WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Duracell Batteries BVBA v. Jaroslav Petruška - HARD & SOFT

Case No. D2011-0145

1. The Parties

The Complainant is Duracell Batteries BVBA of Aarschot, Belgium, represented by Stros & Kusák, Czech Republic.

The Respondent is Jaroslav Petruška - HARD & SOFT of Hlučín, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <duracelldrink.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2011. On January 26, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 26, 2011, Tucows 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 28, 2011. The Respondent did not submit any formal Response. However, the Center received email communications from the Respondent and a third party on February 9, 2011 and February 10, 2011.

The Center appointed Brigitte Joppich as the sole panelist in this matter on March 9, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant has been marketing batteries under the DURACELL brand for many decades. Since December 1992, the Complainant’s products have been imported and distributed in Czechoslovakia and subsequently in the Czech Republic. The DURACELL brand has been ranked as one of the top 100 global brands by INTERBRAND in all rankings from 2001 to 2009.

The Complainant is registered owner of numerous trademark registrations containing the term DURACELL in various territories, including the Czech Republic, where the Respondent is located. The Complainant’s first trademark for DURACELL was registered in the UnitedStates of America with a priority of July 17, 1964. Next to numerous trademarks containing the term DURACELL and additional descriptive elements, the Complainant owns rights in International Registration No. 546915 DURACELL (the “DURACELL Mark”). The Complainant’s trademarks mainly cover products in international classes 9 and 11.

The disputed domain name was registered on January 8, 2008 and has been used in connection with a website offering a DURACELL ENERGY DRINK. The cans used to sell this beverage reflect the Complainant’s distinctive DURACELL design and coloring.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Complainant states that the disputed domain name is confusingly similar to the DURACELL Mark as the additional generic word element “drink” does not decrease the high level of similarity between “duracell” and “duracelldrink”.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as he is not an authorized distributor of the Complainant’s products, as he has not been licensed by the Complainant to use the DURACELL Mark and as the use of the Complainant’s trademarks infringes the Complainant’s rights and the Complainant has never approved such use.

(3) The disputed domain name was registered and is being used in bad faith. The Complainant states that its DURACELL Mark is famous and well-known and that the Respondent must have been aware of the Complainant and its trademarks when registering the disputed domain name. Furthermore, the Complainant states that the graphics on the outside of the Respondent’s products copy the layout of the Complainant’s DURACELL batteries and that it is therefore evident that the disputed domain name was registered by the Respondent solely for the purpose of marketing and promoting its DURACELL energy drinks, while infringing the Complainant’s rights and while free-riding on the reputation of the DURACELL Mark and its recognition by consumers and Internet users. With regard to bad faith use, the Complainant also argues that the Respondent’s use of the disputed domain name constitutes an infringement of the Complainant’s rights in its DURACELL Mark. The Complainant states that it brought a trademark infringement action against the company operating the website at the disputed domain name and that the Town Court of Prague issued a preliminary injunction, ordering the defendant to refrain from using the term DURACELL and the corresponding graphic layout for business purposes. The Complainant further states that this decision was confirmed by the Czech Supreme Court and that the Town Court of Prague issued a final judgment in this matter, ordering the company operating the website at the disputed domain name to refrain from using the term DURACELL on its products and from manufacturing and selling its DURACELL ENERGY DRINKS in the European Union. Furthermore, the Complainant states that the Czech Patent Office declared the Czech national trademark No 446788 “DURACELL ENERGY DRINK +”, which had been registered in the name of the company operating the website at the disputed domain name, invalid and void due to an infringement of the Complainant’s prior rights in its DURACELL Mark. The Complainant finally contends that the Respondent is without any doubt aware of these facts and that he tolerates and supports such violation of the law, which constitutes bad faith under the Policy.

B. Respondent

In its email communications, the Respondent states that he is not the owner of the disputed domain name, but a certain company El NIŇO BEVERAGES, a.s., using the disputed domain name for its website, and that the Respondent’s company only acts as Internet service provider for the domain owner. The Respondent further states that he does not want to be involved in this lawsuit and that all future communication is to be directed directly to the domain owner.

The Center also received email communications from El NIŇO BEVERAGES, a.s., the company operating the website at the disputed domain name. El NIŇO BEVERAGES, a.s denies the Complainant’s assertions in part and contends that the information provided by the Complainant’s representative does not correspond to the facts, and that the Complainant’s representative “already in the past handed up false information to several national institutions”, leading to law suits involving El NIŇO BEVERAGES, a.s. that had not yet been “decided lawfully”. El NIŇO BEVERAGES, a.s. did not provide any evidence as such in these communications in support of its contentions.

6. Discussion and Findings

The first point to be dealt with is the identity of the Respondent.

The Complainant mainly refers to “the Respondent” and does not differentiate between the company operating the website at the disputed domain name, namely El NIŇO BEVERAGES, a.s., and the named Respondent, who is the Internet service provider of El NIŇO BEVERAGES, a.s.

With regard to parking websites, it is well established that a respondent (as the registered owner of the website at a disputed domain name) is ultimately responsible for the information available at the website and for all content posted there, regardless of how and by whom such content was generated (cf. Baccarat SA v. Hiro, WIPO Case No. D2010-1315; Hanover Company Store, LLC v. Domains by Proxy, Inc. / Martha Osborne, WIPO Case No. D2010-1182; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636; State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Owens Corning v. NA, WIPO Case No. D2007-1143; Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381; Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. 1N4 Web Services, WIPO Case No. D2005-0938). The Panel is of the opinion that this principle can also be applied to cases like the present, where an Internet service provider acts in his own name as registrant of a domain name for one of its customers, who then independently generates the content of the website at such domain name. In both scenarios, the legal owner of the domain name passes the responsibility for the content of the website on to a third party without having any further control of his own, which does, however, not exculpate or absolve him from liability. As a consequence, in cases where an Internet service provider decides not to register a domain name in the name of its customer but in its own name, the customer’s use of the disputed domain name can be imputed to the registrant. Therefore, the Panel will treat the named Respondent (being WhoiIs and registrar-confirmed registrant of record) as sole and responsible Respondent in this proceeding.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s highly distinctive and well-established DURACELL Mark in which the Complainant has exclusive rights.

The additional word “drink” following the term DURACELL in the disputed domain name is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “drink” (cf. Formula One Licensing B.V. v. H. Altun, WIPO Case No. D2009-1772 (<fone1drinks.com>); Formula One Licensing B.V. v. Holding Theunisse, WIPO Case No. D2009-0760 (<f1racingdrinks.com>); Research In Motion Limited v. Georges Elias, WIPO Case No. D2009-0218 (<drinkblackberry.com> et al.); Formula One Licensing B.V. v. Louis Theunisse, WIPO Case No. D2008-1633 (<f1drinks.com>); Formula One Licensing B.V. v. Holding Theunisse, WIPO Case No. D2008-1631 (<f1energydrinks.com>)).

Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a 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 domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent in the disputed domain name either. The Respondent himself is only acting as an Internet service provider and has not asserted any own rights or legitimate interests in the disputed domain name. Even if the Respondent was able to rely on rights or legitimate interests of El NIŇO BEVERAGES, a.s. operating the website at the disputed domain name and marketing its “DURACELL ENERGY DRINK”, there would be no rights or legitimate interests under paragraph 4(c)(i) of the Policy present, as the use of the disputed domain name constitutes an infringement of the Complainant’s rights in its DURACELL Marks. The Complainant provided evidence that the Town Court in Prague found that the Respondent’s use of the DURACELL Mark constitutes a trademark infringement. The Respondent and El NIŇO BEVERAGES, a.s. did not provide any evidence that El NIŇO BEVERAGES, a.s. filed an appeal against this decision. It is well established that there can be no bona fide offering of goods and services under a domain name which was registered by infringing third parties’ trademarks (cf. Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123).

Accordingly, the Panel finds that the Complainant proved that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out of pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the DURACELL Marks. El NIŇO BEVERAGES, a.s. used to offer energy drinks at the website under the disputed domain name. The beverage cans used by El NIŇO BEVERAGES, as. in connection with its products imitate the design of the Complainant’s products, including the Complainant’s distinctive DURACELL graphics and the Complainant’s coloring. It is inconceivable that El NIŇO BEVERAGES, a.s. had the disputed domain name registered without knowledge of the Complainant and its rights in the DURACELL Marks. This knowledge can be imputed to the Respondent. Furthermore, the Panel is confident that the Respondent himself was aware of the Complainant and its DURACELL Mark at the time of the registration of the disputed domain name as well based on the fact the DURACELL Mark is well-known as a top brand.

As to bad faith use, by fully incorporating the DURACELL Mark into the disputed domain name and by allowing such domain name to be used in connection with a website offering drinks canned in a way imitating the Complainant’s products and infringing the Complainant’s right in its DURACELL Mark, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. The use and exploitation of trademarks to commercially profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <duracelldrink.com> be cancelled as requested in the Complaint.

Brigitte Joppich
Sole Panelist
Dated: March 22, 2011