WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Duracell Batteries BVBA v. Stanley Myers Limited
Case No. D2011-0822
1. The Parties
The Complainant is Duracell Batteries BVBA, Aarschot, Belgium, represented by D. Young & Co., LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Stanley Myers Limited, Mayfair, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <duracellenergydrink.com> (“the Domain Name”) is registered with Freeparking Domain Registrars, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2011. On May 12, 2011, the Center transmitted by email to Freeparking Domain Registrars, Inc. a request for registrar verification in connection with the Domain Name. On May 24, 2011, Freeparking Domain Registrars, 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 May 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on July 7, 2011. 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.
In the absence of any Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent in accordance with the Rules, paragraph 2(a). The Panel is satisfied that the Center has done so.
4. Factual Background
The following (uncontested) facts are taken from the Complaint.
The word “Duracell” is an invented word, coined by the Complainant. The Complainant’s DURACELL brand is one of the world’s leading battery brands.
The Complainant says that it is the registered proprietor of the word mark DURACELL in the United Kingdom and in numerous other jurisdictions. The Complainant’s United Kingdom registrations of its DURACELL mark are said to be in international classes 9, 10, and 11, covering batteries, lighting apparatus, torches, and various other goods. The earliest of the Complainant’s United Kingdom registrations for the mark DURACELL in respect of batteries, is said to have been filed on July 6, 1965.
The Complainant has not authorized the Respondent to use its DURACELL mark, whether in a domain name or otherwise.
The Respondent and the Domain Name
The Domain Name was created on January 31, 2008.
When the Complaint was filed, the Domain Name resolved to a website (“the Respondent’s website”) consisting of a single page, prominently headed “DURACELL ENERGY DRINK”. Those words were set against a dark rectangular background giving the impression of a typical Duracell battery (for example, immediately to the left of the “D” in “DURACELL” there was a “+” sign, of the kind that battery manufacturers use to indicate the end of the battery at which the positive electrical connection is located). Immediately below the dark rectangle, there were two drink cans, each marked “DURACELL ENERGY DRINK”, each containing the “+” sign immediately to the left of the word “DURACELL”, and each giving the impression of a Duracell battery. In all cases where the expression “+ DURACELL ENERGY DRINK” appeared on the Respondent’s website, the “+ Duracell” appeared in much larger font than the words “ENERGY DRINK”. The words “COMING SOON” appeared at the foot of the Respondent’s website.
According to investigations carried out on the Complainant’s behalf, the Respondent or its founder has been actively involved since 2008 in promoting a “Duracell” energy drink product in certain European countries. The Complainant’s investigators have noted references to this “Duracell Energy Drink” on the websites at “www.packagingdesignarchive.org”, “www.energyfiend.com”, and “www.hoteliermiddleeast.com”. On March 15, 2010, the following text appeared on the website at “www.packagingdesignarchive.org”:
“Duracell can power just about anything, now they can power humans too. It seems that the makers of the world famous batteries have joined the fold of energy drinks such as the likes of Red Bull. The cans look like giant batteries. + Duracell Energy Drink is not in reality a Duracell product but it comes from a European drink maker called El Nino Beverages. The copper-top canned energy drink was introduced in the Czech market since 2008”.
The website at “www.energyfiend.com” has contained the following text (relating to the new “Duracell Energy Drink”):
“…However, unless you live in Europe it will be hard to get your hands on this one. This drink was released in 2008…would be great… especially for those who always wanted to drink battery acid. Now you can pop the top and pretend you are… ”
An article posted online at “www.hoteliermiddleeast.com” on March 1, 2009, referred to the launch of the “UK-based Duracell Energy Drink” at Gulfoods Airport Export, Dubai. In this article, the Respondent’s founder was quoted as having said (in respect of the new “Duracell” energy drink) that “the recognizable brand would be invaluable to establishing the new beverage product”, and that the product had been “officially licensed by Duracell”. The Respondent’s founder was also reported to have said:
“The synergy between the actual battery and energy drink is very simple. The bunnies don’t stop [an apparent reference to a well known television commercial for the Complainant’s batteries], the batteries don’t stop, and that’s the same as [the drink].”
Previous Trademark Proceedings
The Complainant referred to certain trademark opposition and invalidation proceedings in the UK Intellectual Property Office, to which it has been a party. One proceeding was an opposition proceeding relating to a “Duracell” mark which the Respondent had applied for, and the other proceeding was an invalidation proceeding in respect of a “Duracell” mark which the Respondent had succeeded in registering. The Complainant says that the Respondent failed to defend the opposition proceeding, and that the Respondent’s application to register that mark was abandoned. The Respondent also failed to defend the Complainant’s invalidation proceeding, and the relevant mark was removed from the register.
In addition to the United Kingdom opposition and invalidation proceedings, an application by the Complainant to invalidate a “DURACELL” Community Trademark which the Respondent had succeeded in registering, is currently pending. The Respondent also failed to defend this proceeding, and the Complainant is awaiting confirmation that the relevant mark has been removed from the Community Trademarks register.
According to the Complaint, the UK trademark registration was originally in the name of “Duracell Company Limited”, a company having no connection to the Complainant and which, as a result of a successful tribunal application made by the Complainant, no longer exists. The person who was the sole director of “Duracell Company Limited” is the founder of the Respondent, and remains a shareholder in the Respondent.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s DURACELL trademark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent appears to have tried to launch a business under the name “DURACELL ENERGY DRINK”, but has not made any legitimate use of the Domain Name for that business. The use of the DURACELL trademark on the Respondent’s website, and the use on the Respondent’s website of pictures of drink cans which are intended to resemble Duracell batteries, show that such use as the Respondent has made of the Domain Name has not been legitimate.
3. The Domain Name was registered and is being used in bad faith. The Domain Name is closely similar to the Complainant’s DURACELL mark, and “Duracell” is an invented word coined by the Complainant. Apart from the word “Duracell”, the remaining elements of the Domain Name – “energy drink” – are descriptive of the likely goods intended to be promoted through the Respondent’s website. The overriding impression is that the Respondent’s website will offer energy drinks marketed under the name Duracell. Consumers seeing “DURACELL” as the name of an energy drink will assume that these drinks are somehow associated with or connected to the Complainant. That is misleading and grossly incorrect.
The Respondent’s registration of the Domain Name is a bad faith attempt by the Respondent to trade off the Complainant’s reputation in its DURACELL mark, for the Respondent’s monetary gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has sufficiently shown that it is the proprietor of the work mark DURACELL, in the United Kingdom and in numerous other jurisdictions. While it did not produce a copy of any certificate establishing that it holds a registered mark, it did provide details of the numerous DURACELL registered marks it claims to hold, and the Respondent has not disputed those claims. It also produced copies of documents proving substantial use of its DURACELL mark, and copies of decisions of the UK Intellectual Property Office, a Court in the Czech Republic, and a UDRP panel (in the case Duracell Batteries BVBA v. Jaroslav Petruska, WIPO Case No. D2011-0145), all supporting its claim that it is the owner of trademark rights in a DURACELL battery mark. In combination, that evidence adequately establishes for the purposes of paragraph 4(a)(i) of the Policy that the Complainant has rights in a DURACELL trademark.
The incorporation of a complainant’s mark in a disputed domain name is normally regarded by UDRP panels as strong evidence of “confusing similarity”, and in this case the Complainant’s DURACELL mark is included in its entirety in the Domain Name. The words “energy drink” are descriptive or generic, and in the Panel’s view the use of those words in the Domain Name does nothing to counter the impression (created by the use of the Complainant’s DURACELL mark in the Domain Name) that any website at the Domain Name is likely to be operated or endorsed by the Complainant. That impression is only reinforced by the facts that “Duracell” is an invented word, and that the DURACELL mark is widely known around the world.
Having regard to the foregoing considerations, the Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s DURACELL mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, Second Edition (“WIPO Overview, 2.0”) as follows:
“… 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Name is confusingly similar to the Complainant’s DURACELL mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. There is nothing to suggest that the Respondent (or any business run by it) is commonly known by the Domain Name, so there can be no right or legitimate interest under Paragraph 4(c)(ii) of the Policy. Similarly, 4(c)(iii) of the Policy cannot apply – the Respondent’s use of the Domain Name appears to have been in connection with commercial purposes, and (for the reasons set out in Section 6D of this decision) it has clearly been neither “fair” nor “legitimate”.
It appears that the Respondent may have been involved in the marketing of a “Duracell Energy Drink” product in some parts of Europe before the present Complaint was filed. But for the reasons which follow, the Panel is not satisfied, on the evidence which has been produced, that the Respondent’s use of the Domain Name in connection with the marketing of that product has been a use “in connection with a bona fide offering of goods or services”. In those circumstances, there can be no right or legitimate interest under paragraph 4(c)(i) of the Policy.
One matter which has given the Panel cause for pause, is that the Respondent apparently still held a registered DURACELL Community Trademark, in respect of goods in International Classes 32 and 33, when the Complaint was filed. However, in Madonna Ciccone P/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847, the panel said:
“It would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy… To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered…”
Similarly, in Beca Inc v. CanAm Health Source Inc., WIPO Case No. D2004-0298, the panel confirmed that a UDRP panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent for the purpose of assessing that respondent’s bona fides under the UDRP. While the mere fact that a trademark has been applied for or obtained by a respondent may in appropriate cases be a highly relevant consideration, such fact of itself is not an absolute bar to a complainant succeeding in appropriate cases under the Policy.
The Madonna and Beca cases were followed by this Panel in Uponor Oyj and Uponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd, WIPO Case No. D2008-0209.
In this case, the available evidence shows that the Respondent, and others who may have been involved in marketing the “Duracell Energy Drink”, have been trading off the Complainant’s goodwill in its DURACELL mark. Indeed, the Respondent’s founder appears to have acknowledged as much in the statements which were attributed to him by the “www.hoteliermiddleeast.com” website. Such circumstances fall a long way short of demonstrating that the Respondent’s registration of the DURACELL Community Trademark was “obtained in good faith for the purpose of making a bona fide use of the mark” (to borrow from the language used by the panel in the Madonna case; although in that case the relevant trademark had been obtained in Tunisia as opposed to the Community TM registration at issue in the present dispute, the principle is apt). Furthermore, the Complainant has applied to invalidate the Respondent’s Community Trademark registration, and it appears that the Respondent has not opposed that application. Nor has the Respondent provided any answer to the Complainant’s bad faith allegations in this proceeding.
In those circumstances, any Community Trademark registration the Respondent might still hold for a DURACELL mark is insufficient in these UDRP proccedings to provide the Respondent with any right or legitimate interest in the Domain Name for the purposes of Paragraph 4(a)(ii) of the Policy.
The Complainant has proved this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.
The Complainant has also made out its case on this part of the Complaint. It is clear beyond doubt that the Respondent was aware of the Complainant and its DURACELL mark when the Domain Name was registered, and the marketing of the energy drink in cans made to resemble the Complainant’s batteries leaves little room for doubt that the Respondent (and any others who may have been involved in marketing the “Duracell Energy Drink” through the Respondent’s website) have intended consumers to (incorrectly) assume that a trade connection exists between the Respondent and the Complainant. Of course there is no such trade connection. Furthermore, the Complainant’s uncontested evidence is that the Respondent’s founder has falsely claimed that the marketers of the “Duracell Energy Drink” have been licensed by the Complainant to use its mark.
The circumstances just described fall squarely within Paragraph 4(b)(iv) of the Policy – by using the Domain Name (linking it to a website containing promotional material for the “Duracell Energy Drink”), the Respondent has intentionally attempted to attract Internet users to that website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of both the website and the “Duracell Energy Drink” advertised thereon. The sale of “Duracell Energy Drinks” is clearly a commercial endeavor, and in the absence of any Response the Panel can only sensibly infer that this use of the Domain Name by the Respondent has been for commercial gain.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <duracellenergydrink.com>, be transferred to the Complainant.
Date: July 12, 2011