The Complainant is Reckitt Benckiser Plc, Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Lewis Silkin, United Kingdom.
The Respondent is Eunsook Wi, Seoul, Republic of Korea, represented by Moonhee Joh, Republic of Korea.
The disputed domain name <rb.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2009. On February 24, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On February 25, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 22, 2009. The Response was filed with the Center on March 22, 2009.
The Center appointed Brigitte Joppich, James Bridgeman and Frederick M. Abbott as panelists in this matter on April 24, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
On April 28, 2009, the Panel issued Procedural Order No. 1 to the parties, requesting the Complainant to submit further evidence as to why the Complainant owned common law trade mark rights and why the Respondent should have known of the Complainant's rights in the RB mark at the time of the registration of the disputed domain name. The Complainant filed a supplemental submission in reply to Procedural Order No. 1 and the Respondent, who had been invited to submit a reply thereto, filed a response, both within the set time frame.
The Complainant is a leading worldwide manufacturer and supplier of household, healthcare, personal care and pharmaceutical products. The Complainant was created through the merger of the UK Company Reckitt & Colman plc and the Dutch group Benckiser N.V. in December 1999. Through the network of companies within the Complainant's corporate group, the Complainant supplies its household cleaning, pharmaceutical and consumer healthcare products (some of which carry well-known brands like CALGONIT or NUROFEN) to 180 countries and has operations in over 60 countries in Europe, the Americas, Asia, Australasia, the Middle East, and Africa. The Complainant's code on the FTSE 100 share index (comprising an index of the 100 most highly capitalised companies listed on the London Stock Exchange) is “RB”.
RB is used as a mark by the Complainant (e.g. on its company website and on corporate advertising) and by third parties (e.g. the London Stock Exchange and the financial industry) in connection with the Complainant's commercial activities in the household, health care and personal care sectors. The Complainant also owns the following domain names: <rbplc.com>, <rbbrands.com>, <rb.co.at>, <r-b.co.at>, <r-b.com.es>, <rbidealink.com>, and <rbposition.com>.
The Respondent first registered the disputed domain name on June 6, 2000. While the domain name was used to resolve to a “click-through” advertising website at least in August 2005 and February 2006, it currently resolves to an inactive website.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is supposed to be confusingly similar to the Complainant's worldwide unregistered (common law) rights in the combination RB (the “RB Mark”), in which the Complainant has acquired substantial goodwill and reputation. The Complainant contends that “RB” is the distinctive element of its marks and that the gTLD “.net” is ignored by the consumer in evaluating the domain name as an indicator of source.
(2) The Respondent is not currently using or commonly known under, never has used or been commonly known under, and has no bona fide intent to use or be commonly known under the name “RB” or any term or phrase including “RB” as a part of its name, service mark, or trade mark, except in connection with the registration of the disputed domain name. Furthermore, the fact that such domain name has resolved to an inactive website since 2006 confirms that the Respondent is not using it in connection with a bona fide offering of goods or services. The Respondent is rather using the disputed domain name misleadingly to divert consumers or to tarnish the RB Mark. Indeed, the fact that the disputed domain name currently resolves to an inactive webpage is supposed to indicate the Respondent's desire to block such name from registration by the Complainant.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Complainant alleges that due to the worldwide publicity generated around the incorporation of the Complainant in 1999, the Respondent must have been aware of the Complainant's anticipated use of the RB Mark as an abbreviated form of its company name prior to the registration of the disputed domain name in 2000. The Respondent registered the disputed domain name in order to block the Complainant from registering the domain name on its own behalf and therefore in bad faith.
As to bad faith use, the Respondent is supposed to be engaged in a pattern of conduct whereby the Respondent registered domain names corresponding to well known names or trade marks in which the Respondent has no apparent rights (e.g. <iplayboy.com>, <playboji.com>, <myipod.org>, and <koreatimes.org>) and which resolve to “click-through” advertising pages. Furthermore, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant as well as to disparage and tarnish the Complainant and its trade marks. Finally, when the disputed domain name linked to an active website, the Respondent used it to generate revenue through the presence of sponsored links to a variety of unrelated third party websites. Finally, in the opinion of the Complainant, the Respondent's passive holding also amounts to acting in bad faith, inter alia as the Respondent provided incorrect contact details for use as WhoIs data.
The Respondent claims that the Complaint is an abuse of the UDRP and asks the Panel to make a finding of reverse domain name hijacking.
(1) The Respondent contends that the Complainant has no rights in the RB Mark as it used the trade mark RECKITT BENCKISER from March 15, 2000 and later on, in 2009 only, registered the trade mark RB RECKITT BENCKISER. Moreover, the Complainant registered the code RB with the London Stock Exchange only on October 23, 2007, and the use of such code is limited. Allegedly, the evidence submitted by the Complainant is not sufficient to establish common law trade mark rights in the acronym “RB”. Moreover, the Respondent blames the Complainant for sending emails to domain name owners (including the Complainant) expressing its intent to purchase their domain names and later on presents their replies as evidence of bad faith. Finally, the widespread recognition of “RB” as an acronym for Reckitt Benckiser - allegedly evidenced by the results of search engines - is misleading as “RB” in the first place indicates Rubidium, a chemical element.
(2) The Respondent registered the disputed domain name to do online business, i.e. to realize its “Red Bird project”, an online multimedia company called “rbMedia”. The formal launching of such business has repeatedly been delayed. The domain name <rbmedia.net> has also been registered by the Respondent.
(3) The Respondent finally contends that the disputed domain name, comprising only two letters, stands for a multitude of abbreviations. As to trade mark acronyms “RB”, the most famous one allegedly indicates the mark RED BULL. According to the Respondent, nobody owns exclusive rights in the mark RB. At the time the website at <rb.net> was active, the Respondent only tried to check the traffic of the disputed domain name, and it would even have been the Respondent's right to purposely re-direct such traffic in order to monetize its property.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; and
(ii) the 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.
The first issue to be dealt with is the fact that the Complainant does not own registered trade mark rights in RB but claims to enjoy common law trade mark rights in this acronym, based on its own use and use by third parties of RB in connection with the Complainant's commercial activities.
It is consensus view that common law trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322).
Given the fact, that RB is used as a mark in commerce by the Complainant and third parties, the Panel is satisfied that the Complainant has established common law trade mark rights in the RB Mark, at least in the United Kingdom, for purposes of this proceeding.
The second level of the disputed domain name is identical to the Complainant's RB Mark. Therefore, the disputed domain name is identical to the Complainant's mark - it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trade mark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The question of priority of the Complainant's trade mark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy, as registration of a domain name before a complainant acquires corresponding trade mark rights does not prevent a finding of identity or confusing similarity: the UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544).
Furthermore, once the fact of trade mark rights in some jurisdiction is established, the territorial scope of the Complainant's rights and the goods and/or services protected by such rights are irrelevant when finding rights in a mark for purposes of the UDRP (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Question; Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661).
In the light of the Panel's finding under the head of “Bad Faith” (cf. C. below) it is not necessary for the Panel to cast a decision in this regard.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
Having carefully considered all facts and material presented by the parties to the Panel in this case (including in particular the supplemental submissions of both sides as requested by the Panel), on balance of evidence, the Panel is not convinced that the domain name was registered by the Respondent on June 6, 2000 in bad faith, mainly for the following reasons:
- The Complainant provided evidence that it is listed with the FTSE 100 share index comprising an index of the 100 most highly capitalised companies listed on the London Stock Exchange under the acronym “RB”. The identification code was apparently effective as of December 20, 1999. However, the Listing/Admission to Trading is dated only October 23, 2007.
- The Complainant has shown that it currently refers to itself as “RB” and that third parties use the name “RB” to designate the Complainant. However, the Complainant did not supply any evidence that it was known in commerce under the acronym “RB” at the time of the registration of the disputed domain name in the year 2000. The mere fact that the LSE assigned the code “RB” to the Complainant in 1999 is not sufficient in the view of the Panel to infer knowledge of the Respondent and thus bad faith registration.
- The disputed domain name was registered on June 6, 2000, only months after the merger of the UK Company Reckitt & Colman plc and the Dutch group Benckiser N.V in December 1999 little time had elapsed during which the Complainant's LSE code could have become a well-known mark.
- At the same time, this is not a typical merger case where a complainant establishes broad media coverage that is likely to have come to the attention of the respondent (cf. Cliffe Dekker, Inc.and Hofmeyr Herbstein & Gihwala, Inc. v. Information Services, Brian Evans, WIPO Case No. D2008-1327; BINOLI GmbH v. Henrik Drehmann-Westermann, WIPO Case No. D2008-1964). The Respondent in this case is located in the Republic of Korea, while the Complainant has its headquarters in the United Kingdom. The Complainant has neither demonstrated business activities in the Republic of Korea in the year 2000, when the disputed domain name was registered, nor contended that it was well known in the Republic of Korea then (or even that is well known there now).
- “RB” has, as most other two-letter-acronyms, various meanings and is not only referring to the Complainant. While some of the Complainant's trade marks, such as CLEARASIL, NUROFEN, CALGON or VANISH, might qualify as well-known marks, proof has not been established that the Complainant itself, as a company, is well-known under the acronym “RB” (the website at “http://en.wikipedia.org/wiki/RB”, providing information on different meanings of “RB”, does not mention the Complainant).
Therefore, in the Panel's view, the Complainant's submissions are not sufficient to establish that the Respondent knew of any possible rights of the Complainant in its RB Mark on June 6, 2000 and that he registered the disputed domain name in bad faith:
Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established. This Complaint must therefore be rejected.
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the present case, where the Complainant owns if limited common law trade mark rights identical to the second level domain name, there is no room for a reverse domain name hijacking order.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: May 20, 2009