WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. Alecsey Sorokin
Case No. D2000-1760
1. The Parties
The Complainant in this administrative proceeding is Beiersdorf AG ("Complainant"), a private company with limited liability, incorporated under the laws of Germany and with its main business address at, Unnastrasse 48, 20253 Hamburg, Germany.
According to the Registrar's WHOIS database, the Respondent is Alecsey Sorokin ("Respondent"), 72-39 Pritickogo str., Minsk, BY 220140, Belarus.
2. The Domain Name and Registrar
The domain name at issue is <nivea.org> ("Domain Name"), registered with Network Solutions, Inc. ("Registrar" or "NSI") of 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
A complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on December 19, 2000, by e-mail and was received on December 20, 2000, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on December 20, 2000.
On December 20, 2000, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of December 21, 2000, that the disputed Domain Name was registered with NSI, that Respondent, Alecsey Sorokin, was the current registrant of the name and that NSI's Service Agreement Version 5.0 was in effect. The reply also contained contact information for the Respondent.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on December 22, 2000, without recording any formal deficiencies.
No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on December 27, 2000, setting a deadline as of January 15, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification and Complaint was transmitted to firstname.lastname@example.org (registrant) and email@example.com (technical contact). In addition, the aforementioned documents were sent by FedEx courier service to all available postal addresses of the Respondent.
Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice to Respondent".
On January 18, 2001, having received no Response from Respondent, the WIPO Center transmitted by e-mail a Notification of Respondent Default to Respondent (firstname.lastname@example.org and email@example.com) and to Complainant.
Complainant requested a single-member panel. Since the Respondent has failed to submit a response, the WIPO Center invited the undersigned to serve as a sole panelist in Case No. D2000-1760, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence, which was duly signed and returned to the WIPO Center on January 27, 2001.
The WIPO Center transmitted to the parties on January 30, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of February 12, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its documents annexed to the Complaint and have not been contested by Respondent:
Complainant, one of the world's leading cosmetic product companies, is the registered owner of the trademark "NIVEA" in nearly all countries throughout the world including, but not limited to, the United States, Canada, Argentina, Australia, South Africa, China, Japan, Switzerland and all countries of the European Union. A computer list of all international word mark registrations for "NIVEA" was attached to the Complaint [Annex C.2].
In the United States, "NIVEA" has been registered as a Trade Mark in the Trademark Principal Register of the United States Patent and Trade Mark Office as Trade Mark:
- No. 93627 covering "cosmetic powder, cosmetic cream and preparations for the hair" (filing date: March 18, 1913); and
- No. 321882 covering "soap" (filing date: July 25, 1930); and
- No. 691036 covering "general purpose skin oil and liquid cream emulsion, for use on the face, hands and body, to lubricate, protect and sooth dry chapped skin" (filing date: December 23 1957); and
- No. 807893 covering "toilet soap" (filing date: March 8, 1965); and
- No. 809393 covering "cosmetic cream for the care of the skin" (filing date: March 8, 1965); and
- No. 1401796 covering "moisturizing skin and sun protection lotions" (filing date: December 19, 1985); and
- No. 1437659 covering " moisturizing sun tan oil and facial moisturizing lotion" (filing date: September 19, 1986); and
- No. 1509797 covering "moisturizing bath and shower gel, and moisturizing bath oil"(filing date: February 22, 1988), [Annex C.1].
The disputed domain name <nivea.org> was registered by Respondent on February 7, 2000.
5. Parties’ Contentions
Firstly, the Complainant contends that the Domain Name <nivea.org> is identical to the Complainant's registered trade mark "NIVEA".
Secondly, the Complainant contends that its registered trade mark "NIVEA" has not been the subject of any authorization for use in favor of the Respondent and therefore the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
Thirdly, the Complainant contends that the Respondent satisfies the requirement of paragraph 4(a)(iii) of the Policy, namely that the Domain Name has been registered and is being used in bad faith.
Fourthly, the Complainant contends that the Domain Name should be transferred to the Complainant.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a Response up to date. Thus, Complainant's allegations are deemed to be non contested.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is <nivea.org>. Complainant is the holder of the registered trade mark "NIVEA", which is obviously identical with the relevant and disputed part of the Domain Name.
In any event, the Respondent does not and can not contest this point.
Taking above mentioned into consideration, the Panel holds that the Complainant has established element (i) of the policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that according to paragraph 4(c) of the Policy a Respondent can establish its rights or legitimate interests in the Domain Name if it shows the presence of any of the following circumstances:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
Respondent has not provided evidence of legitimate rights or interests in respect of the disputed Domain Name by any circumstances set forth in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or to a legitimate interest in the disputed Domain Name.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy showing that Respondent has no right or legitimate interest in the Domain Name.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] 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 trade mark 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
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark 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 [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Name in bad faith.
Additionally, in WIPO Case No. D2000-0003, paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is very well known and has a strong reputation; Respondent has provided no evidence of any good faith use of the disputed Domain Name. As the Complainant alleges, Respondent doesn't seem to have associated the Domain Name with any web site or on-line presence at all. In fact, the disputed domain name <nivea.org>, which was registered by Respondent on February 7, 2000, currently relates to a web site "Under Construction" and there is no evidence that a web site or other on-line presence is in the process of being established which will use the Domain Name.
In an overall assessment of the contentions and facts mentioned above, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy is sufficiently made out by the Complainant, and that Respondent's passive holding of the disputed Domain Name constitutes bad faith use.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name:
shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: February 12, 2001