Complainant is Eveready Battery Company, Inc. of United States of America represented by Bryan Cave, LLP of United States of America.
Respondent is Named Domains of United States of America.
The disputed domain name <energizerrechargeablebatteries.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2009. On October 6, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 6, 2009, GoDaddy.com, Inc. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2009.
The Center appointed Gary J. Nelson as the sole panelist in this matter on November 3, 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 United States Trademark Registration Nos. 1,502,902 for ENERGIZER for batteries and 2,808,821 for ENERGIZER RECHARGEABLE for batteries and battery chargers, among other United States trademark registrations.
Complainant appears to have been using the ENERGIZER trademark since 1955, and the ENERGIZER RECHARGEABLE trademark since November 2001.
Complainant operates a website corresponding to the URL address “www.energizer.com” and owns numerous energizer-based registrations in top level generic and country code level domain names.
Respondent appears to have registered the <energizerrechargeablebatteries.com> domain name on May 2, 2009 and operates a website with multiple click-through opportunities at this URL address.
Complainant has made the following allegations:
Complainant is one of the world's largest manufacturers of dry cell batteries and flashlights, whose operation dates back to 1886 when its predecessor in interest, the National Carbon Company, was formed.
Complainant marketed the very first battery for consumers in 1896, introduced rechargeable nickel-cadmium batteries in 1958, and revolutionized the battery industry in 1959 by introducing the first commercially viable cylindrical alkaline battery.
Today, Complainant markets and sells batteries and related products in more than 150 countries around the world. In the United States alone, Complainant occupies nearly forty percent of the total battery market, and over sixty percent of the market for rechargeable batteries.
Since at least as early as 1955, Complainant has continuously used its ENERGIZER trademark in association with batteries and other related goods. Complainant owns numerous trademark registrations for the ENERGIZER trademark in the United States and throughout the world, including United States Trademark Registration No. 1,502,902. Complainant owns United States Trademark Registration No. 2,808,821 for the ENERGIZER RECHARGEABLE trademark.
Complainant owns over 250 ENERGIZER-based trademarks throughout the world.
Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel to “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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue 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 the disputed domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Complainant owns in excess of 250 ENERGIZER-based trademark registrations throughout the world. As part of this collection, Complainant has registered its ENERGIZER and ENERGIZER RECHARGEABLE trademarks with the United States Patent and Trademark Office. The dates of registration for these registrations (i.e., September 6, 1988 for ENERGIZER; and January 27, 2004 for ENERGIZER RECHARGEABLE) precede the date upon which Respondent registered the disputed domain name (i.e., May 2, 2009).
Therefore, Complainant has established rights in these marks pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The disputed domain name, <energizerrechargeablebatteries.com>, is confusingly similar to Complainant's ENERGIZER and ENERGIZER RECHARGEABLE trademarks because the disputed domain name incorporates the entirety of each of Complainant's ENERGIZER and ENERGIZER RECHARGEABLE marks and merely adds generic or descriptive terms along with the generic top-level “.com,” domain name. Neither the addition of a generic or merely descriptive term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”) and thus Policy, paragraph 4(a)(i) is satisfied).
In regard to Complainant's ENERGIZER trademark, the addition of the words “rechargeable” and “batteries” is insufficient to overcome Complainant's allegation of confusing similarity.
In regard to Complainant's ENERGIZER RECHARGEABLE trademark, the addition of the word “batteries” is insufficient to overcome Complainant's allegation of confusing similarity.
Confusing similarity is especially acute in this case where the generic or merely descriptive terms (i.e., “rechargeable” and “batteries”), simply describes the product provided by Complainant (i.e., rechargeable batteries). See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”).
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has not rights or legitimate interests in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff v. Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000) (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <energizerrechargeablebatteries.com> domain name, or that it is commonly known by any name consisting of, or incorporating the names, “energizer,” “rechargeable,” “batteries,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant's rights in its related trademarks precede Respondent's registration of the disputed domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates Complainant's rights in the ENERGIZER or ENERGIZER RECHARGEABLE trademarks.
The <energizerrechargeablebatteries.com> domain name resolves to a website featuring numerous click-through opportunities for battery or battery-related products. Because Complainant also promotes and distributes battery and battery-related products, the Panel concludes that Respondent is using the contested domain name in association with a website that competes directly with Complainant's business interests. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet User accesses the website at <energizerrechargeablebatteries.com> and clicks on any of the numerous options available. The use of another's well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no legitimate right or interest in the contested domain name.
Accordingly, the Panel concludes Respondent is not using the <energizerrechargeablebatteries.com> domain name in association with a bona fide offering of goods and service pursuant to Policy, Paragraph 4(c)(iii). See America. Online, Inc. v. Xiangfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Complainant has proven the requirement of Policy, Paragraph (a)(ii).
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent is using Complainant's ENERGIZER and ENERGIZER RECHARGEABLE trademarks to attract Internet Users to a website associated with the <energizerrechargeablebatteries.com> domain name. This website features click-through opportunities to products that compete directly with the products sold by Complainant under its ENERGIZER trademark. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.
The Panel also finds that Respondent likely chose the <energizerrechargeablebatteries.com> domain name with full knowledge of Complainant's rights in the ENERGIZER trademark. Respondent's awareness of Complainant's ENERGIZER trademark may be inferred because the mark was registered with the USPTO prior to Respondent's registration of the contested domain name and since the ENERGIZER trademark is well-known in the battery industry. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has proven the requirement of Policy, Paragraph 4(a)(iii).
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, <energizerrechargeablebatteries.com> be transferred to the Complainant.
Gary J. Nelson
Dated: November 3, 2009