WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reckitt Benckiser (UK) Ltd., Reckitt & Colman (Overseas) Ltd. v. Phayze Inc.
Case No. D2003-0199
1. The Parties
The Complainants are Reckitt Benckiser (UK) Ltd. and Reckitt & Colman (Overseas) Ltd. both of Hull, United Kingdom of Great Britain and Northern Ireland, represented by Laytons Solicitors of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Phayze Inc. of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <harpics4you.com> is registered with IDR Internet Domain Registry Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2003. On March 13, 2003, the Center transmitted by email to IDR Internet Domain Registry Ltd. a request for registrar verification in connection with the domain name at issue. On March 22, 2003, IDR Internet Domain Registry Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On March 26, 2003, Complainants made a supplemental filing. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 15, 2003.
The Center appointed Leon Trakman as the sole panelist in this matter on May 15, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background and Partiesí Contentions
Reckitt Benckiser (UK) Ltd. and Reckitt & Colman (Overseas) Ltd., together with other companies which are part of the Reckitt Benckiser Plc Group (the parent company of both Complainants), are the proprietors of registered trade marks in different jurisdictions which comprise the word HARPIC. Complainants and other companies within the Reckitt Benckiser Plc Group are also proprietors of yet other registered trade marks in different jurisdictions in which the word HARPIC is the dominant feature.
Complainantsí mark is used in connection with the manufacture, marketing and selling of household bleach and disinfectant products. (Copies of registration details from the UK Trade Mark Registry web site, together with a table listing all worldwide registrations were attached to the Complaint).
Complainants are the proprietors of numerous trademarks for leading household products. They contend that that they spent a substantial amount of money developing, advertising and promoting their HARPIC product they allege has been used since approximately 1920.
Complainants claim that Reckitt enjoys extensive and widespread goodwill and repute in their product and mark worldwide and the HARPIC mark has become exclusively associated with them.
(i) Identical / Confusingly Similar to Trade Mark
Complainants allege that they have rights in the HARPIC mark. They allege further that, insofar as the whole of the HARPIC mark appears in the Respondentís <harpics4you.com> domain name, that Respondentís domain name is identical or confusingly similar to the Complainantsí trademark. They contend that this is especially so given that the remainder of the domain name is comprised of the descriptive words "4" and "YOU". They maintain that these words add nothing to the domain name to distinguish it from the Complainantsí mark, and the HARPIC mark is the distinctive feature of the domain name.
(ii) No Rights / Legitimate Interests
Complainants allege that they have neither licensed nor otherwise permitted the Respondent to use the domain name nor the trademark in relation to their pornographic web site. They contend further, that Respondent has no rights or legitimate interests in respect of the domain name because the Respondentís business has no connection with the Complainants, nor with the name HARPIC. They argue that Respondent does not trade under this name nor offer goods or services under this name and has not been and is not commonly known under this name.
Complainants add further, that on February 13, 2003, they placed Respondent on notice as to their rights and requested that Respondent refrain from infringing the Complainantsí rights and transfer the domain name forthwith. (Complainants attach a copy of this letter).
(iii) Registration and Use in Bad Faith
Complainants allege that the domain name should be considered as having been registered and used in bad faith by the Respondent because
(i) Respondent registered the domain name in order to prevent the Complainants from reflecting their mark in a corresponding domain name and has engaged in a pattern of such conduct;
(ii) Respondent is using the domain name to attract for commercial gain Internet users to their [sic: its] web site, by creating a likelihood of confusion with Complainantsí mark as to the source, sponsorship, affiliation or endorsement of their web site or services on their web site; and
(iii) Respondent is not making a legitimate or fair use of the domain name, but rather intends to make commercial gain by misleadingly diverting consumers to their web site and tarnishing Complainantsí HARPIC trade mark
In support of these allegations, Complainants contends as follows:
In regard to the first ground, Complainants refer the Panel to the WIPO case of Ultimate Electronics Inc. v. Phayze Inc., WIPO Case No. D2002-0851 (November 3, 2000), in which the Panel found that the same Respondent used the domain name <ultimatelectronics.com> to re-route Internet users to the same "hanky-panky-college.com" web site as in the instant case. The Complainant in that case was owner of the trade mark "ULTIMATE ELECTRONICS" and was successful in proving that the same Respondent, Phayze Inc., had no rights or legitimate interests in the domain name and the registration and use of the domain name was in bad faith. Complainants submit that the facts of the Ultimate Electronics case are identical to the facts in the instant case. Complainants submit further that this is further evidence of the Respondentís pattern of registering domain names that incorporate famous trademarks and that prevent the owners of such marks from registering the domain names of their choice.
In regard to the second ground, Complainants submit that by incorporating the HARPIC trade mark in their domain name, a greater volume of Internet traffic is diverted to Respondentís pornographic web site and that Respondent is thereby likely to receive greater commercial gain through the advertisements linked to their web site. Complainants allege further, that Internet users typing the name "HARPIC" into an Internet search engine and finding themselves being diverted to Respondentís web site are likely to be confused as to whether Respondentís web site is in some way sponsored, affiliated or endorsed by Complainants.
In regard to the third ground, Complainants submit that Respondent is not using the domain name for a legitimate commercial purpose, but in fact is intending to divert misleadingly consumers to their web site or to tarnish the trade mark of the Complainants. In particular, the Complainants refer the Panel to the comments of the Panel in the Ultimate Electronics case and in particular to the last paragraph in Complainantís contentions on "Rights or Legitimate Interests" in which the Panel states that other WIPO Panels have found that using domain names to offer pornography-related web sites and links to other pornographic web sites is not a legitimate non-commercial use or fair use of the disputed domain names.
Based on these arguments, Complainants submit that the Respondent is in the instant case using a domain name which is similar to Complainantsí trademark, that Respondent does not have legitimate rights in <harpics4you.com>, and that the domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainantsí contentions.
5. Discussion and Findings
The Panel finds for the Complainants on all grounds.
A. Identical or Confusingly Similar
The disputed domain name <harpics4you.com> is confusingly similar to the Complainantsí trademark. The Panel agrees with Complainants in substance. "HARPIC" is the distinctive feature of the domain name. The remainder of the domain name is comprised of the descriptive words "4" and "YOU". While the Panel does not agree with Complainants that these descriptive words add "nothing" to the name, the Panel nevertheless agrees with Complainants that the addition of these words fails adequately to distinguish Respondentís domain name from Complainantsí mark.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name. Respondentís business has no connection with Complainants, nor with the name "HARPIC". Complainants have not licensed nor otherwise permitted the Respondent to use the domain name nor the trade mark. Respondent does not trade under this name nor offer goods or services under this name. Nor is Respondent commonly known under this name.
C. Registered and Used in Bad Faith
Respondent has registered and used the disputed domain name in bad faith. In particular, there is evidence, in prior WIPO panel proceedings, that Respondent has engaged in a pattern of conduct in which it has used a confusingly similar domain name to a Complainantís trade mark. In particular, a prior Panel has determined that such use constituted an unlawful and bad faith use. It is also evident that Respondent has perpetuated that pattern of bad faith conduct in the instant case, in using another confusingly similar domain name in which it has no right or other lawful interest. Moreover, Complainants clearly placed Respondent on notice as to Complainantsí rights. Complainants also requested that Respondent refrain from infringing Complainantsí rights and transfer the domain name forthwith. Respondent is in bad faith in persisting to use the domain name in dispute.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <harpics4you.com> be transferred to the Complainants.
Dated: May 19, 2003