WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playtex Marketing Corporation v. Reserved for Customers, MustNeed.com
Case No. D2005-1301
1. The Parties
The Complainant is Playtex Marketing Corporation, New York, New York, United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Reserved for Customers, MustNeed.com, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <playtex.net> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2005. On December 16, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 17, 2005, Moniker Online Services, LLC 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. 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 December 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2006.
The Center appointed Thomas D. Halket as the Sole Panelist in this matter on January 20, 2006. 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
The following facts have been alleged by Complainant and not disputed by Respondent.
Complainant is the owner in the United States of America and Canada of the well-known trademark PLAYTEX for a broad array of apparel, feminine and child-care products, and gloves. The Complainant’s predecessor in interest, the International Latex Corporation (“International Latex”), first adopted the PLAYTEX trademark in 1935 for rubber gloves. International Latex subsequently entered the women’s foundation garment market, expanding the use of its PLAYTEX trademark to items such as girdles in the 1940s and bras in the 1950s. Complainant, through a series of changes of names, mergers, and assignments, is the ultimate successor-in-interest to all rights of International Latex in the PLAYTEX trademark in the United States of America and Canada. Complainant owns numerous trademark registrations for the PLAYTEX trademark in the United States of America and Canada. The overwhelming majority of these trademark registrations antedate the Respondent’s registration of the Domain Name.
The Complainant owns the domain name <playtex.com> which was registered on March 13, 1996, and antedates the registration of the Domain Name. Complainant operates a website associated with its domain name <playtex.com> providing information and services related to the PLAYTEX branded products.
The Respondent was never licensed, authorized, contracted or otherwise permitted by Complainant in any way to use the PLAYTEX trademark or to apply for any domain name incorporating the PLAYTEX trademark. At no time did the Respondent have authorization from Complainant to register the Domain Name. Respondent’s website does, however, advertise that the Domain Name is for sale.
Respondent has been named in at least seven other UDRP actions. In all of these matters the domain name in question was ordered transferred to the complaining party.
5. Parties’ Contentions
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
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 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 is being used in bad faith.”
Paragraph 4(b) of the Policy provides that for the purposes of Paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you [the Respondent] have registered or you 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 trademark 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 have registered the domain name in order to prevent the owner of the trademark 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you 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 location.”
A. Identical or Confusingly Similar
The Domain Name is clearly identical and confusingly similar to the Complainant’s PLAYTEX trademark. The Domain Name incorporates PLAYTEX and contains no other elements apart from the top level domain designator “.net”. It is well established that mere addition of a, or differences in the, top level of the domain name does not affect the determination of whether it is identical or confusingly similar to Complainant’s use of the word. See, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
B. Rights or Legitimate Interests
There is no evidence that Respondent had or has any rights or legitimate interest in the Domain Name. At no time was the Respondent authorized by Complainant to register or use the Domain Name. Except for the Domain Name itself, there is no evidence that the Respondent ever used the word “playtex” or any word containing PLAYTEX as a trademark, company, business or trade name. Nor does it appear that Respondent is or was commonly known as PLAYTEX or any name containing this word. As the Respondent has not provided any evidence rebutting the Complainant’s prima facie case that it has no rights or legitimate interests in the Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant has claimed and/or alleged that:
(i) Respondent has engaged in a pattern of registering domain names incorporating famous trademarks as domain names;
(ii) Respondent’s registration of domain names incorporating well-known trademarks of third parties suggests that at the time the Respondent registered the Domain Name, the Respondent had knowledge of the Complainant’s trademark;
(iii) in light of Respondent’s attempt to sell the Domain Name and the fame of Complainant’s trademark, it may reasonably be inferred that Respondent is seeking monetary consideration in excess of its expenses for sale of the Domain Name;
(iv) because the Respondent is using Complainant’s well-known trademark as part of the Domain Name to link to a pay-per-click advertising website, the Respondent deliberately seeks to capitalize on the identity or close similarity of the Domain Name to the Complainant’s trademark and to gain revenue therefrom; and
(v) because the Complainant’s trademark had long been used and widely promoted by Complainant and was well known among consumers at the time Respondent registered the Domain Name and because Respondent has registered other domain names containing well-known trademarks, it may reasonably be inferred that Respondent’s registration of the Domain Name with such actual or constructive knowledge of Complainant’s trademark is tantamount to bad faith registration and use pursuant to the Policy.
Complainant cites a number of UDRP decisions which it claims hold that each of these factors by themselves is sufficient evidence of bad faith See, e.g., First Place Financial Corp. v. Mustneed.com, NAF Case No. 493838 for (i); Expedia, Inc. v European Travel Network, WIPO Case No. D2000-0137 for (ii); Government Finance Officers Association v. Mustneed.com c/o Reserved for Customers, NAF Case No. 515511 for (iii) Target Brands, Inc. Bealo Group S.A., NAF Case No. 128684 for (iv); and Chevron Corporation v. Mustneed.com c/o for Customers, Reserved, NAF Case No. 497773 for (v).
The Panel, however, need not decide whether any of these factors taken alone is sufficient to sustain a finding of registration and use in bad faith. Taken together, coupled with the failure of Respondent to provide evidence of any legitimate right to or use of the Domain Name it may have or, indeed, to dispute any of Complainant’s allegations is ample ground for the Panel to conclude that the Respondent has registered and used the Domain Name in bad faith. These factors, taken together, are compelling evidence that Respondent’s registration and use of the Domain Name violate at least paragraphs 4(b)(i), (ii) and (iv) of the Policy.
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, <playtex.net>, be transferred to the Complainant.
Thomas D. Halket
Dated: January 28, 2006