WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Reckitt Benckiser plc
v.
Noah, Madoud Bob, a/k/a Alfred Renud a/k/a WeiBo Chen a/k/a Bruno Da Silva a/k/a Mr. Ducon

Case No. D2002-0293

 

1. The Parties

Complainant is Reckitt Benckiser plc, Dansome Lane, Hull, HU8 7DS, United Kingdom.

Respondent is Mr. Noah, Madoud Bob, a/k/a Alfred Renud a/k/a WeiBo Chen a/k/a Bruno Da Silva a/k/a Mr. Ducon, address given as 123 Rue, Ville, CA 90210, United States of America.

 

2. The Domain Name and Registrar

The Domain Name at issue is <airwick.com>.

The Registrar of the Domain Name is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, Canada M6K 3MI.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint by e-mail on March 27, 2002, and in hard copy on April 5, 2002 (four copies), and April 15, 2002 (original). On March 28, 2002, the Center acknowledged receipt of the Complaint.

On April 3, 2002, the Center sent to Register.com a request for verification of registration data. On the same day, Register.com informed the Center that it was not the registrar of the Domain Name, and that the Domain Name was registered with Tucows, Inc. On April 4, 2002, the Center sent to Tucows a request for verification of registration data. On the same day, Tucows confirmed that it was the Registrar of the Domain Name, and that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied to the Domain Name. Tucows mentioned that the Domain Name was not registered in the name of Respondent. According to the contact details provided by the Registrar, no name of registrant was provided. However, the administrative contact was Mr. Ducon. On April 8, 2002, the Center requested that Complainant file an Amendment to the Complaint to reflect the fact that Register.com was not the Registrar. The Center received the Amendment to the Complaint by e-mail on April 10, 2002, and in hardcopy on April 15, 2002.

On April 16, 2002, the Center verified that the Complaint satisfied the formal requirements of the Policy, 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"). The Panelist agrees with the Centerís assessment that the Complaint complies with the formal requirements.

Also on April 16, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent by e-mail and post. The Notification indicated that the Response was due on May 6, 2002.

On May 8, 2002, the Center sent a Notification of Respondent Default.

On May 24, 2002, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Anne-Virginie Gaide ("the Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Panelist. The Panelist is satisfied that the Administrative Panel was properly constituted, and that the language of the procedure is English.

On June 10, 2002, the Panelist issued a Procedural Order, by which the Complainant was requested to:

1. submit copy of any existing certificate of registration for the trademark AIRWICK (or AIR-WICK) in the name of Reckitt Benckiser plc;

2. indicate whether Complainant itself has used or is using the trademark AIRWICK;

3. explain why Complainant believes that Reckitt Benckiser plc may derive rights from the registrations issued in the U.S.A. in the name of Reckitt & Colman Inc. or Reckitt Benckiser Inc., or from any registration issued elsewhere in the name of any of the companies mentioned in Annex A to the Complaint.

Complainant sent a Response to the Procedural Order on June 25, 2002, within the extended deadline imparted by the Panelist. Complainant filed a Further Response to the Procedural Order on July 3, 2002. The Panelist has decided not to take this submission into account, as it was not filed in a timely fashion. Respondent did not file any observations on Complainantís response to the Procedural Order within the deadline imparted by the Panelist or thereafter.

 

4. Factual background

Complainant, Reckitt Benckiser plc, is the result of a merger between Reckitt & Colman plc of the United Kingdom and Benckiser N.V. of the Netherlands.

Complainant and its associated companies have been since many years engaged in the business of manufacturing and distributing household cleaning products as well as health and personal care products. Among the products for home care, Complainant manufactures and distributes a solidified air freshening deodorant and a liquid air freshening deodorant under the brand name AIRWICK.

Complainant has submitted evidence that the trademark AIRWICK is registered in the United States in relation to solidified air freshening deodorant as well as for devices for diffusing volatile air treating agents (reg. no. 638779, 574016 and 406087). According to the documents attached to the Complaint, trademark nos. 638779 and 574016 appeared to be registered in the name of Reckitt & Colman, Inc., and trademark no. 406087 in the name of Airwick Industries, Inc. With its Response to the Procedural Order of June 10, 2002, Complainant submitted a copy of a Notice of Recordation of Assignment from the US Patent and Trademark Office, dated September 21, 2000, establishing that all three trademarks have been assigned to Reckitt Benckiser, Inc., a Delaware corporation.

The domain name <airwick.com> was registered with Register.com on February 13, 2001.

On October 9, 2001, a person apparently named Alfred Renud sent an e-mail to Ms. Sandra Waller of Reckitt Benckiser plc, with the following text:

"Dear Sandra,

I am the owner of the domain airwick.com and I wonder if you would be interested to get it. Waiting for your reply."

Complainant informed Respondent that it was the owner of the trademark AIRWICK, and started to investigate Respondentís details that could be obtained from the Whois database of Register.com. According to the Whois database, the owner of <airwick.com> was at that time Noah, Madoud Bob, with an address in Angola. Complainant's investigations showed that the information was wrong.

In the course of the following months, the contact information for the Domain Name changed several times. On November 26, 2001, the Domain Name was registered in the name of WeiBo Chen, with an address in China, on February 5, 2002, it was registered in the name of Bruno Da Silva, with an address in Brazil, and on March 26, 2002, it was registered in the name of Mr. Ducon, with an address in the United States of America.

When Complainant found out that the registration details showing Respondent as being based in Angola were incorrect, it informed Register.com thereof and sought its assistance in obtaining accurate contact details from Respondent. The registrar contacted Respondent and requested an update of its contact information. Respondent then changed it and designated as registrant WeiBo Chen with an address in China. Calls from Complainant to the Chinese telephone directory and the Chinese consulate in London showed that the information supplied was fabricated. In December 2001, the registrar promised to cancel the domain name if Respondent did not update his information. However, it appears that Respondent managed to update such information by using the same Chinese details which had been verified to be fictitious. Complainant again submitted evidence to the registrar that the contact information was false. However, the registrar was unwilling to cancel the domain name for an unclear reason.

Complainant decided at some point to make an offer to Respondent (who, according to Complainant, continued to try to persuade it to buy the Domain Name). Respondent instructed Complainant to bid for the name via the auction site <www.afternic.com>. Complainant made an offer to buy the domain name for USD 200. Respondent did not accept this offer, but requested a sum of USD 10'000, in two messages sent to Complainant on February 1, 2002, stating:

"Dear Sheila, I just received an offer for the domain airwick.com for USD 200.--, can you please confirm this from your company, also even if I agree to give you this name I would appreciate an offer that cover my expense and also this would help me to create a small projet to begin a company. The expiry date for airwick.com is also already paid until February 13, 2004, can you please renew your offer for USD 10'000.-- or the best you can do and as you know, the domain will be in your side as soon as I agree the e-mail that was sent to me. With your understanding, do not hesitate to contact me for more information. Regards".

and

"Sandra,

I didn't send you a USD 200.-- offer, I just sent you a copy screen saying that the minimum to make an offer is this price, I do not want you to doubt of me and please understand that as soon as you valid the offer of USD 10'000.-- everything will be clear for you to have your domain quickly."

In a message of February 5, 2002 to Respondent, Complainant replied that it would raise its offer to USD 500 at the most. On the same day, a last message was received from Respondent, stating:

"To thank you, I am waiting for your ultimate offer of USD 1'500.-- to show my last effort to conclude this amicably and the domain will be your and for the future as soon as do it, or will not have anymore contact from me but you will see your domain from one registrar to one registrar and to owner to owner."

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the Domain Name <airwick.com> is identical to a trademark in which Complainant has rights.

It further contends that the Respondent has not used the Domain Name for a bona fide offering of goods or services nor is there evidence that he intends to do so. Complainant states that Respondent does not appear to make a legitimate non-commercial or fair use of the Domain Name and that Respondent has never been commonly known as Airwick. Complainant finally contends that Respondent is not a licensee of Complainant nor is he authorized to use Complainant's mark.

Complainant contends that the Domain Name has been registered and used in bad faith. Indeed, given the reputation of the AIRWICK mark, Respondent had to be aware of this mark at the time of registration and could have had no good intention except to sell this name to Complainant. Complainant states that the price of USD 10'000 that was requested by Respondent far exceeds the out-of-pocket expenses incurred by him. Finally, it is submitted that Respondent's pattern of behavior in constantly providing false address information was an attempt to avoid detection by Complainant and to force Complainant to deal with him on his own terms, a conduct that demonstrates bad faith registration and use of the Domain Name.

B. Respondent

Respondent did not respond to the Complaint and is therefore in default.

 

6. Discussions and Findings

According to paragraph 4(a) of the Policy, Complainant must show that:

i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii) The Domain Name has been registered and is being used in bad faith.

i) Identity or confusing similarity with a trademark on which Complainant has rights

The Domain Name <airwick.com> is identical to the trademark AIRWICK registered in the name of Reckitt Benckiser, Inc., a Delaware corporation.

In the Procedural Order of June 10, 2002, the Panelist requested Complainant to explain why it believed that it could derive rights from registrations issued in the name of Reckitt Benckiser, Inc., or from any registration issued in the name of the companies mentioned in the listing of trademark applications and registrations attached to the Complaint.

In its response of June 25, 2002, to the Procedural Order, Complainant alleged that Reckitt Benckiser, Inc., was a wholly owned subsidiary of Reckitt Benckiser plc, and that any use of the trademark by a subsidiary should be considered as use by Complainant, since ultimate ownership of the trademark vested in Complainant.

Complainant did not submit any document evidencing that it owns all the shares of Reckitt Benckiser, Inc. However, in view of the fact that Reckitt Benckiser, Inc., and Reckitt Benckiser plc have the same name (except for the mention of the companyís legal form), and that Respondent has not contested this contention, the Panelist sees no reason to doubt this allegation and therefore admits it as true.

The Policy requires that the domain name be identical or confusingly similar to a trademark in which the complainant has rights. It is not required that the complainant be the registered owner of the trademark at issue. If, as in the present case, the Complainant controls the registered owner of the trademark, it is justified to allow it to file a complaint under the Policy. Indeed, in such a situation, it must be considered that Complainant has rights on the trademark, since it would be able to control its ownership and for example have it transferred to it if it wanted to.

In conclusion, the Panelist considers that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy.

ii) Absence of rights or legitimate interests of Respondent in the Domain Name

Nothing in the case file indicates that Respondent would have rights or legitimate interests to the name AIRWICK.

Respondent has not submitted a response to the Complaint and is in default. According to the paragraph 14(b) of the Rules, the Panelist may draw the inferences that she finds appropriate in case the Respondent is in default.

In the present case, the Panelist infers from Respondentís default that Respondent has no rights or legitimate interests in the Domain Name and that Complainant has therefore satisfied the requirement set forth in paragraph 4(a)(ii) of the Policy.

iii) Registration and use of the domain name in bad faith

According to paragraph 4(b)(i) of the Policy, the condition of registration and use in bad faith shall be satisfied if Complainant demonstrates that Respondent has registered the Domain Name primarily for the purpose of selling it to Complainant or to a competitor of Complainant for a valuable consideration in excess of its out-of-pocket expenses directly related to the Domain Name.

In the present case, Respondent contacted Complainant on October 9, 2001, to inform it that he held the domain name and to ask whether Complainant was "interested to get it". It is clear from the text of Respondentís message that Respondent meant to sell the domain name to Complainant. As to the amount that Respondent had in mind, it is revealed in its e-mail of February 1, 2002, sent to Complainant after Complainant had made an offer for USD 200 on the auction site <www.afternic.com>. Respondent stated in this message:

"Dear Sheila, I just received an offer for the domain airwick.com for USD 200.--, can you please confirm this from your company, also even if I agree to give you this name I would appreciate an offer that cover my expense and also this would help me to create a small projet to begin a company. The expiry date for airwick.com is also already paid until February 13, 2004, can you please renew your offer for USD 10'000.-- or the best you can do and as you know, the domain will be in your side as soon as I agree the e-mail that was sent to me. With your understanding, do not hesitate to contact me for more information. Regards".

This amount was again mentioned in a second e-mail sent the same day to Complainant, stating:

"Sandra,

I didn't sent you a USD 200.-- offer, I just sent you a copy screen saying that the minimum to make an offer is this price, I do not want you to doubt of me and please understand that as soon as you valid the offer of USD 10'000.-- everything will be clear for you to have your domain quickly."

When Complainant refused and said that its last offer would be USD 500, Respondent insisted on receiving at least USD 1'500, in an e-mail of February 5, 2002 to Complainant, stating:

"To thank you, I am waiting for your ultimate offer of USD 1'500.-- to show my last effort to conclude this amicably and the domain will be your and for the future as soon as do it, or will not have anymore contact from me but you will see your domain from one registrar to one registrar and to owner to owner".

In view of these e-mails, it is clear that Respondent registered the Domain Name primarily for selling it to Complainant for an amount exceeding its out-of-pocket expenses, and that accordingly the Domain Name has been registered and used in bad faith.

Moreover, Respondent's behavior consisting in repeatedly changing its contact details and providing only false information is in itself an abuse of the registration process, and can be considered as use of the domain name in bad faith.

In consequence, the Panelist considers that the Complainant has satisfied the requirement set forth in paragraph 4(a)(iii) of the Policy.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name <airwick.com> registered by Respondent is identical to a trademark in which Complainant has rights, that Respondent does not have any rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Administrative Panel orders that the Domain Name <airwick.com> be transferred to Complainant.

 


 

Anne-Virginie Gaide
Sole Panelist

Dated: July 10, 2002