Reckitt Benckiser SARL v Mario Borg, RB, Emilio Borg, Repossessed by Go

WIPO Case No. D2023-0659

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Reckitt Benckiser Group Plc, Reckitt & Colman (Overseas) Health Limited,
Reckitt Benckiser SARL v. Mario Borg, RB, Emilio Borg, Repossessed by Go
Daddy

Case No. D2023-0659

1. The Parties

The Complainants are Reckitt Benckiser Group Plc, United Kingdom, (the “First Complainant”), Reckitt & Colman (Overseas) Health Limited, United Kingdom, (the “Second Complainant”), and Reckitt Benckiser SARL, Luxembourg, (the “Third Complainant”), represented by Studio Barbero, Italy.

The Respondents are Mario Borg, RB, Thailand, (the “First Respondent”), Emilio Borg, Thailand, (the
“Second Respondent”), and Repossessed by Go Daddy, United States of America (“United States”) (the

“Third Respondent”).

2. The Domain Name and Registrar

The disputed domain name <reckittbenckiser-plc.com> is registered with GoDaddy.com, LLC, and the disputed domain name <reckitt-plc.net> is registered with NameCheap, Inc. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2023 in respect of the domain names <reckittbenckiser-plc.com>, <reckitt-plc.net>, and <reckittinc.com>. On February 14, 2023, the Center transmitted by email to the Registrars requests for registrar verification in connection with these domain names. On February 14 and February 15, 2023, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the domain names which differed from the named Respondents (Domains By Proxy, LLC, Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf, and Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 2, 2023, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. On March 7, 2023, the Complainant filed an amended Complaint and withdrew its Complaint as it related to the domain name <reckittinc.com>. On March 9, 2023, the Center confirmed that the proceeding would continue only regarding the disputed domain names <reckittbenckiser-plc.com> and <reckitt-plc.net>.

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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 Respondents of the
Complaint, and the proceedings commenced on March 13, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 2, 2023. The Respondents did not submit any response.

Accordingly, the Center notified the commencement of Panel appointment process on April 3, 2023.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 7, 2023. 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 three Complainants are members of the Reckitt group of companies, which is a global leader in consumer health, hygiene, home, and nutrition products. Reckitt manufactures and markets health, personal care, and household products, including over-the-counter pharmaceuticals such as analgesics, antiseptics, flu remedies and gastrointestinal medications, and products for hair removal, denture cleaning, intimate wellness, and pest control. The group has more than 40,000 employees, operations in more than 60 countries and sales in most countries across the globe.

The First Complainant is the parent company to the other Complainants.

The Second Complainant is the owner of the following trademark registrations for the sign RECKITT (the

“RECKITT trademark”):

- the United Kingdom trademark RECKITT with registration No. UK00003615754, registered on
November 5, 2021, for goods and services in International Classes 1, 3, 5, 8, 9, 10, 11, 21, 25, 29, 30,
31, 32, 35, 36, 41, 42, and 44;

- the International trademark RECKITT with registration No. 1621375, registered on March 24, 2021, for goods and services in International Classes 1, 3, 5, 8, 9, 10, 11, 21, 25, 29, 30, 31, 32, 35, 36, 41, 42, and 44; and

- the European Union trademark RECKITT with registration No. 018435303, registered on September
25, 2021, for goods and services in International Classes 3, 5, 10, 29, 35, and 41.

The Third Complainant is the owner of the following trademark registrations for the sign RECKITT

BENCKISER (the “RECKITT BENCKISER trademark”):

- the International Trademark RECKITT BENCKISER with registration No. 735011, registered on March
15, 2000, for goods and services in International Classes 1, 3, 5, 21, 35, and 42; and

- the European Union trademark RECKITT BENCKISER with registration No. 001416056, registered on
February 7, 2003, for goods and services in International Classes 1, 3, 5, 21, 35, and 42.

The Third Complainant is the owner of the domain names <reckitt.com>, registered on February 11, 1996, and <reckittbenckiser.com>, registered on July 27, 1999.

The disputed domain name <reckittbenckiser-plc.com> was registered on January 15, 2023. It is currently inactive. It has been used for the setting up of an email account from which messages have been sent to third parties.

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The disputed domain name <reckitt-plc.net> was registered on January 28, 2023. At the time of filing of the records in its DNS configuration.

5. Parties’ Contentions

A. Complainant

The Complainants assert that the disputed domain names are confusingly similar to the RECKITT and
RECKITT BENCKISER trademarks in which they have rights. The disputed domain name <reckitt-plc.net>
entirely reproduces the RECKITT trademark with the addition of a hyphen and the three-letter element
“plc”, while the disputed domain name <reckittbenckiserplc.com> incorporates the RECKITT BENCKISER
trademark with the addition of a hyphen and the same element “plc”. According to the Complainants, the
addition of the term “plc” – a common abbreviation of the company legal form “Public Limited Company” – to
the RECKITT and RECKITT BENCKISER trademarks is likely to increase the likelihood of confusion since
Internet users might believe that the disputed domain names are corporate domain names of the
Complainants, in particular of the First Complainant Reckitt Benckiser Group PLC.

The Complainants claim that the Respondents have no rights or legitimate interests in respect of the disputed domain names, as they are not commonly known under the disputed domain names and are not licensees, distributors or authorized agents of the Complainants or authorized to use the Complainants’ RECKITT and RECKITT BENCKINSER trademarks. According to the Complainants, the disputed domain names carry a high risk of implied affiliation, and the Respondents have not used them in connection with a bona fide offering of goods or services. Rather, a person unconnected to the Complainants has sent messages from an email address at the disputed domain name <reckittbenckiser-plc.com>, claiming to be the “Talent Acquisition Team Leader” of Reckitt Benckiser UK. These messages had the subject “I am recruiting” and included the following text: “I have recently come across your linkedin profile and understand that you specialize in the recruitment of Medtech/Engineering professionals. Please call me to discuss your services”. Thus, the Respondents have used this disputed domain name to induce the recipients of such emails to mistakenly believe that the Respondents had a connection with the Complainants and they or their clients have been selected for an interview by the Complainants and, replying to the messages received, may have provided personal or sensitive information in the belief that they were providing it to the Complainants.

The Complainants further submit that the disputed domain name <reckitt-plc.net> redirects to the Complainants’ official website at “ thus generating the false impression of it being under the control of the Complainants. This disputed domain name also has MX records configured, so fraudulent email communications based on this disputed domain name may be sent to Internet users who would be misled into believing that such messages are sent by the Complainants or one of their affiliated entities.

The Complainants contend that the disputed domain names were registered and are being used in bad faith. According to them, in light of the prior registration and use of the Complainants’ RECKITT and RECKITT BENCKINSER trademarks worldwide, it is inconceivable that the Respondents were unaware of the existence of these trademarks at the time of registration of the disputed domain names in January 2023. The composition of the disputed domain names shows that the Respondent registered them with the intention to target the Complainants and their trademarks, inducing users to believe that the disputed domain names are owned and operated by Complainants or one of their affiliated entities.

The Complainants point out that the Respondents have sent emails from an email address based on the disputed domain name <reckittbenckiser-plc.com> impersonating a fictitious Reckitt representative and seeking personal information and possibly also payments from unsuspecting job applicants. According to the Complainants, such use of a domain name for the purpose of defrauding Internet users by the operation of fraudulent or phishing schemes is evidence of registration and use of a domain name in bad faith.

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The Complainants submit that the Respondents have used the disputed domain name <reckitt-plc.net> to redirect to the Complainants’ official website, aiming to induce users to believe that this disputed domain name was operated by the Complainants, and thus take advantage of the Complainants’ reputation and of the well-known character of their trademarks. Considering the use that the Respondents have made of the disputed domain name <reckittbenckiser-plc.com> for the sending of fraudulent communications and that MX records have been set up in the DNS configuration of the disputed domain name <reckittplc.net>, it is likely that the latter disputed domain name may also be used in connection with the sending of misleading email communications.

According to the Complainants, the Respondents’ current passive holding of the disputed domain names does not prevent a finding of bad faith use, in view of the confusingly similarity of the disputed domain names with the Complainants’ RECKITT and RECKITT BENCKISER trademarks, the Respondents’ lack of rights or legitimate interests in the disputed domain names and related bad faith, the Respondents’ concealing of their identity in the public WhoIs records, and the implausibility of any good faith use to which the disputed domain names may be put.

The Complainants request the transfer of the disputed domain names to the Third Complainant Reckitt

Benckiser SARL.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Procedural issue – Consolidation of the Complainants

The Complainants request the Panel to accept the Complaint brought by them against the Respondents with regard to the disputed domain names. They point out that all of them are part of the Reckitt group of companies, that the Second and the Third Complainants are the owners of the RECKITT and RECKITT BENCKISER trademarks, that the Third Complainant is also the owner of the domain name <reckitt.com>, currently used for the Complainants’ main web portal at “ to which the disputed domain name <reckitt-plc.net> has redirected, and that the First Complainant is the parent company to the other Complainants. The Complainants assert that they are the target of a common conduct by the Respondents and that they have common grievances against the Respondents regarding the registration and use of the disputed domain names. The Complainants add that permitting the consolidation would be fair and equitable to the Parties involved and would safeguard procedural efficiency.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. The Policy and the Rules do not directly regulate the consolidation of multiple Complainants in a single Complaint. As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation.

As discussed in section 6.2.A below, the Complainants are to be considered as all having rights in the RECKITT trademark for the purposes of the Policy, and they have brought forward certain common grievances against the Respondents in the Complaint. The Respondents have not objected to the consolidation of the Complainants and have not advanced any reasons why it may not be equitable and procedurally efficient to consolidate them. Therefore, the Panel decides to allow the consolidation of the Complainants in this proceeding.

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6.2. Procedural issue – Consolidation of the Respondents

The Complainants request that the disputed domain names and the named Respondents be consolidated in a single UDRP proceeding. They maintain that the disputed domain names, which are confusingly similar to the RECKITT BENCKISER and RECKITT trademarks, are under the control of a single individual or entity or reflective of individuals acting in concert.

prima facie incomplete postal addresses in Thailand and with similar Gmail addresses with the same structure.

The Complainants submit in this regard that the disputed domain names share a number of commonalities was registered the day after the Complainants’ representative sent a cease-and-desist letter concerning the disputed domain name <reckittbenckiser-plc.com> to the Respondents. Email exchange (“MX”) records have been displayed in the DNS configuration of the disputed domain names, and the disputed domain name <reckittbenckiser-plc.com> has been used for the sending of fraudulent email communications. The disputed domain names were registered with the indication of similar registrant names with almost identical and
among each other. They have an identical structure reproducing the Complainants’ RECKITT and RECKITT

The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainants.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview 3.0, where a complaint is filed against multiple respondents, UDRP panels look at

whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically

present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, or other arguments made by the complainant.

The Panel is satisfied that the Complainants have shown good reasons why the consolidation of the Respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. The disputed domain names were registered within a very short period of time and follow the same pattern – a combination of the Complainants’ RECKITT or RECKITT BENCKISER trademark with the term “plc”. The Panel notes that the names and contact details provided by the Respondents to the Registrars also show similarities, such as a common surname and country. In the lack of any contrary arguments or evidence, these circumstances show that it is more likely than not that the disputed domain names are under common control.

While the disputed domain name <reckittbenckiser-plc.com> was ultimately repossessed or seized by the
Registrar due to use of this disputed domain name in relation to the above-referenced fraudulent email
scheme, the current Registrar status of this disputed domain name does not prevent the consolidation of the
Complaint in view of the circumstances mentioned above.

None of the Respondents have advanced any reasons why it may not be equitable to allow the consolidation of the disputes. It appears that the consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.

Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding.

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6.3. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names:

(i)        the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii)       the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have provided evidence that the Second Complainant is the owner of the RECKITT
trademark and that the Third Complainant is the owner of the RECKITT BENCKISER trademark, and submit
that all Complainants are members of the same group of companies where the First Complainant is the
parent company of the other two Complainants. As discussed in section 1.4.1 of the WIPO Overview 3.0, a
trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive
trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to
file a complaint. The Panel considers that it is appropriate to apply this principle to each of the Complainants
in the present proceeding, as they are all affiliated to each other and the Complaint is brought by them
jointly. In view of this, the Panel accepts that the three Complainants have rights in the RECKITT and
RECKITT BENCKISER trademarks for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” and “.net” gTLDs of the disputed domain names.

The disputed domain name <reckitt-plc.net> incorporates the RECKITT trademark with the addition of the element “plc”, which is a commonly used abbreviation for “Public Limited Company” – a type of legal entity. The RECKITT trademark is easily recognizable in this disputed domain name. The disputed domain name <reckittbenckiser-plc.com> incorporates the RECKITT BENCKISER trademark with the addition of the element “plc”, and the RECKITT BENCKISER trademark is easily recognizable in it. As discussed in section 1.8 if the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have
recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the
often-impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to
have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

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The Complainants contend that the Respondents have no rights or legitimate interests in the disputed domain names, because they are not commonly known by the disputed domain names and have not been authorized to register them. One of the disputed domain names has been used for the setting up of an email account from which fraudulent messages impersonating the Complainants have been sent to third parties, while the other disputed domain name redirects to the Complainants’ official website, which gives rise to a false impression that it is under the control of the Complainants, and also has MX records set up, which creates the risk that it may also be used for fraudulent email communications.

The Respondents have not denied the Complainants’ contentions and have not alleged having rights or legitimate interests in the disputed domain names. They have not provided any explanation why they have registered and how they intend to use the disputed domain names.

The disputed domain names incorporate the RECKITT and RECKITT BENCKISER trademarks and the element “plc”, and the combination appears as the name of a company of the Reckitt group to which all Complainants belong. The evidence shows that the disputed domain name <reckitt-plc.net> redirects to the

Complainants’ official website and has MX records activated, and that a message from an email account with the disputed domain name <reckittbenckiser-plc.com> has been sent to a third party, where the sender falsely pretended to be an employee of “Reckitt Benckiser UK”.

As discussed in section 2.5 of the WIPO Overview 3.0, fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. Even where a domain name

consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held
that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or
endorsement by the trademark owner. Here, the composition of the disputed domain names, the fact that
one of them redirects to the Complainants’ official website, and the fact that a message impersonating the
Complainants has been sent from the other disputed domain name does exactly this.

The above considerations lead the Panel to the conclusion that the Respondents knew of the Complainants, registered the disputed domain names because they are confusingly similar to their RECKITT and RECKITT BENCKISER trademarks, and used them in a manner that reinforces the likelihood of confusion of Internet

users that the disputed domain names belong to the Complainants. As pointed out by the Complainants, the
fact that MX records have been activated for the disputed domain names is a further cause of concern, as
recipients of emails from email accounts at the disputed domain names are likely to believe that they
originate from the Complainants. The Panel does not regard the circumstances of the present case as
disproving the Complainants’ prima facie case and giving rise to rights or legitimate interests of the
Respondents in the disputed domain names.

The Registrar’s repossession of the disputed domain name <reckittbenckiser-plc.com> due to the fraudulent use for an email scheme impersonating the Complainants further supports a finding of lack of rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration
in excess of your documented out-of-pocket costs directly related to the domain name; or

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(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”

As discussed in section 3.1. of the WIPO Overview 3.0, given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.

The disputed domain names are confusingly similar to the RECKITT and RECKITT BENCKISER and use of the disputed domain names. As submitted by the Complainants, the circumstances of the present case show that the Respondents are well aware of them and their RECKITT and RECKITT BENCKISER trademarks, and the Respondents appear to attempt to impersonate the Complainants and induce Internet users to believe that the disputed domain names and the associated email accounts are operated by the Complainants, and thus take advantage of their reputation and of the well-known character of their trademarks for financial gain.

trademarks. One of them redirects to the Complainants’ official website and has MX records activated, while
the other has been used for sending of emails that impersonate the Complainants. This is a combination
that carries a high risk of implied affiliation with the Complainants, so recipients of email messages for
accounts at the disputed domain names may well believe such messages to be originating from the

Lastly, the Registrar’s repossession of the disputed domain name <reckittbenckiser-plc.com> affirms a finding that the disputed domain name was registered and used in bad faith.

For these reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.

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 <reckittbenckiser-plc.com> and <reckitt-plc.net> be transferred to the

Third Complainant Reckitt Benckiser SARL.

/Assen Alexiev/
Assen Alexiev
Sole Panelist
Date: April 21, 2023