WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Conopco, Inc. d/b/a Unilever v. Privacy Protect/Email Marketing Systems Inc.
Case No. D2014-0830
1. The Parties
The Complainant is Conopco, Inc. d/b/a Unilever of Englewood Cliffs, New Jersey, United States of America (“US”), represented by Duane Morris LLP, US.
The Respondent is Privacy Protect of Broomfield, Colorado, US / Email Marketing Systems Inc. of Saint Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <hellmans.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2014. On May 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2014, the Registrar 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 and confirming the language of the registration agreement as Czech.
On June 5, 2014, the Center notified the Parties in both English and Czech that the language of the Registration Agreement in this case was Czech. On the same day, the Complainant communicated with the Center that it would provide the Complaint translated to Czech.
The Center sent an email communication to the Complainant on June 11, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. On June 16, 2014, the Complainant filed an amendment to the Complaint along with the Czech translations of the Complaint and the amendment.
On June 16 and 17, 2014, the Respondent sent an email to the Center and the Complainant requesting English documents.
The Center verified that the Complaint with amendment 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 June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it will proceed to panel appointment process.
The Center appointed George R. F. Souter as the sole panelist in this matter on July 17, 2014. 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.
Language of the Proceedings
Although the language of the registration agreement is Czech, the Respondent, as stated above, requested English documents. The Panel, under the provisions of paragraph 11(a) of the Rules, decides that the language of the proceedings shall be English.
4. Factual Background
The Complainant and its predecessors have sold its line of mayonnaise and dressing products under its HELMANN’S trademark since at least 1926. Cumulative sales of products under the HELLMANN’S trademark since 1926 exceed USD 20 billion, and over USD 2 billion has been expended internationally in advertising these products.
Evidence of widespread trademark registration of the HELLMANN’S trademark has been supplied to the Panel.
The disputed domain name was registered on September 13, 2013.
5. Parties’ Contentions
The Complainant contends that its HELLMANN’S trademark is well known, and alleges that the disputed domain name is confusingly similar to this trademark.
Given the fame enjoyed by its HELLMANN’S trademark, built up over 85 years, the Complainant alleges that the Respondent can have no bona fide rights to or legitimate interests in the disputed domain name, and cites a number of prior decisions under the UDRP in support of this proposition. Further, the Complainant states that it has never given any licence, permission or authority to the Respondent to own or use the disputed domain name, or to apply for any domain name which incorporates in whole or in part its HELLMANN’S trademark.
The Complainant alleges that the disputed domain name has been registered in bad faith, and that it is being used in bad faith by parking the disputed domain name and featuring advertisements for mayonnaise and dressing products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(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.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the “.com” indicator to be irrelevant in the present case.
The Panel has no doubt that, in spite of the lack of a second “n” as in “Hellmann” and the lack of an apostrophe as in HELLMANN’S (apostrophes being disallowed in domain names), the overall impression of the disputed domain name is sufficiently similar to the Complainant’s HELLMAN’S trademark to be regarded as confusingly similar, and the Panel so finds. The Panel, accordingly, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that an unrebutted prima facie case advanced by a complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s trademark as being well-known. The Panel is of the view that, in the case of a well-known trademark, the finding that the respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which, in the Panel’s view, the disputed domain name was “engineered” to simulate the Complainant’s HELLMANN’S trademark, as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith, and the Panel so finds.
It is well established in prior decisions under the UDRP, with which the Panel agrees, that the use of a website operated under a disputed domain name to host links that advertise competing products to those of a complainant constitutes use in bad faith, and the Panel accordingly finds, in the specific circumstances of the present case, that the disputed domain name is being used in bad faith. The Panel, therefore considers that the Complainant has satisfied the dual test of paragraph 4(a)(iii) 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 <hellmans.com> be transferred to the Complainant.
George R. F. Souter
Date: July, 31, 2014