WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kimberly-Clark Corporation v Domenico Rossi

Case No. D2000-1263

 

1. The Parties

Complainant is Kimberly-Clark Corporation, a corporation incorporated under the laws of Delaware, with a place of business at 401 North Lake Street, Neenah, Wisconsin, USA, 54957-0349, and with offices worldwide.

The Respondent is Domenico Rossi, whose address is Via G. Verdi 58, Colturano, Milano 20060, Italy.

 

2. The Domain Name and Registrar

The domain name in issue is "scottex.com" . The Registrar with which the disputed domain name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.

 

3. Procedural History

The Complaint was received on September 25, 2000 by the WIPO Arbitration and Mediation Center by e-mail. A hard copy was received by the Center on

September 28, 2000. The Center acknowledged receipt of the Complaint on

September 27, 2000.

The Complainant also sent the Respondent a copy of the Complaint by facsimile and courier on September 25, 2000. A copy of the Complaint was also sent by electronic mail and courier to Network Solutions.

A request for Registrar verification was forwarded to the Registrar on October 2, 2000. On October 2, 2000 Network Solutions, Inc. confirmed by e-mail that Domenico Rossi, whose address is Via G. Verdi 58, Colturano, Milano 20060, Italy is the current registrant of the domain name in issue. Domenico Rossiís fax number is given as 39-2- 7003-4119.

Network Solutions Inc. also provided the name of the Technical Contact for the domain name as Simonenko, Dmitri, whose e-mail is support@DOMAINFORFREE.COM, at Business Solutions Group Inc., 1717 N Taylor St, Arlington, VA 22207, fax no. (703) 527-7383.

On October 4, 2000, the Center sent the Notification of the Complaint and Commencement of Administrative Proceedings, together with a copy of the Complaint, to Domenico Rossi by e-mail. The Center advised the Respondent that the formal date of the commencement of the administrative proceeding was October 4, 2000 and that the last day for sending a Response to the Complainant and to the Center was October 23, 2000. The Center advised the Respondent in its e-mail that hardcopies of the documents were being sent to him by courier on the same date.

The Center also attempted twice to fax the documents to the Respondent but attempts at transmitting by fax to the given number failed. The Center also attempted twice to fax the documents to Dmitri Simonenko, the Technical Contact for the domain name at the fax number provided by Network Solutions Inc. but the attempts at transmitting the fax to the Technical Contact at the given number failed.

On October 4, 2000 the Center sent the Complaint and annexes by courier to the Respondent and to Dmitri Simonenko, the Technical Contact. A copy of the FedEx Tracking Results indicates that the package was delivered to Dmitri Simonenko at 9.34 on October 6, 2000.

The DHL Courier Report indicates that efforts to deliver the Complaint and annexes to the Respondent between October 5, 2000 and October 27, 2000 were unsuccessful. The package was returned to the Center on October 31, 2000. On October 22, 2000 the Respondent advised the Center by e-mail that he had not received the hard copy of the Complaint. The Center replied on October 23, 2000 that the courier was sent to Via G. Verdi 58 in Colturano. The Respondent confirmed on October 23, 2000 that the address was correct but that no package or ticket to take the package had arrived. On October 25, 2000 the Respondent repeated that he had not received a package and inquired if the Center had an acknowledgement of the successful delivery. On October 26 the Center advised the Respondent that the Center had the correct address but that the DHL tracking information stated that the recipient had moved. As the Complainant had already sent the Respondent a copy of the Complaint by facsimile and courier on September 25, 2000, the Center notified the Respondent that he was in default and attached a formal Notification of Respondent Default.

The Complainant requested a panel of three, and the Center appointed Ross Carson as the Presiding Panelist and Scott Donahey and Andrea Mondini as Panelists. The three panelists have duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On November 21, 2000, the Center forwarded a Notification of Appointment of Administrative Panel to the Parties.

On November 21, 2000 the Center forwarded the hard copy of the Complaint to Ross Carson, Scott Donahey and Andrea Mondini by courier. The date scheduled for the Panelís decision is December 4, 2000. The language of the proceedings is English.

 

4. Factual Background

The Trademarks

The Complaint is based on the ownership of four registered Italian Trademarks for SCOTTEX and four registered Italian Trademarks incorporating the word SCOTTEX. The Complainant has used the SCOTTEX trademarks in relation to personal care and cleaning products such as toilet paper, household goods, soap, and cosmetics throughout Europe since at least as early as November 1965.

The Complainant has attached a list of its trademark registrations, together with copies of its registrations, as Annexes 7 to 14 to the Complaint.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the domain name "scottex.com" is identical or confusingly similar to the Complainantís registered trademark SCOTTEX. (Paragraph 4(a)(i) of the Policy).

(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name "scottex.com (Paragraph 4(a)(ii) of the Policy). The Complainant states that to the best of Complainantís knowledge the Respondent has not commenced preparation to use or used the domain name "scottex.com" in connection with any bona fide offering of goods or services, has not commonly been known by the domain name, and has not made any legitimate non-commercial or fair use of the domain name, (Paragraph 4(c) of the Policy) facts which if proved by a Respondent demonstrate a Respondentís Right to and Legitimate interest in the domain name in dispute. The Complainant submits that the scottex.com domain name merely links to www.domainforfree.com, a commercial domain name registration website.

(iii) The Complainant further submits that the Respondent registered the domain name in bad faith. (Paragraph 4(a)(iii) of the Policy).

The Complainant submits that the Respondentís demand for thirteen million lire which Complainant characterized as "extortion", is clearly in excess of Respondentís out-of-pocket costs directly related to the domain name and is therefore unreasonable.

Complainant submits that Respondentís activities and inactivity constitute evidence of bad faith registration and use of a domain name as set forth in Paragraph 4(b)(i) of the Policy.

 

(i) Identical or Confusingly similar.

With respect to the first element of confusion between the domain names and the registered trademarks for SCOTTEX the Complainant attaches as Annexes 7 to 14 the Complainantís Registered Italian Trademarks for SCOTTEX or marks incorporating the word SCOTTEX.

Complainant submits that Kimberly-Clark is the number one worldwide provider of consumer tissue products including bathroom tissue, paper hand towels, and table napkins. A number of these products are sold in Europe under the SCOTTEX trademark. Kimberly-Clark has used the SCOTTEX trademark since as early as November 1965 in association with personal care and cleaning products such as toilet paper, household goods, soap and cosmetics throughout Europe.

The Complainant submits that the domain name at issue, scottex.com, is identical or confusingly similar to the Complainantís SCOTTEX trademarks.

(ii) Absence of Respondentís rights and legitimate interest in the domain name

The second element is whether the Respondent has rights or a legitimate interest to the disputed domain name. The Complainant submits that Respondent has not prepared to use or used the domain name "scottex.com" in connection with any bona fide offering of goods or services, was not commonly known by the domain name and has not made any noncommercial or fair use of the domain name. The Complainantís evidence is that the Respondent is not known by the SCOTTEX name and is not making non-commercial or fair use of the SCOTTEX name. The evidence is that entry of the domain name "scottex.com" merely links to www.domainforfree.com, a commercial domain name registration website.

 

(iii) Registration and Use of the Domain Name in Bath Faith

With respect to the third element as to whether the Respondent has registered and is using the disputed domain name in bad faith the Complainant submits that on February 24, 2000 the Complainant contacted the Respondent after discovering the registration of the domain name scottex.com by the Respondent. On March 2, 2000 Respondent wrote to Complainant advising that he was not infringing Complainantís rights and intended to set up a student site with short stories and humour. He advised that he chose the name, considering the fact that the company producing Scottex was not interested in registering "scottex.com" as the Complainant had not yet purchased the domain name. Respondent suggested a solution might be found which would have to take into account his expenses incurred in realizing his project. Complainant invited the Respondent to propose terms of transfer of the "scottex.com" domain name, in response to which Respondent instructed Complainant that thirteen million lire ($6,000 U.S.) would be the price for transfer of the domain name (Annex 4 to the Complaint). In response to this demand, Complainant requested Respondent to supply details why 13 million lire is a reasonable amount for Complainant to have to pay. No response was received to this request.

The Complainant submits that the Respondentís demand for thirteen million lire, which Complainant characterized as "extortion", is clearly in excess of Respondentís out-of-pocket costs directly related to the domain name and is therefore unreasonable.

Complainant submits that Respondentís activities constitute bad faith registration and use of a domain name as defined by Paragraph 4(a)(iii) of the Policy.

B. Respondent

Respondent claimed that he had not received a hardcopy of the Complaint by courier from the Center. However, Complainant sent a copy of the Complaint by fax and courier to the Respondent on September 25, 2000. No response with respect to the Complaint was received by the Center or by the Panel.

 

6. Findings

The first issue is a procedural issue whether the Center employed reasonably available means calculated to achieve actual notice of the Complaint to the Respondent (UDRP Rule 2(a) and (j)). The Respondent informed the Center by e-mail on October 22, 2000 that the Respondent had never received a hard copy of the Notification (Complaint) by courier or traditional mailing and therefore cannot write and file a response to the Complaint.

The Complainant states that the Complainant e-mailed and couriered a hard copy of the complaint to the Respondent at the street address of the Respondent provided by the Registrar. The so-called hard copy of the Complaint includes the Annexes to the Complaint. The Technical Contact to the Respondent was forwarded and received a hard copy of the Complaint. The courier sent by the Center according to the tracking information attended at the address provided by the Respondent over a number of days and was advised that the recipient (Respondent) had moved. After notification that the Respondent had not received a hard copy of the Complaint the Center proceeded and forwarded the Notification of Respondent Default to the Respondent.

The Panel is in agreement with the decision made by the Center.

First, the Respondent had an obligation to maintain its current address with the Registrar. The Technical Contact to the Respondent received the hard copy of the Complaint from the Center. Both the Complainant and the Center arranged for the delivery of the hard copy of the Complaint to the street address provided by the Respondent to the Registrar.

The second compelling reason for agreeing with the decision of the Center to forward the Notification of Default to the Respondent is that the Respondent was e-mailed the complaint on October 4, 2000. A review of the Complaint discloses that the annexes are comprised of correspondence between the Complainant and Respondent, copies of particulars of Registration of a number of Italian Trademark Registrations for or including SCOTTEX and copies of decisions under the ICANN UDRP Policy and Procedure. The Italian Trademark Registrations are public information and the decisions referred to in the Complaint and attached as Annexes are available on the internet.

For the above reasons the Panel agrees that the Center employed reasonably available means to achieve actual notice of the Complaint and the Annexes to the Complaint to the Respondent.

The first element which the Complainant must prove is that the domain name is identical or confusingly similar to the Complainantís trademark or service mark SCOTTEX.

The domain name "scottex.com" is identical to the Complainantís trademark SCOTTEX and confusingly similar to the associated trademarks incorporating the word SCOTTEX. The mark SCOTTEX is a created word. The first and inherently distinctive portion of the domain name "scottex.com" is identical to the Complainantís trademark SCOTTEX.

The second element which the Complainant is required to prove is that the Respondent has no right or legitimate interest in respect of the domain names in dispute. The domain name in dispute suggests some affiliation or connection of the Respondent with the Complainant when there is no such affiliation or connection. Respondent claims that he intends to use the disputed domain name for a non-commercial site for students, but has not submitted any evidence for such use. The evidence filed by the Complainant shows that entry of the domain name in dispute merely links to www.domainforfree.com, a commercial domain name registration website. Under the burden of proof standards set out in Do The Hustle, LLC v. Tropic Web, ICANN Case No. D2000-0624, the panel finds that respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent did not file a Reply or any evidence to demonstrate Respondentís rights to and legitimate interest in the domain name, examples of which are set out in Paragraph 4.c of the Policy.

The third element which the Complainant is required to prove is that the disputed domain name has been registered and is being used in bad faith.

The fact that Respondent offered to sell the domain name to Complainant for $6,000 is evidence that the domain name was registered and is being used in bad faith. World Wrestling Federation v. Bosman, ICANN Case No. D99-0001. The Respondent admitted he had knowledge of the SCOTTEX trademark as evidenced in a letter to the Complainant that he "had chosen this name assuming that the company producing Scottex was not interested to such domain name"(Annex 2 to the Complaint).

The Respondent stated in correspondence with the Complainant that Respondent had chosen the domain name as a student site with short stories, humor bits, gags etc. for non-commercial purposes(Annex 2 to the Complaint). No such website has been set up. Based on the fact that the Respondent adopted the inherently distinctive word SCOTTEX as the distinctive portion of the domain name and reviewing the correspondence between the Complainant and the Respondent, the Panel concludes that the Respondent adopted the inherently distinctive word SCOTTEX and registered the same in bad faith. The Panel also finds that the domain name is used in bad faith in that entry of the domain name "scottex.com" merely links to www.domainforfree.com, a commercial domain name registration website. The Respondent is using the name in a colourable manner to attract persons familiar with Complainantís trademark to the website with a view to ultimately sell the domain name in dispute. The registration and warehousing of the domain name whose inherently distinctive portion is identical to the Complainantís registered trademarks and whose value is based on the attractive force, goodwill and reputation of the Complainantís trademarks among the public, with intent to sell the confusingly similar domain name is use of the confusingly similar domain name in bad faith.

 

7. Summary of Findings

a. The domain name in dispute is identical to the Complainants registered trademark for SCOTTEX.

b. The Respondent has no right or legitimate interest in respect of the disputed domain name. The disputed domain name promotes and suggests a connection or relationship of the Respondent with the Complainant which does not exist. Respondent claims that he intends to use the disputed domain name for a non-commercial site for students, but has not submitted any evidence for such use.

c. The domain name has been registered and is being used in bad faith by the Respondent. The Respondent offered to sell the domain name to the owner of the trade or service mark for valuable consideration far exceeding the actual cost to the Respondent of registering the domain name. The Respondent was aware of the SCOTTEX trademark of the Complainant.

 

8. Decision

In the Complaint, the Complainant requested that in accordance with Paragraph 4.i. "Remedies" of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be transferred to Complainant. The Complainant having proved each of the three elements set out in paragraph 4.a.(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy is entitled to the decision requested. The Panel requires that the domain name "scottex.com" be transferred to Kimberly-Clark Corporation.

 


 

Ross Carson
Presiding Panelist

Scott Donahey Andrea Mondini
Panelists

Dated: December 4, 2000