WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beiersdorf AG v. Nivea International
Case No. D2001-0178
1. The Parties
The Complainant is Beiersdorf AG of Unnastrasse 48, 20253 Hamburg, Germany. The Respondent is Nivea International of Ground Floor, Jermahal, Opp. Metro Theatre, Mumbai, Maharashtra 400002, India.
2. The Domain Name and Registrar
The disputed domain name is <niveainternational.com> and the Registrar is Domain People, Inc., of Vancouver, BC, Canada.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on February 1, 2001, and in hard copy on February 6, 2001. The Center acknowledged receipt on February 5, 2001 and on February 8, 2001 sought registration details from the Registrar. On April 27, 2001, the Registrar confirmed that the Respondent is the registrant, the Registrar’s record having been created on June 30, 2000.
On May 1, 2001, the Center drew the attention of the Complainant to the need for an amendment to the Complaint to comply with paragraph 3(b)(xiii) of the Rules. An amendment was filed by email on May 2, 2001 and in hardcopy on May 8, 2001.
On May 9, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On May 9, 2001, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly May 9, 2001. The last day specified in the notice for a response was May 28, 2001. On May 23, 2001, the Respondent filed a Response by email and on May 28, 2001, in hardcopy. Its receipt was acknowledged by the Center on May 25, 2001.
On June 5, 2001, the Center notified the parties of the appointment of Alan L. Limbury as the administrative panel, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated June 20, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.
The language of the proceeding was English.
The panel is satisfied that the Complaint, as amended was filed in accordance with the requirements of the Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.
4. Factual Background
The Complainant is the holder of US Trademark Registrations NIVEA Nos. 93627 for "cosmetic powder, cosmetic cream and preparations for the hair", 321882 covering "soap", 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", No. 807893 covering "toilet soap", 809393 covering "cosmetic cream for the care of the skin", No. 1401796 covering "moisturizing skin and sun protection lotions", 1437659 covering "moisurizing sun tan oil and facial moisturizing lotion" and No. 1509797 covering "moisturizing bath and shower gel, and moisturizing bath oil".
The trademark NIVEA is protected in about 200 countries worldwide.
According to U.S. trademark certificate 93627, the first use in U.S. commerce of the mark " Nivea" for cosmetic powder, cosmetic cream and preparations for the hair was in June 1905 and the mark was registered in Germany by one of the Complainant’s predecessors in title in September 1905.
On April 1, 1973, Mr. Assan H. Sukhwani (the father of Mr. Ajay Assan Sukhwani who is a partner of the Respondent), Mr. Sheelu Kundanmal Sukhwani and Mr. Narendra Jayantilal Shah formed a partnership under the name and style of ‘M/S. Nivea Trading Company’ to carry on trading activities in Wrist Watches. On March 5, 1974, the said ‘M/S. Nivea Trading Company’ obtained a Shop and Establishment License.
In or about July 1977, Ms. Punita Assan Sukhwani (the wife of Mr. Assan Sukhwani) applied for registration of trademark NIVEA under No. 326650 in Class 14 of the Schedule annexed to the Trade and Merchandise Marks Rules, 1958 in respect of watches and jewellery clocks, etc. The said registration was granted, is renewed from time to time and is valid and subsisting.
On or about September 16, 1981, the name of ‘M/S. Nivea Trading Company’ was changed to ‘M/S. Nivea Time’. The said firm was also by then manufacturing wrist watches in India. On or about March 31, 1983, a firm by the name "Nivea’s" was registered to carry on trading in watches, clocks, electronic tapes, etc.
On October 10, 1989, Mr. Ajay Assan Sukhwani and Mr. Sushil Assan Sukhwani formed another partnership by the name ‘M/S. Nivea International’ (the Respondent). The Respondent has been registered since November 3, 1989. The Respondent firm is registered with the Government of India and bears Import Export Code No. 0389059480 of March 6, 1990.
Initially, the Respondent was engaged in the business of import and export of textiles to and from India. Subsequently, the Respondent began representing overseas universities in India and presently the Respondent represents about 100 foreign universities and colleges from U.K., Australia, New Zealand, Switzerland and the U.S.A. The Respondent is duly registered with various statutory authorities. The Respondent also files Income Tax Returns.
5. Parties’ Contentions
The trademark NIVEA is a well-known mark of the Complainant.
The contested domain name <niveainternational.com> is identical to the Complainant’s trademarks NIVEA. There is no relation between Respondent and Complainant and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant’s mark. Therefore, Respondent has no rights or legitimate interests in respect of the Domain Name <niveainternational.com> and it must be assumed that this Domain Name has been registered and is being used in bad faith.
The domain name is neither identical nor deceptive similar to the complainant’s domain name. The suffix ‘international’, the uncommon element, sufficiently distinguishes the two names. The additional element in the domain name ‘international’ has 13 letters without which a prospective client can never access the respondent’s website. Thus the existence of the word ‘international’ is substantial and sufficient to distinguish the two domain names. There is a necessity to look into the technical act of the manner and way of accessing a website. The insertion of the domain names will obviously lead one to the respective sites only and no confusion or deception can be caused on the basis of the two domain names.
The Complainant claims to manufacture and sell cosmetics and skin care products etc. under the name and style of ‘Nivea’. It is highly improbable that the Respondent’s business name which is associated with educational activities is likely to cause confusion or deception in the market with regard to the alleged products sold by the Complainant. The kind and class of people to whom the Respondent caters are absolutely and distinctively different from the kinds and class of people to whom the Complainant cater.
Although the trademark appears to be registered in various countries, a domain name has relevance to the World Wide Web.
The words ‘Nivea’ and ‘Niveainternational’ are different phonetically, visually and structurally and the same cannot cause or is likely to cause or has caused confusion or deception especially in so far as domain names have to be considered with
- the identicalness of the names
- the mode of access by use of the domain name
- the knowledge & acquiescence of the complainant in adopting distinguishing features relating to other domain names &
- the nature and qualification of people accessing the facilities provided.
The Respondent has a legitimate interest in respect of the Domain Name <niveainternational.com>. The domain name was adopted by the Respondent without reference to the Complainant’s trademark.
The word ‘Nivea’ is a coined word and was coined as far back as 1973. The ‘N’ is taken from the name ‘Narendra’, one of the partners of the Respondent firm. The ‘VE’ are taken from the name ‘Veemla’, the maiden name of the wife of one of the partners of the Respondent firm and the ‘A’ is taken from the name ‘Assan’, one of the partners of the Respondent firm. The word ‘International’ was added to the word ‘Nivea’ to signify the international character of the Respondent’s activities.
The adoption of the domain name <niveainternational.com> was thought of by the Respondent in order to create a portal for information on the business activities of the Respondent, namely Overseas Education Consulting and with a view to assisting students in India who want to study in foreign universities.
The Respondent has expended huge amounts of money for promoting and advertising its business activities. The Respondent also organises ‘Seminars and Interviews’ with the representatives of various foreign universities who visit Mumbai so that prospective students can interact with the representatives. The ‘Seminars and Interviews’ are widely advertised in the local print media. Thus, the students associate the name ‘M/S. Nivea International’ with the Respondent alone and with nobody else. Annexed are copies of some of the advertisements appearing in the local print media since the year 1995.
Register the domain name to sell to complainant
It is clear that the Domain Name has not been adopted by the Respondent for sale to the Complainant and in any event that is not the case made out by the Complainant. The Respondent has never required to sell the domain name & has no reason to do so.
Engage in a pattern of registering domain names to prevent mark owners from using them
This is again not the case. The adoption of the domain name by the respondent was honest in so far as the domain name was to be used for a portal on Overseas Education Consultants. The domain name has been adopted by the respondent purely for its use. Neither has it created confusion nor is it creating any confusion. The respondent presently uses the domain name for its business related activities and for supplying information with regard admissions available in foreign universities.
Register the domain name to disrupt the business of a competitor
The respondent submits that it has no intention nor has it intended to disrupt or disrupted the business of the Complainant. Neither has anything untoward been published against the Complainant nor has any diversion or any means undertaken to make parties wean away from the complainant’s site. The Complainant mainly deals with cosmetic products whereas the Respondent offers services of Overseas Education Consultants.
Use the domain name intentionally to attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation
The Respondent has no reason to attract users to its site as the site is not a totally commercial site. There has been nothing to cause a confusion or likelihood of confusion as to the source of affiliation. There has never been anything done by the respondent to cause confusion or divert any parties, client or otherwise from the complainant. The home page [annexed] will clear the case of alleged confusion. The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent of commercial gain. The Respondent has never tried misleadingly to divert consumers or to tarnish the trademark(s) at issue.
No case is made out
- that the domain name is identical or deceptively similar
- that the use of the word ‘international’ does not sufficiently distinguish the domain name of the respondent from that of the complainant’s trademark.
- that there is confusion or deception or likelihood of confusion or deception
- that the trademark of the Complainant is famous or even known.
- that the trademark of the Complainant is known at all in the world.
- that the domain name has been adopted by the Respondent in bad faith.
The Complaint deserves to be rejected / refused.
6. Discussion and Findings
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the disputed domain name has been registered and is being used in bad faith.
There is no dispute that the Complainant has rights in the trademark NIVEA in those classes with respect to which the mark is registered (broadly, cosmetics).
Identity or confusing similarity
It has been decided in many cases under the Policy, and under US trademark law, that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO Case No. D2000-0102), holding disputed domain names confusingly similar to the trademark of the complainant, despite the addition of generic words.
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc. (D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (D2000-0109).
The panel considers addition of the generic word "international" to the mark does not sufficiently distinguish the disputed domain name from the mark. Accordingly, the panel finds that the disputed domain name <niveainternational.com> is confusingly similar to the Complainant’s trademark NIVEA.
The Complainant has established this element.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.
The Complainant has not authorized the Respondent to use the "Nivea" name and mark nor to include that mark in any domain name.
The Respondent has provided evidence in the form of copies of official Government certificates and correspondence from associates in numerous countries, (which the panel has examined), that
- before any notice to it of the dispute, the Respondent used the disputed domain name in connection with a bona fide offering of international educational consultancy services;
- the Respondent is commonly known by the disputed domain name and chose that name because it reflected the names of the founders and of the international character of the services offered; and
- the Respondent is making a legitimate and fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark.
Any one of the above is sufficient to dispose of this case in favour of the Respondent. Accordingly, the panel finds on the compelling evidence provided by the Respondent, that the Respondent has demonstrated that it has rights and legitimate interests in the disputed domain name.
The Complainant states that bad faith must be assumed. But no evidence of bad faith registration or use has been provided in support of this assumption. The Respondent’s evidence clearly refutes it. This element has not been established.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the complaint is dismissed.
Alan L. Limbury
Dated: June 11, 2001