Reckitt Benckiser Group Plc, Reckitt Benckiser SARL v Domain Admin
WIPO Case No. D2022-0040
•22-02-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Reckitt Benckiser Group Plc, Reckitt Benckiser SARL v. Domain Admin,
Privacy Protect, LLC (PrivacyProtect.org) / Thelmat Culver
Case No. D2022-0040
1. The Parties
The Complainant is Reckitt Benckiser Group Plc, United Kingdom and Reckitt Benckiser SARL,
Luxembourg, represented by Studio Barbero, Italy.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Thelmat Culver, United States of America.
2. The Domain Name and Registrar
The disputed domain name <reckittbenckisernv.com> is registered with Shinjiru Technology Sdn Bhd (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2022. On January 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2022 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 7, 2022.
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 13, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 2, 2022. The Respondent sent informal emails on January 7
and 13, 2022.
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The Center appointed Philippe Gilliéron as the sole panelist in this matter on February 8, 2022. 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 first Complainant Reckitt Benckiser Group, Plc is a well-known public company quoted on the London active in the manufacturing and distribution of healthcare, household, and personal care products.
The second Complainant Reckitt Benckiser Sàrl, subsidiary of the first Complainant, is the owner of several trademarks consisting in whole or in part of the terms RECKITT BENCKISER, such as the following trademarks:
| - | International Reg. No. 735011, registered on March 15, 2000 in classes 1, 3, 5, 21, 35, and 42; |
| - International Reg. No. 994825, registered on January 30, 2009 in classes 1, 3, 5, 11, 35, 36, and 41; The Complainants have more than 39,000 employees on a worldwide basis and owns several domain | - | International Reg. No 1173668, registered on April 10, 2013 in classes 5, 10, and 29. |
The disputed domain name <reckittbenckisernv.com> was registered on April 8, 2021. While the disputed
domain name currently points to an error page, it used to be redirected to a website displaying the
Complainants’ trademark as well as other trademarks owned by the Complainants and their subsidiaries,
including visuals extracted from the Complainants’ official website and featuring the copyright line “©
Copyright Reckitt Benckiser Group PLC. All rights reserved”.
On October 18, 2021, the Complainants sent a cease-and-desist letter to the Respondent by email to the shielded email address referred to in the WhoIs database and the one featured on the website attached to the disputed domain name. Following a reminder sent on November 10, 2021, the Respondent responded on the same day as follows:
“Tell your client I am willing to sell the domain for [EUR] 2500. It’s my domain I paid for it and I have rights
over it and I am willing to sell for [EUR] 2500”.
In response to follow-up emails sent by the Complainants on November 11 and 18, 2021, the Respondent reiterated on November 18, 2021:
“I told you guys, I will sell the domain to your client if they are willing to pay [EUR] 2500. Let me know if your
client accept so I can send the bitcoin wallet for payment. This is very easy and simple.”
After a final message was sent by the Complainants’ on November 22, 2021, the Respondent deactivated the previous infringing redirection of the disputed domain name.
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5. Parties’ Contentions
A. Complainants
The Complainants first argue that the disputed domain name is confusingly similar to their trademark suffix “nv” that may be understood by users as a reference to a Dutch affiliate of the Complainants.
The Complainants then affirm that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not and has never been one of their representatives, employees, or licensees, and has never been authorized to use the trademark RECKITT BENCKISER. The Respondent is
not using the disputed domain name in connection with a bona fide offering of goods or services as (i) this
disputed domain name, while active, led to a website which clearly aimed to confuse users by generating the
false impression that such website was operated by the Complainants or one of their affiliates, and that (ii)
passive holding of the – since turned inactive – disputed domain name without permission from the
Complainants is not in itself capable of creating any rights for the Respondent therein.
The Complainants finally contend that the disputed domain name was registered and is being used in bad faith. Considering the Complainants’ extensive use of their RECKITT BENCKISER trademark worldwide, including on the Internet, it is inconceivable that the Respondent did not know about the Complainants’
earlier rights on the trademark RECKITT BENCKISER, as further evidenced by the Respondent’s initial
redirection to a website featuring the Complainants’ trademarks, visuals, and copyright notice. In
deliberately registering the disputed domain name, the Respondent intended to trade on the Complainants’
valuable goodwill established in its widely-used trademark RECKITT BENCKISER in order to confuse the
public and disrupt the Complainants’ business, as clearly highlighted by the Respondent’s offer for sale of
the disputed domain name.
Accordingly, the Complainants request transfer of the disputed domain name to the second Complainant
Reckitt Benckiser SARL.
B. Respondent
The Respondent did not reply to the Complainant’s contentions within the deadline of February 2, 2022, but merely sent an email on January 7, 2022, to the Center, asking why the Complaint was brought against the disputed domain name that is not being used and offering to transfer the disputed domain name to the
Complainants, and further on January 13, 2022 sent a second email to the Center, stating: “i will appreciate the settlement of [USD] 1000 so I can release the domain to you. let me know”.
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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a
trademark or a service mark in which the Complainant has rights;
(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.
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A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainants holds numerous trademarks throughout the world consisting of the terms RECKITT
BENCKISER.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy, regardless of the addition of other terms, where the trademark is recognizable within the disputed
domain name (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No.
D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and
F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629; see also section 1.8 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Such is the case here.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”.
Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview 3.0).
| substantial goodwill through wide commercial use and is notably recognized by the public in association with | In the present case, the Complainants are the owners of the RECKITT BECKINSER trademark that enjoys no site resolving from the disputed domain name which would give rise to an apparent legitimate purpose, to the contrary, the disputed domain name initially led to a website displaying several elements of the Complainants’ official website so as to confuse users. |
| The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. | |
| On its side, the Respondent did not answer the Complaint but with an offer for sale to the Complainants submitted respectively on November 10 and 18, 2021, as well as to the Center on January 7 and 13, 2022. Taking into account the circumstances of the case, such offers do not amount to a bona fide offering of goods and services. |
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Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the public as pointed out above.
Considering the wide recognition of the RECKITT BECKINSER trademark, there is no doubt that the
Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name,
as further evidenced by the fact that the disputed domain name initially redirected to a website purposefully
reproducing the Complainants’ trademarks, visuals, and copyright notice so as to make users believe that
such website was one of the Complainants’ official websites. Such use obviously amounts to a use in bad
faith. In these circumstances, the subsequent offers for sale of the confusingly similar disputed domain
name by the Respondent are further evidence that the Respondent registered and used the disputed domain
name in bad faith.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) 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 <reckittbenckisernv.com> be transferred to the second Complainant Reckitt Benckiser SARL.
/Philippe Gilliéron/
Philippe Gilliéron
Sole Panelist
Date: February 22, 2022
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