WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kimberly-Clark Worldwide, Inc. v. Domains By Proxy, LLC / Sam Barns
Case No. D2017-1474
1. The Parties
The Complainant is Kimberly-Clark Worldwide, Inc. of Neenah, Wisconsin, United States of America ("United States"), represented by Bates & Bates LLC, United States.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Sam Barns of Las Vegas, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <huggiesrewards.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2017, 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. The Center sent an email communication to the Complainant on August 3, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 9, 2017
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 and 4, the Center formally notified the Respondent of the amended Complaint, and the proceedings commenced on August 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 5, 2017. 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 global company whose brands touch nearly 1 in 4 people every day. The Complainant's HUGGIES-brand diapers and wipes are distributed in 150 countries and are a leading brand of diapers and wipes worldwide. The Complainant offers a HUGGIES reward program for its customers.
The Complainant owns hundreds of trademarks for HUGGIES in numerous jurisdictions worldwide, including in the United States, where the Respondent apparently resides. Specifically, in the United States, the Complainant owns HUGGIES, United States Registration No. 1,078,967, registered on December 6, 1977, for disposable diapers in International Class 25; United States Registration No. 1,380,394, registered on January 28, 1986, for disposable diapers and disposable training pants in International Class 16; and United States Registration No. 1,679,795, registered on March 17, 1992, for baby wipes in International Class 3 (hereinafter referred to as the "HUGGIES Mark").
The Complainant also owns the domain name <huggies.com>, which it registered on March 4, 1996.
The Disputed Domain Name was registered on December 3, 2005. The Disputed Domain Name resolves to an inactive page, and thus, is passively held. The WhoIs result for the Respondent indicates that the Respondent provided false address information to the Registrar.
Prior to commencing this proceeding, the Complainant contacted the Respondent Domains By Proxy, LLC via email to inquire about purchasing the Disputed Domain Name, but did not receive a response.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's HUGGIES Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the HUGGIES Mark.
It is uncontroverted that the Complainant has established rights in the HUGGIES Mark based on longstanding use as well as its trademark registrations for the HUGGIES Mark in the United States and innumerable jurisdictions worldwide. The Disputed Domain Name consists of the HUGGIES Mark in its entirety along with the descriptive term "rewards", followed by the generic Top-Level Domain ("gTLD") ".com".
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008‑0923. This is especially true where, as in the present case where the Complainant offers a rewards program for its customers, the descriptive word "rewards" is associated with the Complainant and its business. See, e.g., AARP v. Anthony Lauberth, WIPO Case No. D2017-0155 (it is not possible to conceive of any plausible use of the domain name <aarprewards.com> by the respondent that would be legitimate).
Moreover, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012‑0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its HUGGIES Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name to resolve to a hosting parking page, and thus has no rights or legitimate interests in the Disputed Domain Name.
Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempts to attract, for commercial gain, Internet users who wish to purchase the Disputed Domain Name by creating a likelihood of confusion with the Complainant's HUGGIES Mark. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to attract customers by using a domain name that is confusingly similar to the Complainant's HUGGIES Mark. In addition, the Respondent provided false address information to the Registrar and the proxy service it used to hide its identity, another indication of bad faith.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant's HUGGIES Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the HUGGIES Mark.
The continuous and public use of the HUGGIES Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Third, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be an indication of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000‑0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the HUGGIES Mark.
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; 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. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <huggiesrewards.com> be transferred to the Complainant.
Lynda M. Braun
Date: September 19, 2017