WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Reckitt Benckiser AG v. Nazim Oren

Case No. D2002-0286

 

1. The Parties

1.1 The Complainant is Reckitt Benckiser AG, Im Hölderi 19, CH-8405 Winterthur, Switzerland, a company incorporated according to the laws of Switzerland, ("Complainant").

1.2 The Respondent is Nazim Oren of 282 Lexington Avenue, Apt. 1, Jersey City, NJ 07304, United States of America ("Respondent").

 

2. The Domain Names and Registrar

2.1 The domain names upon which this Complaint is based are <reckittbenckiser.net>, <reckittbenckiser.org>, <reckitt-benckiser.net>, <reckitt-benckiser.org>, <reckitt.net>, <reckittprofessional.net>, <reckittprofessional.org>, <benckiser.net>, <benckiser.org>, collectively, "Disputed Domain Names". The Disputed Domain Names were registered by the Respondent on February 3, 2001. The Panel refers to Annexure B of the Complaint filed by the Complainant to support this contention.

2.2 The registrar of the Disputed Domain Names as at the date of the Complaint is Domain Bank, Inc of 23 W 4th Street, Bethlehem PA 18015-1603, United States of America (email: support@domainbank.net) ("Registrar").

 

3. Procedural History

3.1 The Complaint about the Disputed Domain Names was made by the Complainant pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules"), and the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect from December 1, 1999 ("the Supplemental Rules").

3.2 The Complaint was received by the the Center by email on March 26, 2002, and then in hardcopy on April 5, 2002. WIPO Center is approved by ICANN as a dispute resolution service provider. The fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.3 On March 26, 2002, the Complainant sent to the Respondent via email a copy of the Complaint with attachments. The Complainant used the following email addresses to contact the Respondent for the purposes of forwarding to the Respondent the Complaint; nazimoren@home.com and nazimoren@hotmail.com.

3.4On March 27, 2002, the Respondent forwarded an email to the Complainant acknowledging, inter alia, receipt of the Complaint. The Respondent forwarded a further email on April 1, 2002, to the Complainant and to the Center. The Complainant responded to these emails on April 5, 2002. The Respondent responded to the Complainantís email on April 5, 2002.

3.5 On March 28, 2002, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.6 On April 4, 2002, the Center sent a request for Registrar verification by email. The Registrar responded to the Centerís request on April 11, 2002, by email, stating:

(a) that the Registrar is an ICANN-accredited registrar of Internet second-level domain names in the top-level domains .com, .net, .org, .info, .us, .aero and .biz;

(b) the Registrar received a copy of the Complaint in WIPO Case D2002-0286;

(c) the Registrar is the registrar of the Disputed Domain Names;

(d) the Respondent is the current registrant of the Disputed Domain Names;

(e) the Respondentís contact details;

(f) the Policy applies to the Disputed Domain Names;

(g) the Disputed Domain Names are currently in active status;

(h) the Service Agreement between Registrar and the Respondent is in English; and

(i) that the Respondent has submitted in its Service Agreement with Registrar to the jurisdiction at the location of the principal office of Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names.

3.7 On April 12, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding and the Complaint to the Respondent by email without attachments and by courier with attachments. The Notification of Complaint and Commencement of Administrative Proceeding was copied to the Complainant by email.

3.8 On May 2, 2002, the Center received a Response from the Respondent.

3.9 On May 3, 2002, the Center acknowledged receipt of the Response by email. The notification of receipt of the Response was communicated to the Complainant by email on May 3, 2002.

3.10 On May 3, 2002, the Complainant forwarded an email to the Respondent acknowledging receipt of the Response and requesting, inter alia, that the Respondent forward translated copies of the attachments that are in Turkish. The Respondent responded to this email in the negative on May 3, 2002. On May 8, 2002, the Center acknowledged receipt of each of the May 3, 2002, emails.

3.11 On May 14, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainantís representative by email and to the Respondent by email.

3.12 On May 22, 2002, the Panel forwarded an email to the Center requesting that Annexure A and Annexure H of the Response be translated into English. The language of the proceeding is English, that being the language of the registration agreement for the Disputed Domain Names. Pursuant to paragraph 11(b) of the Rules the Panel may request that documents be translated if the Respondent wants the Panel to take these documents into consideration. The Panel also ordered the Projected Decision date extended to June 11, 2002, to allow the Complainant to comment on the translated documents.

3.13 On May 22, 2002, the Center forwarded a copy of the Panelís request via email to both the Complainant and the Respondent.

3.14 On May 27, 2002, the Panel received from the Respondent via email English language translations of numerous documents in addition to those requested by the Panel in its email of May 22, 2002. The Panel has only considered the documents entitled "Employment Agreement" and "Turkish Republic Istanbul 7th Employment Law Court - Verdict" and in accordance with paragraph 10(d) of the Policy has determined these documents to be admissible.

3.15 On May 27, 2002, the Panel received an email from the Complainant stating, inter alia, that the Respondent had had ample opportunity to provide the translated documents on which the Respondent proposed to rely and requested that the original decision date be adhered to. Despite the Respondentís refusal on May 3 , 2002, to provide translations to the Complainant, the Panel considers the requested documents material and necessary to enable the Panel properly to appreciate the Response. The Panel was entitled to request the documents pursuant to paragraph 12 of the Policy.

3.16 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following is asserted as fact in the Complaint:

The Complainant was formed on December 3, 1999, as a result of a merger of Reckitt & Colman plc of the United Kingdom and Benckiser N.V. of the Netherlands. Since 1814 the Complainant and its associated companies have been engaged in the business of the manufacture and distribution of household cleaning and health and personal care products. Reckitt Benckiser is currently the world leader in five core categories: Fabric Care, Surface Care, Health and Personal Care, Dishwashing and Home Care. Reckitt Benckiser operates in all continents and its products are sold in 180 countries. It currently has operations in 60 countries, including Switzerland, Turkey and the United States.

4.2 The Complainantís trade marks

The following is also asserted as fact in the Complaint:

Since 1912, both Reckitt & Colman plc and Benckiser N.V. owned worldwide trade mark registrations in the RECKITT and BENCKISER names respectively and were so well known as to be considered famous marks in accordance with the Paris convention, either independently of each other or read together. Subsequent to the merger, since March 2000, the Complainant has owned two International Register - MADRID CONVENTION and MADRID PROTOCOL - trade mark registrations in the RECKITT BENCKISER name designated for protection in the following countries: Albania, Algeria, Germany, Armenia, Austria, Azerbaijan, Belarus, Benelux, Bosnia-Herzegovina, Bulgaria, China, Croatia, Cuba, Czech Republic, Egypt, France, Hungary, Italy, Kazakhstan, Kenya, Kirghizistan, Liberia, Liechtenstein, Macedonia, Monaco, Morocco, Uzbekistan, Poland, Portugal, Moldova, Democratic Republic of Korea, Romania, Russian Republic, Saint Marin, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Ukraine, Vietnam, Yogoslavia, Finland, Iceland, Estonia, Denmark, Lithuania, Norway, United Kingdom, Sweden and Turkey. Complainant has since February 2000 sought United States federal trade mark protection by way of fourteen applications.

Since 1814, both Reckitt & Coleman plc and Benckiser N.V. have used the RECKITT and BENCKISER names in commerce in connection with the manufacture and distribution of household cleaning and health and personal care products, so much so that Reckitt Benckiser is currently the world leader in five core categories: Fabric Care, Surface Care, Health and Personal Care, Dishwashing and Home. Therefore, following the merger, and even before they sought trade mark registration, the names, both individually and together have become sufficiently distinctive for Reckitt Benckiser AG to have acquired unregistered common law trade mark rights in the name RECKITT BENCKISER.

4.3 Activities of the Respondent

The following is asserted as fact in the Response:

The Respondent is the registrant of the Disputed Domain Names. The Respondent asserts that on March 3, 1997, he signed a contract which was a freelance agreement for employment (the "Contract"). The Respondent asserts that the Contract was signed by Mr. Caner Tunaman as the general manager of Reckitt Benckiser, Turkey. The Respondent asserts that Mr. Tunaman signed the Contract as the CEO of Yenisoluk CSA, but that the Contract also covers the tasks and jobs for Benckiser.

The Respondent further asserts that after a few years he was promoted as technical manager and "post production field" for Benckiser Turkey by Mr. Tunaman and raised to an executive level in Benckiser.

The Respondent asserts that the years 1999-2000 were the last years in his job at Benckiser.

The Respondent has not provided any further information with regard to his present activities.

 

5. The Complainantís contentions in the Complaint

5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant alleges that the Disputed Domain Names are identical and/or confusingly similar to the Complainantís trade mark registrations.

The Complainant asserts that the Disputed Domain Names are identical and/or confusingly similar as follows:

<reckittbenckiser.net>
<reckittbenckiser.org>.

The relevant part of the above domain names is "reckittbenckiser". The Complainant asserts that this is textually identical to its RECKITT BENCKISER mark.

<reckitt-benckiser.net>
< reckitt-benckiser.org>

The relevant part of the above domain names is "reckitt-benckiser". The Complainant asserts that this is so textually similar as to be almost identical to its RECKITT BENCKISER marks. The Complainant asserts that the inclusion of the hyphen leaves intact the phonetic and visual similarities between the domain names and the Complainantís trade mark.

<reckitt.net>

The relevant part of the above domain name is "reckitt". The Complainant asserts that this is textually identical to half of its RECKITT BENCKISER marks. The Complainant is the proprietor of a US registered trade mark as well as having common law rights in the RECKITT name.

<benckiser.net>
<benckiser.org>

The relevant part of the above domain names is "benckiser". The Complainant asserts that this is textually identical to half of its RECKITT BENCKISER marks and as such is confusingly similar to the Complainantís mark, given the origin of the RECKITT BENCKISER name, so that the public is likely to be misled as to the origin of any goods or services bearing the above domain names. In addition, the Complainant has common law rights in the BENCKISER name.

<reckittprofesional.net>
<reckittprofessional.org>

The relevant part of the above domain names is "reckittprofessional". The Complainant asserts that this is textually similar to its RECKITT BENCKISER marks. The Complainant also asserts that it already uses the term "professional" in relation to its products geared at the professional field, such as cleaning professionals or health care professionals. The Complainant further asserts that these names are merely derivative of the Complainantís marks and are confusingly similar to the Complainantís marks as to origin. Consequently, the Complainant asserts that the public is very likely to be confused as to an association between the Complainant and the Respondent or to infer an endorsement by the Complainant of any activities the Respondent embarks on using the domain names.

The Complainant also asserts that in November 2001, it became aware that the domain name <reckittbenckiser.org> was registered to the Respondent. Upon further investigation, the Complainant discovered that the Respondent has registered each of the Disputed Domain Names. The Complainant approached the Respondent by telephone on November 14, 2001, asking his interest in the Disputed Domain Names. Respondent claimed that he was a former employee of an advertising agency used by Reckitt Benckiser Turkey. He also claimed that he had registered the names on request of the President of Reckitt Benckiserís Turkish concern in order to safeguard the names from cybersquatters and name grabbers. Respondent, who now resides in the United States, further stated that he had attempted to approach Complainant to transfer the names at least two years ago but had received no Response from any of the people he had approached at Complainantís headquarters in the United Kingdom.

The Complainant further asserts that it requested that Respondent forward the said letters again. By email cover letter of November 14, 2001, Respondent forwarded the said letters to the Complainant. On receipt of the letters, it became clear, according to Complainant, that Respondent had written them during the previous month in September 2001 and not two years prior as he had claimed. Respondent also, in his cover letter, confirmed that he had placed all names for sale on <afternic.com> auction site and forwarded his user name to Complainant so Complainant could access the proper page of the auction site showing the names in question on offer. In the said cover letter, Respondent further stated, "If Reckitt Benckiser or their associates are ready to afford my expenses, domain name and transfer fees Iíll gladly transfer them."

The Complainant asserts that, by email of November 14, 2001, it requested of the Respondent what and how much his reasonable expenses were so that that amount would be made available to him in return for the transfer of the names. Respondent responded on the same date stating that he would expect his reasonable expenses to be covered not merely his registration costs. On November 16, 2001, the Complainant responded to the email, answering to the issues raised by the Respondent and explaining that they were only genuinely interested in facilitating a transfer for an amount that would fairly cover the expenses incurred by the Respondent in connection with the names.

The Complainant asserts that the Respondent did not respond to the email of November 16, 2001, and was contacted again by telephone early in December. The Complainant asserts that on December 7, 2001, the Respondent sent an email to the Complainant in which he completely changed his story and alleged that he has pending litigation with the Complainant. The Complainant states that neither the Complainant, its UK headquarters nor its Turkish sister company have ever been involved in any litigation with the Respondent as claimed in the Respondentís letter. Secondly, the Complainant asserts that the Respondent has never been an employee of the Complainant or any of its associated companies, both in Turkey and elsewhere. Therefore, the Complainant could not owe him any salary or expenses as claimed. Finally, the Complainant asserts that by the Respondentís own admission the Respondent has registered names, with no legitimate interest as he earlier tried to claim but rather, with the intention of selling them to the Complainant.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant alleges that the Respondent has no rights or legitimate interest in the Disputed Domain Names. The Complainant asserts that the Respondent has not used the domain names for a bona fide offering of goods or services and there is no evidence that he intends to do so nor does he appear to be making or have made a legitimate non-commercial or fair use of the domain name.

The Complainant further asserts that the Respondent, both as an individual and as a business, has never been commonly known as RECKITT BENCKISER or RECKITT, or BENCKISER. The Complainant asserts that except for the registration of the Disputed Domain Names, which are listed for sale on the <afternic.com> auction site, the Respondent and any business of the Respondent have never used the RECKITT BENCKISER or RECKITT or BENCKISER names. The Complainant asserts that such use of the Disputed Domain Names is bad faith and should not be taken to give the Respondent rights in the RECKITT BENCKISER or RECKITT or BENCKISER names.

The Complainant drew the Panelís attention to National Football League Properties, Inc and Chargers Football Company v One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2001-0118, where it was held that:

"Bad faith use of domain names does not establish rights or legitimate interests in respect of such names in the sense of paragraph 4(a)(ii) of the Policy."

The Complainant further contends that the Respondent has no trade mark rights whether registered or unregistered in the RECKITT BENCKISER or RECKITT or BENCKISER names and the Respondent is not a licensee or other authorised user of the Complainantís marks.

5.3 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Respondent registered and is using the Disputed Domain Names in bad faith. The Complainant asserts that under the Policy, bad faith registration and use can be found where the Respondent seeks to profit from the sale of the Disputed Domain Name in which it has no legitimate interest. In support of this assertion, the Complainant alleges, inter alia, that:

(a) the Respondent by his own admission was fully aware of the Complainantís RECKITT BENCKISER marks and their reputation at the time of his registration of the names and could have had no good intention except to sell the names to the Complainant.

(b) given the long use and well-known character of the Complainantís mark, the Complainant was the most likely purchaser (if not the only purchaser) of the Domain Names.

(c) the Respondent cannot argue that he was unaware of the well-known character of the Complainantís marks since he had intimate knowledge of the mark as an employee of the Complainantís Turkish advertising agency. The Respondentís job would have involved the promotion and nurturing of that very character.

(d) the Respondent registered the names with a view to profiting from their sale. Having registered them, his subsequent conduct in offering them for auction on the <afternic.com> site is evidence of bad faith use on his part.

(e) when contacted by the Complainant, the Respondent offered to transfer the Disputed Domain Names for a price, and was reluctant to divulge what his reasonable out of pocket expenses were with regard to the Disputed Domain Names. The Complainant referred to a letter at Annexure H. The Complainant asserts that in this letter the Respondent makes clear his intention to sell the Disputed Domain Names for an amount that far exceeds the likely out-of-pocket expenses incurred by the Respondent.

 

6. The Respondentís contentions in the Response

6.1 The Panel notes that pursuant to paragraph 5(b)(viii) of the Policy a Respondent is required to conclude their Response with the following statement:

"Respondent certifies that the information contained in this Response is to the best of the Respondentís knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument"

The Panel notes that the Respondent has failed to comply with paragraph 5(b)(viii) of the Policy. It would be desirable for the Center to remind respondents to comply with this provision whenever the prescribed certification is not provided. A Panel is otherwise entitled to draw adverse inferences from a respondentís not having certified their response as accurate (see also Rule 14).

6.2 In his Response, the Respondent has made a number of assertions. The Response does not clearly respond to the assertions put forward by the Complainant. From an examination of the Response and consideration of the emails dated May 3, 2002, (as referred to in para 3.10) and the translated documents entitled "Employment Agreement" and "Turkish Republic Istanbul 7th Employment Law Court - Verdict" the Panel was able to determine that the Respondent was asserting that he had no intention to gain any benefit from the registration of the Disputed Domain Names.

Furthermore, the Respondent asserts that he purchased the Disputed Domain Names on the order of Mr. Caner Tunaman, the General Manager of Reckitt Benckiser. The Respondent asserts that on March 3, 1997, the Respondent signed a contract at Mr. Tunamanís executive office of Benckiser in Istanbul. The Respondent described the Contract as a freelance agreement for employment. The Respondent asserts that Mr. Tunaman signed the contract as the CEO of Yenisoluk CSA but that the Contract covers the tasks and jobs for Benckiser.

One of the translated document does indeed appear to be an employment agreement between Yenisoluk CSA and the Respondent.

The Respondent further asserts that in the following years he was promoted to technical manager for media and post-production field for Benckiser Turkey and raised to an executive level in Benckiser.

The Respondent further asserts, inter alia, that whilst employed by Yenisoluk CSA he started a project that allowed users to follow their production status from the companyís website. After purchasing <yenisoluk.com.tr>, Yenisoluk "embedded" Benckiser Turkey into the website. The Respondent asserts that at that moment he "found out" that some of the Disputed Domain Names were not yet purchased. The Respondent asserts that he then informed Mr. Tunaman about this and was ordered by Mr. Tunaman to purchase all the Disputed Domain Names.

The Respondent claims that it was agreed in the Contract that "like all other expenses we would deduct the domain name fees and Iíll transfer the names in the next monthís payment." The Panel infers this to mean that the Respondent was under the belief that if he purchased the Disputed Domain Names he would be reimbursed the registration costs by Yenisoluk CSA and once reimbursed he would transfer the Disputed Domain Names. It is not clear to the Panel who the Disputed Domain Names would be transferred to.

The Respondent further claims that soon thereafter he was fired by Yenisoluk CSA and was subsequently not paid for debts owed to him by Yenisoluk CSA. The Respondent indicated in his Response that he has instigated legal proceedings against Yenisoluk CSA for the recovery of debts owing, including the recovery of the expenses associated with the registration of the Disputed Domain Names.

The Respondent further claims that the Court found in favour of him. The Panel has reviewed the Court decision annexed to the Response and confirms that the Court Proceedings were between the Respondent and the Respondentís employer being Yenisoluk CSA and was a claim heard in the 7th Employment Law Court in Istanbul, Turkey.

The Respondent asserts that the decision of the Court has been appealed by Yenisoluk CSA and as a consequence the Respondent has chosen not to transfer the Disputed Domain Names.

The Respondent asserts that he has attempted discussions with the Complainant with regard to the potential transfer of the Disputed Domain Names, but these discussions have been unsuccessful.

 

7. Discussion and Findings

7.1 To succeed the Complainant must prove each of the following elements:

(i) that each 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 each domain name; and

(iii) that each domain name has been registered and is being used in bad faith.

7.2 Identical or Confusingly Similar Domain Name

The Disputed Domain Names are:

<reckittbenckiser.net>
<reckittbenckiser.org>
<reckitt-benckiser.net>
<reckitt-benckiser.org>
<reckitt.net>
<reckittprofessional.net>
<reckittprofessional.org>
<benckiser.net>

<benckiser.org>.

The relevant parts of the Disputed Domain Names are the words RECKITT and BENCKISER. The Disputed Domain Names are identical to various trademark registrations for the words RECKITT and BENCKISER which the evidence shows have been registered by the Complainant on an extensive international scale. Each of the Disputed Domain Names is also confusingly similar to those trademark registrations.

Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(i) of the Policy in respect of each of the Disputed Domain Names.

7.3 The Respondent has no rights or legitimate interests in the Disputed Domain Names.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Names for the reasons set out in paragraph 5.2 above.

In respect of each of the Respondentís counter arguments which are set out in paragraph 6.2 above, the Panel finds as follows:

(i) the Panel does not accept the Respondentís counter-argument that he has a legitimate interest in the Disputed Domain Names because he purchased the Disputed Domain Names on the order of Mr. Tunaman and pursuant to the Contract of employment.

The panel notes the assertions of the Respondent with regard to the role of Mr. Tunaman where the Respondent has implied that Mr. Tunaman, pursuant to the Contract, warranted that he would be reimbursed for the costs associated with the registration for the Disputed Domain Names and once the costs were reimbursed the Disputed Domain Names would be transferred.

The Panel has reviewed the Contract and has concluded that the Contract is between the Respondent and Yenisoluk CSA (a Turkish advertising agency), as the Respondentís employer. The Contract does not provide any reference to the Complainant and refers only to the tasks to be undertaken by the Respondent in respect to his employment as a video editing technician at Yenisoluk CSA. It cannot be inferred from the Contract that the Respondent is entitled to register in his own name domain names corresponding to trade marks owned by clients of Yenisoluk CSA and receive payment in consideration for the transfer of domain names, such as those that are the subject of this decision.

The Contract certainly does NOT show that the Respondent has ever been an employee of the Complainant or any of its associated companies. At best it shows that the Respondent may have been employed by an advertising agency that was in turn retained by the Complainant. Rather than support the Respondentís case, the Contract tends to negate it.

The Respondentís registration of the Disputed Domain Names, even if done in his capacity as an employee of Yenisoluk CSA on behalf of its client, the Complainant, would not give the Respondent any rights or legitimate interests in the Disputed Domain Names.

(ii) the Panel has considered the Respondentís claim that he has instituted legal proceedings against Yenisoluk CSA for the recovery of debts owing, including the recovery of the expenses associated with the registration of the Disputed Domain Names. The Panel refers to the document entitled "Turkish Republic Istanbul 7th Employment Law Court - Verdict" provided by the Respondent. Any success the Respondent may have had in legal proceedings against Yenisoluk CSA is hardly supportive of the Respondentís position - it may show that he misdirected his frustration at the Complainant instead of his former employer.

The Panel notes paragraph 18(a) of the Policy but is satisfied that the legal proceedings are between the Respondent and Yenisoluk CSA and not the Complainant.

In any event, the decision of the 7th Employment Law Court of Turkey, which the Panel notes has been appealed by Yenisoluk CSA, makes no reference to the Complainant and is merely a dispute in relation to unpaid salary owed by Yenisoluk CSA to the Complainant and has no affect on these Proceedings.

The Respondent has not been able to prove that he has a right to the Disputed Domain Names and in fact admitted in his email dated March 7, 2002, to the Complainant (Annexure M to the Response) that the Disputed Domain Names do not belong to him.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy in respect of each of the Disputed Domain Names.

7.4 The Disputed Domain Names have been registered and are being used in bad faith

The Complainant asserts that the Disputed Domain Names have been registered and are being used by the Respondent in bad faith for the reasons set out in paragraph 5.3 above.

In short, the Complainant has argued that the Respondent, by his own admission, was fully aware of the Complainantís trade marks and their reputation at the time of his registration of the Disputed Domain Names and could have had no good intention except to sell the names to the Complainant. The Complainant further argued that the Respondent registered the Disputed Domain Names with a view to profiting from their sale. In support of this contention, the Complainant provided evidence of the Respondent offering to sell the Disputed Domain Names on the auction site <afternic.com>. Furthermore, the Complainant provided evidence at Annexure H to the Complaint (email correspondence between the parties to this proceeding, dated December 7, 2001) that the Respondent offered to transfer the Disputed Domain Names for an amount that exceeded the reasonable out-of-pocket expenses associated with such a transfer.

The Respondent made 3 principal responses:

(i) that it was written in the Contract of employment that the domain name fees would be accounted for by his employer and once accounted for the domain names would be transferred. The Panel was unable to so interpret the Contract of Employment and consequently is not satisfied that the Respondent registered the Disputed Domain Names in accordance with the requirements and obligations of his Contract of employment. In any event the Complainant was not a party to the Contract of employment and no inference can be made from the Contract or the description of the Respondentís role at Yenisoluk CSA that a duty of his employment was to purchase domain names for the clients of Yenisoluk CSA.

(ii) The Respondent referred to the decision of the 7th Employment Law Court of Turkey. The Panel notes that this decision is between the Respondent and Yenisoluk CSA and makes no reference to the Complainant. The Panel sees no reason to take into consideration the decision of the Employment Law Court in this proceeding.

(iii) The Panel notes the Respondentís contentions that he placed the Disputed Domain Names on sale on the Internet due to the unresolved problems with the Complainant and Yenisoluk CSA. In the Panelís view the act of placing a domain name, which by the Respondentís own admission belonged to the Complainant, on a web site for auction, constitutes an act of bad faith.

The Panel is of the view that the Disputed Domain Names were registered by the Respondent in circumstances which constitute bad faith. The Panel finds that the Respondent registered the Disputed Domain Names for the purpose of selling, renting or otherwise transferring the Disputed Domain Name registrations to the Complainant for valuable consideration in excess of his out-of-pocket expenses. The Panel notes that:

- the Complainant was a client of the Respondentís employer. The Respondent was fully aware of the reputation of the RECKITT and BENCKISER marks and therefore well aware of the value of the Disputed Domain Names;

- the Respondent has been in a position, for a period of more than twelve months, to transfer the Disputed Domain Names in consideration for his reasonable out-of-pocket expenses but has failed to do so;

- The Respondent has provided no evidence to support his contention that he registered the Disputed Domain Names in good faith pursuant to his employment by Yenisoluk CSA; and

- the Respondent has offered to sell the Disputed Domain Names through a web site while at same time making various admissions that he has no right to the Disputed Domain Names and acknowledging that the Complainant has legitimate rights and interest in respect of the Disputed Domain Names. The Respondent has disavowed any legitimate right or interest in each of the Disputed Domain Names.

Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy in respect of each of the Disputed Domain Names.

 

8. Decision

The Panel has found that all of the requirements of paragraph 4(a) of the policy have been proven by the Complainant in respect of each of the Disputed Domain Names. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that all of the following domain names be transferred by Domain Bank, Inc to the Complainant:

<reckittbenckiser.net>
<reckittbenckiser.org>
<reckitt-benckiser.net>
<reckitt-benckiser.org>
<reckitt.net>
<reckittprofessional.net>
<reckittprofessional.org>
<benckiser.net>
<benckiser.org>.


 

Philip N. Argy
Sole Panelist

Dated: June 11, 2002