WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N.V. Nutricia v. Moniker Privacy Services / Jorge Romero

Case No. D2011-0215

1. The Parties

Complainant is N.V. Nutricia of Zoetermeer, the Netherlands, represented by Dreyfus & associés, France.

The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America/ Jorge Romero of Culiacan, Sinaloa, Mexico.

2. The Domain Name and Registrar

The disputed domain name <karicare.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On February 4, 2011, Moniker Online Services, LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 7, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 10, 2011.

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 February 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 3, 2011.

The Center appointed Leon Trakman 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 the Rules, paragraph 7.

4. Factual Background

Complainant, N.V.Nutricia, specializes in baby food and medical nutrition. It is a subsidiary of Danone, a global company specializing in consumer goods, particularly nutrition in baby food.

The KARICARE trademark is registered as KARICARE and includes the following:

KARICARE Trademark No 217631, New Zealand

KARICARE Trademark No 217632, New Zealand

KARICARE Trademark No 937613, Australia

KARICARE Trademark No 498149, Australia

Complainant also uses various domain names that include the KARICARE trademark, namely:

<karicare.co>

<nutriciakaricare.com>

<karicareclub.com>

<clublaricare.com>

<karicare.net.en>

<karicareclub.co.nz>

The disputed domain name <karicare.com> was registered on August 21, 2005 by Moniker Online Services. The disputed domain name has directed users to a website containing links such as to “baby formula” and “baby feeding bottles”, among other links.

5. Parties’ Contentions

A. Complainant

Complainant contends that its registered trademark is highly distinctive, widely known and reproduced entirely by Respondent in the disputed domain name.

Complainant provides evidence that it is one of the largest producers of infant nutrition products globally.

Products produced upon the trademark, KARICARE, are primarily infant and toddler nutrition formulae that provide a wide range of breast feeding options for mothers, especially where breast feeding is not possible or unduly difficult.

Complainant provides independent evidence that KARICARE products have significant health value.

In support of the wide use of its trademark, Complainant provides details as to its history, its business and its products.

Complainant, N.V.Nutricia, was established in 1901 for the purpose of producing nutritious infant milk to reduce infant mortality in Europe. In 1946, Complainant developed its own line of baby foods which grew into a large international company producing a variety of food types and preparations. In the 1980s Complainant bought Cow & Gate, an English infant formula company, expanding further into Europe and in the 1990s, into Eastern Europe.

Complainant states that the name “Karicare” derives in part from the name of the town, Karitane, in Dunedin, New Zealand which was the home of Dr. Truby King, a leading medical doctor specializing in infant nutrition. Dr. King researched on safe and nutritional balanced formula including milk. She began manufacturing baby formula in 1927 through a non-profit entity, the Karitane Products Society Limited and she wrote widely including books on Mother Care including Feeding and Care of Baby, 1913; and The Expectant Mother and Baby’s First Months, 1916. She also established the Royal Society for the Health of Women and Children, which became known as the Plunker Society.

The Plunker society established the Karitane Home for Babies and Karitane hospitals across New Zealand in which the Karitane method of health care was applied by Karitane nurses.

In 1986, the Karitane range of infant formulae was licensed to Douglas Pharmaceuticals for distribution in New Zealand, Australia and Asia.

In 1993, the trade mark KARICARE was developed. The name consisted of the combination of the word “Kari” from the place name Karitane and the brand Karitane, with the word “Care”. The trade mark name, KARICARE thereafter replaced the original name, Karitane.

In 1996, Nutricia purchased Karicare and its brand. Nutricia continued to manufacture Karicare products in New Zealand.

Complainant alleges in light of this history that its name, including its trade mark and its domain names, are distinctive; that Complainant is internationally associated with health care particularly in relation to infant nutrition and health formula; that the domain name is identical to Complainant’s name; that Respondent has no recognized rights or interest in that name; that Respondent has registered and used that name in bad faith. Complainant requests that the disputed domain name be transferred to it, the Complainant, in consequence of these proceedings.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is identical in all material respects to the Complainant’s trade mark, KARICARE. The only distinguishing feature is the use of the “.com” extension. Decisions interpreting the UDRP have held that, in determining whether a disputed domain name is identical or confusingly similar to a trade mark, the mere addition of, or change in, an extension to a name do not render the disputed domain name dissimilar from the complainant’s name. Indeed, in most instances, a change in the extension of a domain name is the minimum necessary in order for the respondent to register an otherwise identical or confusingly similar domain name. See Gianni Versace S.P.A. v. Nicolino Colonnelli, WIPO Case No. D2008-0570; and ACCOR v. Noldc Inc., WIPO Case No. D2005-0015.

The extent to which a domain name is identical or confusingly similar to a complainant’s name is also determined by the distinctive nature of the name itself. In the instant case, the name “Karicare” is distinctive. It has no dictionary or other meaning that is distinct from Complainant’s name. (See Complaint, Annex 13). This distinctiveness of Complainant’s name further affirms that the disputed domain name violates this first test under the Policy in being identical to and confusingly similar to Complainant’s mark. See AT&T Corp v. William Gormally, WIPO Case No. D2005-0758.

Accordingly, the Panel determines that the dispute domain name is identical to Complainant’s name, other than for the use of “.com” extension in the disputed domain name, and that the disputed domain name is also confusing similar to Complainant’s mark. In anticipation of the issues raised in section “B” below, the Panel will find that the disputed domain name is also likely to mislead users into reasonably believing that the Respondent is authorized by or otherwise affiliated with Complainant or Complainant’s business which is clearly not the case.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no legal rights or legitimate interests in the disputed domain name. Respondent has received neither express nor implied authorization from Complainant to use the disputed domain name. In the Panel’s view, Respondent has no legitimate interest in the domain name. It is not associated in any way with the products or services of Karicare. Nor has Respondent adduced evidence that it has a countervailing interest in the name, such as when that name is identical or similar to Respondent’s surname.

Respondent also has no right to use this distinctive name for the purpose of directing Internet users to a pay-per-click website which has contained links to “baby formula” and “baby feeding bottles”, among others. Such a use of the disputed domain name, as is discussed under section “C” below, is both evidence of an illegitimate use of Complainant’s mark and prima facie evidence of the bad faith registration and use of that name. See Société Nationale des Chemins de Fer Français v. Oxtrid Company, Domains by Proxy, WIPO Case No. D2008-0627; Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449; Pepperdine University v. The CJ Group LLC, WIPO Case No. D2007-1389.

C. Registered and Used in Bad Faith

The Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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. See L’Oreal v. Domain Park Limited, WIPO Case No. D2008-0072; N.V. Nutricia v. SwemirNet Emir Mujezinovic, WIPO Case No. D2009-0876.

Complainant’s products are widely recognized in relation to baby nutrition and feeding. Complainant’s name is highly distinctive. That name is also readily ascertainable using a simple search for the word “karicare” on any established search engine, such as “Google”.

Further evidence of Respondent’s bad faith registration arises from the fact that the services and products to which it directs Internet users at its pay-per-click website are baby feeding and nutrition services. The reference to these links makes it even less possible that Respondent was unaware of Complainant’s name when Respondent registered the disputed domain name.

The Panel finds that Respondent also acted in bad faith in using the disputed domain name. The purpose of that use was clearly to use an identical name to Complainant’s mark so as to direct Internet users to Respondent’s pay-per-click website with the bad faith purpose of exploiting the likely assumption by Internet users that Respondent’s name, products and services were somehow associated with those of Complainant. Whether or not, on accessing such information, Internet users would continue to have that impression is open to question: it may well be that they would realize that Respondent was selling different products and services to those provided by Complainant. However, that does not contradict the finding that Respondent engaged in bad faith use; only that Internet users who were induced by Respondent’s bad faith to access Respondent’s website might realize that Respondent and Complainant were not affiliated. See Compagnie Gervais Danone v. Isaac Simon, WIPO Case No. DFR2007-0030.

Respondent’s bad faith is further attested to in the fact that the purpose of using the disputed domain name was to secure financial gain by bad faith means. The pursuit of financial gain in such circumstances is recognized as a basis for a finding of bad faith use. See F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956.

The single obstacle to Complainant’s argument under section “C” is in failing to proceed with an action against Respondent until seven years after Respondent had registered the disputed domain name. It is likely that Complainant was aware of the disputed domain name for at least some of those years; and that it ought to have been so aware, given the distinctiveness of its name and the products and services that Respondent was attempting to profit from on its website. Given these factors, it is reasonable to hold that what is sauce for the goose should also be sauce for the gander. Complainant should demonstrate its good faith in acting within a reasonable time period after establishing the existence of a disputed domain name in challenging that name. The failure of a complainant to do so could, in appropriate circumstances, constitute acquiescence by that complainant in respect of which it should not afterwards be heard to complain. The issue as to whether and why Complainant’s failed to proceed at an earlier time to protect its intellectual property is not clear on the evidence. Respondent has also not challenged Complainant’s failure so to act earlier Nevertheless, the Panel’s determination is that, notwithstanding that Complainant failed to act for so long despite the likelihood of it being aware both of Respondent’s registration and use of the domain name and its actual or potential harm to Complainant’s reputation and business, ought not to be used to excuse the Respondent from what Respondent clearly intended as a bad faith registration and use of the disputed domain name.

Accordingly, the Panel determines that Respondent registered and used the disputed domain name in bad faith.

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, <karicare.com> be transferred to the Complainant.

Leon Trakman
Sole Panelist
Dated: March 18, 2011