WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Gillette Company v. Kwon Y J
Case No. D2012-0301
1. The Parties
The Complainant is The Gillette Company of Boston, Massachusetts, United States of America, represented by Studio Barbero, Italy.
The Respondent is Kwon Y J of Uiwang-si, Gyeonggi-do, Republic of Korea (“Korea”).
2. The Domain Name and Registrar
The disputed domain name <duracellpowermat.com> is registered with Korea Server Hosting Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to Korea Server Hosting Inc. a request for registrar verification in connection with the disputed domain name. On February 17, 2012, Korea Server Hosting 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.
The Center appointed Christophe Imhoos as the sole panelist in this matter on March 30, 2012. 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.
4. Factual Background
The Complainant is The Gillette Company, a leading global supplier of products under various brands. In 1996, it acquired Duracell International Inc, the world’s leading manufacturer and marketer of high-performance alkaline batteries. In 2005, The Gillette Company was then merged into the group Procter & Gamble.
The Complainant, directly or through the sister companies owned by Procter & Gamble, is the owner of thousands of national and international trademark registrations worldwide (Annex 4.1 to the Complaint), including the following:
- Korean Registration for DURACELL, No. 4000534590000 filed on August 18, 1976, registered on January 24, 1978 and duly renewed thereafter in class 09 for electrochemical cells and batteries (Annex 4.2 to the Complaint);
- Korean Registration for DURACELL, No. 4004590670000 filed on August 08, 1998, registered on November 19, 1999 and duly renewed thereafter in class 11 for flashlights (Annex 4.3 to the Complaint);
- United States Registration for DURACELL, No. 0793273, filed on July 17, 1964, registered on July 27, 1965 and duly renewed thereafter in class 9 (Annex 4.4 to the Complaint);
- United States Registration for DURACELL, No. 3144722 filed on May 05, 2005, registered on September 19, 2006 and duly renewed thereafter in class 9 (Annex 4.5 to the Complaint).
The mark DURACELL has been registered also as International and European trademark: such registrations are in the name of the Complainant’s sister company Duracell Batteries BVBA (the International registration N. 546915 registered on November 28, 1989 and the European Registration No. 64527 registered on November 04, 1998 according to Annexes 4.6 and 4.7 to the Complaint).
The DURACELL trademark is applied to a broad range of products, including alkaline batteries, rechargeable batteries and chargers. The trademark DURACELL has been used in many countries, including Korea, where the Respondent is based, for over 45 years in connection with the production and commercialization of Alkaline batteries and related products (Annex 6 to the Complaint).
As a matter of fact, on September 14, 2011 a joint venture regarding wireless small charging mats and receivers for cell phones and other small electronics, called Duracell Powermat LLC, between Procter & Gamble and Powermat Technologies Ltd, was announced (Annexes 5.1 and 5.2 to the Complaint). With this new joint venture, in force as of January 1, 2012, the two companies aim at turning wireless charging devices, currently a niche market, into a broader market.
In order to further protect its trademark DURACELL also on the Internet, the Complainant, directly or by means of its mother/sister companies, has registered over 100 domain names consisting of or comprising the word “duracell” (including variations thereof) as domain names under several different Top-Level Domains. The list of domain names registered by the Complainant and its sister companies include, amongst others, <duracell.com>, <duracell.kr>, <duracellpowermat.us>, <duracellwirelesscharge.com>, <duracellwirelesscharging.com> and <duracelpowermat.com> (Annexes 8.1 and 8.2 to the Complaint).
The Respondent registered the disputed domain name <duracellpowermat.com> on September 14, 2011, date of announcement of the Joint Venture and until recently the disputed domain name has been redirected to a “coming soon” web page; at the time of the drafting of the Complaint, the disputed domain name <duracellpowermat.com> was redirected to a website identical to the one of the company Powermat Technologies Ltd, which is one of the parties of the joint venture Duracell Powermat LLC (Annex 9 to the Complaint).
In the meantime, as soon as the Complainant became aware of such a registration it sent via email a Cease and Desist letter on November 24, 2011 requesting the Respondent to transfer the disputed domain name (Annex 10 to the Complaint). On November 25, 2011, the Respondent replied to the Cease and Desist letter stating that it was not available to transfer the disputed domain name (Annex 11 to the Complaint). Upon a second and third communications of the Complainant to the Respondent with a view to amicably settling the matter, in a counter-offer of the Complainant’s offer of USD 1,000, the Respondent finally indicated the amount of 20,000, without specifying the currency, as appropriate value of the disputed domain name (Annex 12 to the Complaint).
5. Parties’ Contentions
The Complainant’s arguments are mainly the following:
(i) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name registered by the Respondent is confusingly similar to trademarks in which the Complainant has rights, as per copies of trademark registrations submitted.
In the instant case the disputed domain name incorporates the whole of the Complainant’s DURACELL trademark. The fact that the disputed domain name includes the third party trademark does not affect the confusing similarity (Hoffmann-La Roche Inc. v. Charlie Kalopungi, WIPO Case No. D2010-1826; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699)
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark DURACELL.
Upon information and belief, the Respondent is not commonly known by the disputed domain name as an individual, business or other organization, and “Duracell” is not the family name of the Respondent.
Moreover, the Respondent has not provided to the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
(iii) The disputed domain name was registered and is being used in bad faith.
As to the assessment of the Respondent’s bad faith at the time of registration, in light of the use of the trademark DURACELL since as early as 1965, the amount of advertising and sales of the Complainant’s products worldwide, including Korea, where the Respondent is prima facie presently based, the Respondent could not have possibly ignored the existence of the Complainant’s trademark, confusingly similar to the disputed domain name, when it was registered. It should be taken into consideration also the fact that the DURACELL mark is well-known as a top brand. In addition, it should be noted that the disputed domain name had been registered the very same day of the official announcement of the joint venture Duracell Powermat LLC.
With reference to the bad faith use of the disputed domain name, the Respondent, after having received a Cease and Desist letter by the Complainant, requested a consideration for the disputed domain name to be transferred well in excess of the out-of-pocket costs directly related to the disputed domain name. As additional circumstance evidencing bad faith, the disputed domain name <duracellpowermat.com> has been redirected, as of January 2012, to a website nearly identical to <powermat.com> whose layout clearly imitates the Complainant’s website <duracellpowermatt.us>, in the name of the Complainant’s mother company. Such a conduct demonstrates the Respondent’s purpose to also use the disputed domain name <duracellpowermat.com> to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the endorsement of the above-referenced websites pursuant to paragraph 4(b)(iv) of the Policy; a link present on the website corresponding to the disputed domain name directs users, without any authorization, to the Complainant’s website, www.duracellpowermat.us, therefore increasing the likelihood of association between the Respondent’s website and the official website dedicated to the joint venture.
The Complainant therefore submits that the disputed domain name <duracellpowermat.com> was registered and is being used in bad faith according to paragraphs 4(a)(iii) and 4(b) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark DURACELL, especially in Korea where the Respondent appears to be located.
The Panel follows the Complainant’s view that the fact that the disputed domain name includes the third party trademark does not affect the confusing similarity (and cases cited above).
The Panel finds therefore that the disputed domain is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 and Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).
As rightly pointed out by the Complainant in its Complaint, the latter should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant has not granted any license or otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain name incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the disputed domain name.
The Panel considers that the Complainant has established a prima facie case whereby the Respondent is not using the disputed domain name in connection with a bona fide offer of goods or services.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Anyone of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that 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 owner of the trademark 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 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 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.
As already mentioned, the Respondent did not file any Response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
From the evidence submitted in the Complaint and described above in the Factual Background of this decision, it flows that the Respondent has engaged in a conduct described under paragraph 4(b)(i) of the Policy, i.e. an attempt to sell the disputed domain name <duracellpowermat.com> for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name.
For this reason already, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, without the need to consider any other additional circumstances submitted by the Complainant.
For 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 <duracellpowermat.com> be transferred to the Complainant.
Dated: April 13, 2012