The Complainant is Households & Toiletries Manufacturing Co. of Amman, Jordan, represented by SmartLaw Firm, Jordan.
The Respondent is Fathi Kawar, El-Maydan Co. of Amman, Jordan, represented by Tomanová Law Office, Slovakia.
The disputed domain name <higeen.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2009. On December 28, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On December 28, 2009, Network Solutions, LLC 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 January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2010. The Response was filed with the Center on January 24, 2010. On January 25, 2010, the Complainant filed an objection to the Response date and this was answered by the Respondent on the same date. All communications on this subject have been reviewed by the Panel. The Panel considers the Response to have been filed on time.
The Complainant submitted supplemental filings on January 26 and 27, 2010. Additional submissions were made by the Complainant on February 15, 2010 and by the Respondent on February 22, 2010. The Parties were informed that review and consideration of these will be at the sole discretion of the Panel. The Panel has considered the Parties supplemental filings.
The Center appointed Hoda T. Barakat as the sole panelist in this matter on February 18, 2010. 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.
The decision due date was subsequently extended to March 19, 2010.
The Complainant has registered its trademark which includes the word “Higeen” in a number of countries in various classes, including but not limited to cosmetic and toiletry products, and has been using this mark since 1992 on at least products falling under Class 3 of the International Classification System.
The Complainant operates a business in this sector and owns the domain names: <higeen.com.jo> and <higeen.us>. The latter domain name being redirected to the former domain name and both with the insert that the domain name is “Under Construction” while the link actually redirects a user to the company's main website.
The Respondent registered the disputed domain <higeen.com> in December 2004 which merely contains a Network Solutions placeholder Web page for sites “Under Construction” and some sponsored links.
The Complainant claims that it is one of the largest cosmetics companies in Jordan with significant presence in the Middle East and abroad. It claims that it has 42 registrations including the distinctive mark HIGEEN around the world and that the mark was first used by it in 1992 in connection with its products and that it has continued to use this mark for its products over the years across the world with increased sales and marketing spend. The Complainant has other domain names that include the word “Higeen”; namely <higeen.com.jo> and <higeen.us>.
The Complainant claims that its trademark HIGEEN is well-known in many countries for its products and that the Respondent is now using an identical mark in the disputed domain name but has not used the same on products.
The Complainant further asserts no acquiescence due to the service of a cease and desist letter in February 2005 on the Respondent.
The Complainant also claims that the Respondent's Response to the Complaint filed January 24, 2010 should be rejected as it was not signed and therefore has fallen short of the formality requirements of this Complaint.
As regards the 3 UDRP criteria to be met for this Complaint, the Complainant has alleged that the following three criteria are all met as follows:
- The name of the disputed domain is identical to the Complainant's trademark.
- The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is an individual in no way connected to the disputed domain name or the Complainant (by license or other) nor has the Respondent ever been known by the disputed domain name and it is not making any use, commercial or noncommercial, of the disputed domain name but instead is hoping to derive commercial benefit by confusing users or by selling the site to the Complainant.
- The Complainant claims that bad faith can easily be inferred from the registration of its well-known trademark in the disputed domain name 12 years after its first usage of the same by the Complainant while no usage of the disputed domain name has been made by the Respondent to date. This is particularly due to the fact that the Respondent registered the disputed domain name in bad faith as the Respondent must have heard of the Complainant's products by virtue of living in Jordan and by virtue of the strong reputation and advertising of its brand. Also, the Complainant claims that the fact that the Respondent has allegedly offered to sell the disputed domain name to the Complainant is a clear indication of bad faith.
The Respondent has denied the claims of the Complainant regarding the reputation of the Complainant, the well-known nature of the mark in question and of any bad faith. He has further supported his filing of a Response to the Complaint on January 24, 2010 without a signature. The Panel has nevertheless taken content of the Response into account with an appropriate adjustment to the weight accorded to the Respondent's claims.
The Respondent has claimed that the word “Higeen” is firstly generic for hygiene products due to its pronunciation and hence cannot be monopolized by any one party including the Complainant in relation to goods or services related to hygiene. The Respondent denies any knowledge of the Complainant at the time of registration of the disputed domain name and denies that the “HiGeen” products of the Complainant are well-known.
The Respondent claims to have registered the disputed domain name for a non-profit research program on hygiene that he was planning and that takes time and so did not activate the site sooner.
As regards the 3 UDRP criteria, the Respondent has alleged the following:
- The word “Higeen” is generic and not registrable as a trademark by any one party nor is the trademark of the Complainant well-known.
- The Respondent claims that he has rights and legitimate interests in the disputed domain name as a physician with a planned non-profit research program on hygiene and he is not making any use, commercial or noncommercial, of the disputed domain name but instead is hoping to publish research. He further claims that the two parties are not in competition and that his registration of the disputed domain name is non-limiting to the Complainant's business.
- The Respondent claims that he registered the disputed domain name entirely for legitimate purposes and in good faith without any knowledge of the Complainant or its business at the time of registration. Also, the Respondent claims that he never offered to sell the disputed domain name to the Complainant even when pressed to do so by the Complainant. The Respondent further denied any claims of receipt or knowledge of any cease and desist letter from the Complainant at any time.
The disputed domain name is found to be identical to the registered trademark of the Complainant even with any stylized usage or logo additions. This is further to the fact that the Complainant already owns domain names incorporating the word “higeen” and word marks for the same as shown by the evidence submitted by the Complainant.
The Panel has noted the Respondent's claim of intended generic use of the disputed domain name and his claims as regards the generic nature of the term “higeen” and its phonetic similarity to the term “hygiene” as included in the disputed domain name. The Respondent is not assisted in this regard by the apparent absence of use of the domain name in connection with hygiene-connected purposes nor by the lack of evidence from the Respondent of demonstrable preparations. The Panel notes that whatever the Respondent's views may be, the Jordanian trademark office has evidently granted the Complainant trademark rights in the term “higeen”, which the Complainant states it has not authorized the Respondent to use. Whatever the Respondent's ultimate intentions may be (discussed further below), the disputed domain name is not currently being used for a bona fide offering of goods or services, and the Respondent has not provided evidence of demonstrated preparations to do so. The disputed domain name is evidently being used for a commercial purpose at present (in the sense that some sponsored links currently appear on it) and there is no evidence establishing that the Respondent is commonly known as “higeen.com”. Even though the Respondent's name does not have any connection to the disputed domain name, his medical profession and research could lead some support to the Respondent's claims regarding intended use, which the Panel does not find implausible in the circumstances.
For all of these reasons the Panel finds that the Respondent has not succeeded in establishing a right or legitimate interest in the disputed domain name. As regards the Respondent's intention at the time of registration the Panel finds it convenient to discuss this further below.
Having reviewed previous WIPO UDRP decisions, this Panel finds that the Respondent did not register this disputed domain name in bad faith. Factors supporting this conclusion include:
- The Complainant's mark was not proven to be well-known at the time of registration of the disputed domain name, and the Complainant has not been able to persuade the Panel that the Respondent must have known of the Complainant's mark at that time.
- The Complainant has not proven to this Panel's satisfaction that the Respondent intended to trade on the reputation of the Complainant's mark as such, or deceive users that there is a connection of any sort between them.
- The Complainant has not proven the absence of acquiescence as there is no evidence to prove that the Complainant instigated a UDRP complaint or other form of recourse when it did not receive a response to its alleged cease and desist letter in 2005. The Complaint was only filed 5 years after the registration of the disputed domain name when attempts to purchase the same by the Complainant from the Respondent in late 2009 appear to have failed.
This leads this Panel to find that the Complainant has failed to establish the third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
Hoda T. Barakat
Dated: March 18, 2010