WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.V. Nutricia v. Me, Jesse Emia
Case No. D2012-1419
1. The Parties
The Complainant is N.V. Nutricia of Zoetemeer, Netherlands, represented by Dreyfus & associés, France.
The Respondent is Me, Jesse Emia of South Perth, Australia.
2. The Domain Name and Registrar
The disputed domain name <ekaricare.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2012. On July 13, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on July 20, 2012.
The Center verified that the Complaint together with the amended 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 July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2012. On July 25, 2012, the Center sent a communication to the Parties regarding the expiry of the disputed domain name.
The Center appointed Petter Rindforth as the sole panelist in this matter on August 22, 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant, established in 1901, is specialized in baby food and medical nutrition. The Complainant holds the trademark KARICARE, registered in a number of countries such as:
KARICARE (word), International Registration No. 1 100 459, registered October 19, 2011 for goods in Classes 5 and 29;
KARICARE (word), Australian national registration No. 937 613, registered December 12, 2002 for goods in Class 29; and
KARICARE (word), Australian national registration No. 498 149, registered October 25, 1988 for goods in Class 5.
Additionally, the Complainant has registered a number of domain names including the trademark KARICARE, such as:
<karicare.co>, <nutriciakaricare.com>, <karicareclub.com>, <clubkaricare.com>, <karicare.net.cn> and <karicareclub.co.nz>.
The disputed domain name <ekaricare.com> was registered on October 2, 2010. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant describes the history of the company as well as of the trademark KARICARE, summarizing that the Complainant has become number 1 in Europe in the sector of infant nutrition and number 2 in the world, and that the KARICARE product – an infant and toddler nutrition formula - is highly distinctive and widely known.
The trademark KARICARE was developed in 1993, as a combination of the word “Kari” from the place name Karitane, a small town near Dunedin in the South Island of New Zealand, and the word “Care”.
The disputed domain name has been used to direct towards a website containing a non-official presentation of the product of KARICARE and suggesting to purchase products. The “contact us” link leaded Internet users to believe that they could contact the Complainant, which was false. According to the Complainant, it was impossible for Internet users to know that the Complainant was not behind the website.
Prior to the present UDRP proceeding, the Complainant made some efforts to resolve this matter amicably. On November 23, 2010, the Complainant sent a cease and desist letter to the Respondent as well as to the web host. The host shortly deactivated the website after the reception of the Complainant’s letter. The Respondent replied, asserting that he had removed the website but refusing to cancel the disputed domain name.
The Complainant states that the disputed domain name is confusingly similar to the KARICARE trademark, only adding the letter “e” and therewith taking advantage of the phenomenon of mistyping Internet addresses by Internet users (so called “typosquatting”).
Further, the Complainant argues that the Respondent has no rights or legitimate interests in respect of <ekaricare.com>, as the Respondent has not been authorized to register and use any domain name incorporating the Complainant’s trademark, is not affiliated with the Complainant in any way, and is not commonly known by the disputed domain name or made a noncommercial or fair use of <ekaricare.com>.
The Complainant points to the fact that the registration of the KARICARE trademarks in Australia preceded the registration of the disputed domain name and that KARICARE has no special meaning in any language.
The addition of the letter “e” seems to be a reference to the well-known expression “e commerce”, which corresponds to a type of business model using the Internet.
Finally, the Complainant argues that the disputed domain name was both registered and is being used in bad faith. The Complainant states that it is a worldwide leader in the field of healthy nutrition, baby and medical food and that a trademark search at the date of the registration of the disputed domain name would have revealed the Complainant’s trademark registrations. Taking into account the worldwide reputation of the Complainant and its trademark, the website before it was deactivated by the host, the Complainant is positive that the Respondent was aware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name.
It seems obvious that, as from the date of registration of the disputed domain name, the Respondent’s intentions were at least to create confusion between the Respondent and the Complainant’s products and websites.
The website of the Respondent used to contain a presentation of the KARICARE products as well as mentions and links such as “All your shopping needs for genuine karicare gold range produces”, “contact us”, creating a likelihood of confusion for the Complainant’s consumers who could believe that <ekaricare.com> resolved to an official website selling authentic products online. The Respondent used the website to mislead Internet users and consumers into believing that they were consulting an official website.
The Complainant requests that the Panel issue a decision that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark 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.
A. Identical or Confusingly Similar
The Complainant is the owner of the KARICARE trademark, registered and well known in a number of countries, including Australia – the home country of the Respondent.
The relevant part of the disputed domain name is “ekaricare”. The addition of the generic Top-Level Domain (“gTLD”) “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Panel concludes that the disputed domain name consists of the Complainant’s trademark KARICARE, with the addition of the letter “e” in front of the word “karicare”.
The addition of “e” in front of another entity’s trademark in creating the disputed domain name does not alter the disputed domain name in a way that avoids confusion. Moreover, as pointed out by the Complainant, the relevant public and visitors to the Respondent’s website may conclude that <ekaricare.com> is the official electronic version of information of the goods and services provided by the Complainant, see Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522 (holding that the prefix “e” has become a generic or common descriptive term used to identify electronic commerce activity).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark KARICARE.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark KARICARE. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in <ekaricare.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent’s use of the disputed domain name on the website with links and references such as “All your shopping needs for genuine karicare gold range produces”, “contact us” was an obvious attempt to mislead customers seeking for the Complainant’s goods and website to believe that the disputed domain name and website was the official online boutique of the Complainant. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy / Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As the Complainant has described and proved, the trademark KARICARE is well known, distinctive and the trademark registrations are covering, among other countries, Australia – the home country of the Respondent. See N.V. Nutricia v. Moniker Privacy Services / Jorge Romero, WIPO Case No. D2011-0215 (“Complainant’s products are widely recognized in relation to baby nutrition and feeding”. And “Respondent likely knows Complainant’s internationally recognized products and services. Complainant’s reputation, products and services well preceded Respondent’s registration of the disputed domain name.”)
Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
The Panel – considering the fact that <ekaricare.com> was used for a web site with links and references related to the Complainant and the Complainant’s goods – draws the conclusion that the addition of the letter “e” to KARICARE in the disputed domain name, was not done in order to create a new and completely different domain name, but instead in order to give Internet users the wrong impression that <ekaricare.com> was the official e-commerce site of the Complainant. See Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”); see also Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261.
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant.
Thus, the Panel concludes that the disputed domain name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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 <ekaricare.com> be cancelled.
Dated: September 3, 2012