of the Respondent. The Complainant also considers that the Respondent doesn’t use the
disputed domain name in connection with a bona fide offering of goods or services before or after any notice
of the dispute. Indeed, the disputed domain name resolves to a web page featuring a Complainant’s official
advertising image and the DUREX figurative trademark and, by clicking on the picture, users are redirected
to another website promoting adult content. Therefore, the Complainant considers that the Respondent is
clearly attempting to attract and divert to its own website users looking for the Complainant’s products online,
by creating confusion as to the source or affiliation of its website. Finally, the Respondent did not reply to the
cease-and-desist letter sent by the Complainant’s representative.

Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant highlights the prior registration and extensive use of the DUREX Trademarks in connection with the Complainant’s products for over 90 years, including in the U.S. where the Respondent is located. The Complainant states that the fact that the disputed domain name was redirected to a website reproducing a Complainant’s advertising image and the DUREX Trademarks, indicates that the Respondent was fully aware of the Complainant and its trademarks. Regarding the use in bad faith, the Complainant underlines that the disputed domain name redirects to a web page displaying not only unauthorized reproductions of a Complainant’s advertising picture and the DUREX Trademarks but also a link redirecting to another website promoting adult contents. The Complainant considers that the Respondent has intentionally attempted to attract, for commercial purposes, Internet users to its website, by creating a likelihood of confusion with the DUREX Trademarks as to the source, sponsorship, affiliation or endorsement of its website. The Complainant also notes that the use of a disputed domain name in connection with an adult content website has the potential to tarnish the reputation of the Complainant's trademarks.

B. Respondent

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

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 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 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.

Although the addition of other terms, here, “dickerations”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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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.

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.

Indeed, it appears the Respondent is not commonly known by the disputed domain name or that the On the contrary, the disputed domain name resolves to a website featuring a Complainant’s official advertising image and reproducing the DUREX Trademark and, by clicking on the picture, users are redirected to another website promoting adult content.

Moreover, the composition of the dispute domain name carries a risk of implied affiliation. Indeed, it appears that the term “dickerations” does not have any dictionary meaning and that the Complainant – via one of its affiliated companies – registered the disputed domain name in the past as it was a pun on “decorations” used in connection with a past DUREX campaign. Therefore, the addition of this term is likely to increase confusion as it has been imagined by the Complainant and used in the past by the group to which the Complainant belongs. WIPO Overview 3.0, section 2.5.1.

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 the Respondent has registered the disputed domain name well after the registration of the DUREX Trademarks. The Panel notes that the Respondent must have the Complainant in mind when registering the disputed domain name since the disputed domain name resolves to a website featuring a Complainant’s official advertising image and reproducing the DUREX Trademarks.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

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Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Here, the Panel notes the composition of the disputed domain name, as

well as the prior registration by a company affiliated with the Complainant. Moreover, it is clear the website displaying an image taken from a Complainant’s advertising campaign with a link to adult content. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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 name <durexdickerations.com> be transferred to the Complainant.

/Christiane Féral-Schuhl/
Christiane Féral-Schuhl
Sole Panelist
Date: March 14, 2025