The Complainant is Unilever N.V. of Rotterdam, the Netherlands, represented by Redd Solicitors LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Bilnet Bilg. Paz. Tur. San. Ti. of Sisli, Istanbul, Turkey.
The disputed domain names <elidor.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 2, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On June 2, 2010, Intercosmos Media Group d/b/a directNIC.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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 5, 2010.
The Center appointed Knud Wallberg as the sole panelist in this matter on July 12, 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 Complainant, as part of the Unilever group of companies, is a leading developer, manufacturer and retailer of home, personal care and food products, with over 400 brands currently sold in 150 countries.
The Complainant manufactures and retails a wide range of products in many countries throughout the world. In Turkey and a number of other countries, the Complainant manufactures and sells hair care products under the ELIDOR brand name.
The Complainant owns numerous trade mark registrations throughout the world, including registrations in Turkey, for the word mark ELIDOR as well as other trade marks which incorporate the word “ELIDOR”. The Complainant's registrations cover a range of hair care goods in classes 3 and 5 and the Complainant's earliest trade mark registration in Turkey incorporating word ELIDOR dates back to 1992
The Complainant asserts to have built a substantial reputation in Turkey in the ELIDOR name through use of it in that country which began as long ago as 1973.
The Respondent registered the disputed domain name, <elidor.com>, which is the subject of this Complaint, on October 4, 2001. The Complainant first became aware of the disputed domain name in August 2009, and the Complainant immediately engaged an enquiry agent to contact the Respondent and to attempt to purchase the disputed domain name. As a result of those enquiries, in a telephone conversation with the Complainant's enquiry agent the Respondent indicated that the disputed domain name was for sale for between USD 25,000-30,000. In a later e-mail the Respondent also offered to rent the disputed domain name to the Complainant's enquiry agent at a rate of EUR 700 per month.
The Complainant is the registered owner of a number of trade mark registrations of the mark ELIDOR, which satisfies the threshold requirement of having trade mark rights. Further, the top-level domain, in this case “.com”, is to be ignored when assessing the identity or similarity of a trade mark and a domain name, and consequently the disputed domain name <elidor.com> is identical to the Complainants' registered trade marks.
The Respondent does not host and has, to the Complainant's knowledge, never hosted any website or other online presence using the disputed domain name. As such, the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services.
Neither the Complainant nor any other company in the Unilever Group of companies has authorised the Respondent to use the ELIDOR mark or any confusingly similar mark in any manner at all.
Further, the Respondent has not been commonly known by the disputed domain name before the date of registration.
Also, the word ELIDOR has no ordinary meaning in either English or Turkish and, bearing in mind the Complainant's various trade mark registrations for that word and reputation attaching to it, the strong inference is that it is therefore one which no ordinary trader would legitimately choose unless seeking to create an impression of an association with the Complainant and or/its products.
The circumstances show that the Respondent has registered or acquired the disputed domain name for the purpose of selling, renting or transferring the registration of the disputed domain name to the Complainant, who is the owner of the ELIDOR trade mark, or to a competitor of the Complainant, for valuable consideration exceeding the out-of-pocket costs directly related to the disputed domain name. This is illustrated by the fact that, despite having no legitimate interest in the name and, indeed, having never hosted an website or other on-line offering from the disputed domain name, the Respondent has offered to sell the disputed domain name for USD 25,000-30,000 or to rent it at a rate of EUR 700 per month, figures which far exceed its out-of-pocket costs.
As indicated the Respondent does not host any website or other online offering at the disputed domain name. It is possible, in, certain circumstances, for inactivity by a Respondent to amount to the use of a domain name being in bad faith as first decided in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the case of this Complaint, such a finding is supported by the following factors:
a) The Complainant's ELIDOR trade marks have a strong reputation and are widely known throughout the world, particularly in the region in which the Respondent is located;
b) The Respondent has no right or legitimate interest in the disputed domain name; and
c) The Respondent has sought to sell or rent the disputed domain name for consideration far exceeding its out of pocket expenses.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the 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 respondent is identical or confusingly similar to a trade mark 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) the domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
The disputed domain name contains the Complainant's distinctive mark ELIDOR with the addition of the “.com” designation. Since the top level designation shall be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is identical to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trade mark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent has been using – or rather not using – the disputed domain name (see below), does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf. 4(c) of the Policy are also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith;
i) circumstances indicating that the domain name holder has registered or has 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 holder's documented out-of-pocket costs directly related to the domain name; or
ii) the domain name holder 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 domain name holder has engaged in a pattern of such conduct; or
iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's web site or location or of a product or service on the domain name holder's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered or is being used in bad faith.
Given the extent of use of the Complainant's trade mark including in the country of residence of the Respondent and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's mark. In the Panel's view, this is underlined by the Respondent's offer to sell or rent the disputed domain name to the Complainant (see above).
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Respondent has not been using the disputed domain name actively. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP:
“the concept of a domain name ‘being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the [r]espondent to amount to the domain name being used in bad faith”.
The Panel finds that the Respondent's lack of use including bona fide use of the disputed domain name is likely to disrupt the business of the Complainant since it could, in this Panel's view, give those Internet users that will look for information on the Complainant and its products on the Internet the impression that the Complainant is not present on the Internet. The Panel also notes that the disputed domain name incorporates a widely known trade mark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <elidor.com> be transferred to the Complainant.
Dated: July 14, 2010