WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pental Limited v. E-Promote
Case No. D2016-0971
1. The Parties
The Complainant is Pental Limited of Melbourne, Australia, represented by Minter Ellison, Australia.
The Respondent is E-Promote of Las Vegas, Nevada, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <pental.com> (the "Domain Name") is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2016.
The Center appointed Ian Lowe as the sole panelist in this matter on June 16, 2016. 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 a major manufacturer and distributor of a range of soap, homecare and personal products in Australia and New Zealand. It was first established in 1954 and is also the owner and manager of a portfolio of market leading businesses across Australia and New Zealand in the homecare and personal product sectors. In 2015, the Complainant had an annual revenue of AUD 81.37 million and had approximately 148 employees. The Complainant currently operates a website at "www.pental.com.au". It is a publicly listed company listed on the Australian Stock Exchange.
The Complainant, through its wholly-owned subsidiary Pental Products Pty Ltd, owns five registered trademarks for the word PENTAL in Australia and New Zealand, including Australia registered trademark number A91,878 PENTAL registered on July 8, 1947 in respect of common soap, soap chips and toilet soap. The Complainant also owns a number of other trademarks registered in Australia, New Zealand and the European Union incorporating the word PENTAL.
The Domain Name was registered on June 20, 2003 and the Respondent appears to have owned the Domain Name since at least June 8, 2005. At the date of the Complaint, the Domain Name resolved to a parking website featuring a series of sponsored hyperlinks to other third-party commercial sites that promote a range of financial, travel, education, health, electronic and insurance products and services.
Investigations by the Complainant indicate that the Respondent is in the business of trading in domain names and is associated with 11,855 other domain names. It has a history of registering domain names that contain the trademarks of others. The Respondent has been the subject of 11 reported proceedings pursuant to the Policy and in each case the Respondent was determined to have registered and used the domain name in bad faith.
In March 2016, in response to an online enquiry by a representative of the Complainant, the Respondent offered to sell the Domain Name to the Complainant for USD 12,500.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its PENTAL trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the trademark PENTAL, by virtue of its various trademark registrations in Australia, New Zealand and the European Union. The Complainant also has significant goodwill and reputation acquired through use of the PENTAL mark for over 60 years, particularly in Australia and New Zealand. Ignoring the generic Top-Level Domain ("gTLD") ".com", the Domain Name is identical to the Complainant's mark. Accordingly, the Panel finds that the Domain Name is identical to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. It asserts that the Respondent is not authorised by the Complainant to use the mark PENTAL. In the Panel's view, the use of a well-known, long-established trademark, that is not a generic term, for a domain name that resolves to a parking page comprising sponsored links to third-party websites, does not give rise to rights or legitimate interests in respect of the domain name. The Respondent has chosen not to respond to the Complaint and not, therefore, to make any attempt to dispel the prima facie case of the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
For the same reasons, the Panel is satisfied that the Respondent registered and has used the Domain Name in bad faith. The Respondent has used the Domain Name, a well-known mark comprising a word with no obvious ordinary meaning, to resolve to a parking page with sponsored links to third-party websites. This indicates to the Panel that the Respondent is likely on the balance of probabilities to have had the Complainant and its rights in the PENTAL mark in mind when it registered the Domain Name. Such use is likely to deceive Internet users into believing that the Domain Name was registered by or with the authority of the Complainant when it was not. Furthermore, the readiness with which the Respondent was prepared to sell the Domain Name to the Complainant for a significant sum when approached, suggests that it had this in mind when registering the Domain Name. This amounts in the Panel's view to paradigm bad faith registration and use for the purposes of paragraph 4(b)(iv) of the Policy. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <pental.com> be transferred to the Complainant.
Date: June 26, 2016