Complainants are Unilever PLC and Unilever N.V., of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) (hereinafter referred to jointly and severally as “Complainant”).
Respondents are Umair Sheikh, Domain names, Micronix, Essential Links, Pemac, AAR Communications, INT, abc, PMSS, of Lahore, Punjab, Pakistan (hereinafter referred to jointly and severally as “Respondent”).
The domain names at issue <unileverchina.com>, <unilevergermany.com>, <unilevergulf.com>, <unileverireland.com>, <unileverjapan.com>, <unileverpakistanfoods.com>, <unileversingapore.com>, <unileversouthafrica.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2008. On November 21, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On November 24, 2008, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 3, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2008. The informal Response was filed with the Center on December 23, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 12, 2009. 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.
Complainant is the owner of UNILEVER trademark registrations in the United Kingdom, the United States of America, and Europe. (Complaint, Annexes 5, 6, and 7.) The earliest of these registrations dates back to May 1965. Complainant is also the parent company of the Unilever group of companies. Complainant is one of the world's leading developers, manufacturers and retailers of home, personal care and food products, with over 400 brands sold in 150 countries. Complainant was formed in 1930, by the merger of Lever Brothers (United Kingdom with Margarine Unie (the Netherlands). Complainant began using the UNILEVER mark in commerce in the United Kingdom more than 70 years ago. Complainant currently employs over 174,000 people in 100 countries. For the fiscal year ending 2007, Complainant had gross worldwide sales of approximately 40 billion Euros. (Complaint, Annex 4.)
Complainant also owns numerous domain names incorporating its UNILEVER mark, including <unilever.com>, <unilever.co.uk>, and <unilever.us>. (Complaint, Annexes 8 and 9.) The domain names are used to resolve to websites which provide information concerning Complainant and its products. (Complaint, Annexes 8 and 9.)
Most of the domain names at issue were registered on December 20, 2007, except <unileverpakistanfoods.com> which was registered on April 12, 2008. The registrant of <unileversouthafrica> is shown as Rafaqat, giving an email address of “email@example.com”. The registrant of <unileverireland.com> is shown as zubair, giving an email address of “firstname.lastname@example.org”, and listing an address of Micronix, Lahore, Lahore, Punjab, PK 54000. The registrant of <unileversingapore.com> is shown as atif, giving an email address of “email@example.com”. The registrant of the domain name <unilverjapan.com> is shown as mariyam, giving an email address of “firstname.lastname@example.org”. The domain name <unilevergulf.com> is shown as Masood, giving an email address at “email@example.com”. The registrant of the domain name <unileverpakistanfoods.com> is shown as Umair Sheikh, giving an email address of “firstname.lastname@example.org”. The registrant of <unileverchina.com> is shown as Umair Sheikh, giving an email address of “email@example.com”. The registrant of <unilevergermany.com> is shown as Iram, giving an email address of “firstname.lastname@example.org”. (Complaint, Annex 2.)
There are a number of common factors in the above registrations as listed in WhoIs. All of the addresses omit street names and numbers. All of the addresses given are for Lahore, Punjab, PK 54000. All of the registrations list two domain servers, all in the same order: “wind.contoloye.com” and “alpha.controloye.com”. All use the same Registration Service Provider. All were registered on the same date, except <unileverpakistanfoods.com>.
Two of the domain names are registered in the name of Umair Sheikh (<unileverpakistanfoods.com> and <unileverchina.com>). A third domain name gives an email address of the alleged registrant as email@example.com. Complainant has corresponded with Respondent Umair Sheikh. In that correspondence Umair Sheikh gave his telephone number as the same exact telephone number as that listed in the WhoIs for the registrants and contacts for <unileverchina.com> and <unileverjapan.com>. (Complaint, Annexes 2 and 13.)
Umair Sheikh is identified as the Managing Director of Strategic Marketing Private Limited of Lahore, having an email address of “firstname.lastname@example.org”. (Complaint, Annex 11.) On November 20, 2007, Complainant's counsel contacted Umair Sheikh at the above email address offering to purchase the domain name <unileverpakistan.com> for a nominal consideration, and otherwise threatening to initiate a UDRP action. (Complaint, Annex 12.) After some negotiation, Respondent Umair Sheikh agreed to sell the domain name <unileverpakistan.com> to complainant for USD 2,500. Id.
On April 2, 2008, Umair Sheikh of Strategic Marketing (Pvt.) Ltd. contacted Complainant's counsel, referenced their previous correspondence, and offered to enter into negotiations to see the domain name <unileverpakistanfoods.com> to Complainant. When Complainant's counsel said that it had no interest in that domain name, Respondent Umair Sheikh sent another email, offering to enter into negotiations to sell <unileverireland.com>. Complainant's counsel asked Respondent Umair Sheikh if he could provide “a detailed list of all the domain names you own that contain Unilever's Intellectual Property rights so that these can be considered all at the same time rather than receiving individual requests from you.” (Complaint, Annex 13.)
On May 27, 2008, Respondent Umair Sheikh sent Complainant's counsel an email in which he stated: “Please find below the complete list of domain names that we own for your perusal which might attract you for your organization.
Please ask if you have any further queries
(Complaint, Annex 14.)
Following receipt of the above email, Complainant sent Respondent Umair Sheikh a demand letter, demanding that the domain names at issue be transferred to Complainant (Complaint, Annex 15.) By email dated July 7, 2008, Respondent Umair Sheikh stated that he only owned the registrations of <unileverpakistanfoods> and <unileverireland> and that the other domain names “are not in my custody but within my close group.” (Complaint, Annex 18.) Respondent Umair Sheikh said that he was willing to sell the two domain names he had registered to Complainant and that he could ask “the close group” to transfer the domain names to Complainant on the same terms. Complaint, Annex 18.
Complainant contends that the domain names at issue are under the control of Respondent Umair Sheikh and that he is the registrant of all the domain names at issue, that the domain names at issue are identical or confusingly similar to trade marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent Umair Sheikh filed an informal Response in this matter and he contends that as the domain names at issue are registered under different names each of the domain names should be the subject of separate UDRP proceedings and alleges that “Strategic Marketing Private Limited is a web based services provided company and it registered the domain names on the customer request.” Respondent Umair Sheikh presents no evidence in support of this latter assertion.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the panel is to use in determining the dispute: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Complainants Unilever PLC and Unilever N.V. are both owners of the marks UNILEVER in various jurisdictions. Where more than one party has an interest in a trademark it may be proper to have multiple complainants. CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407. Accordingly, the Panel finds that Complainants Unilever PLC and Unilever N.V. are proper parties Complainant.
While Complainants have named multiple parties as Respondent per the registration information contained in the WhoIs, Complainants have contended that Respondent Umair Sheikh controls the domain names at issue and should be treated as the sole Respondent in this matter.
The Panel notes that Respondent Umair Sheikh admits that he registered the domain names at issue, although he contends he registered them at the request of parties identified as registrants in the WhoIs. All of the domain names were registered on the same day, except <unileverpakistanfoods.com>. The domain names were all connected with the same identified servers and the same Registration Service Provider. All of the registrations list Lahore, Punjab, PK 54000 as the registrant's address. Some of the registrations give Respondent Umair Sheikh's telephone number as the registrant's telephone number, and some of the registrations give Respondent Umair Sheikh's email as the registrant's email.
Complainant alleges that Respondent Umair Sheikh effectively controls the domain names at issue, and Respondent Umair Sheikh does not deny this allegation. In an email dated May 27, 2008, Respondent Umair Sheikh asserts that the domain names at issue are owned by him. In a later email, while denying that he is the owner of all of the domain names at issue, Respondent Umair Sheikh indicates that he can arrange the sale of all of the domain names.
Based on all of the above, the Panel finds that the proper party Respondent in the present case is Umair Sheikh.
Respondent has added to Complainant's UNILEVER trademark in the domain names at issue common geographical terms and additionally, in the case of one domain name, the common English word “foods”. Domain names which incorporate a complainant's mark and add geographical or common words to the mark are generally found to be confusingly similar to the mark held by the complainant. InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (<indiainfospace.com> found confusingly similar to complainant's INFOSPACE trademarks); GA MODEFINE S.A. v. AES OPTICS, WIPO Case No. D2000-0306 (<armani-sunglasses.com> found confusingly similar to complainant's ARMANI trademarks). Accordingly, the Panel finds that the domain names at issue are confusingly similar to Complainant's UNILEVER trademarks.
The consensus view of WIPO panelists concerning the burden of establishing lack of a respondent's rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1. In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain names at issue, and Respondent has failed to assert any such rights. Complainant has not authorized or licensed Respondent to use its UNILEVER mark. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue.
Complainant's trademarks are widely known, and it is implausible to believe that anyone registering domain names in the present circumstances containing Complainant's marks could have any reason to believe that the domain names could be used in good faith. Respondent gave incorrect and incomplete contact information when registering the domain names at issue. Respondent has not attempted to use any of the domain names since they were registered and offers no explanation for his failure to make use of the domain names. Accordingly, the Panel finds that this constitutes bad faith registration and passive use under all the facts of this case. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
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 names, <unilevergulf.com>, <unileverireland.com>, <unileverpakistanfoods.com>, <unileversingapore.com>, <unileversouthafrica.com>, <unileverchina.com>, <unilevergermany.com>, and <unileverjapan.com> be transferred to the Complainants.
M. Scott Donahey
Dated: January 28, 2009