WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Essity Hygiene and Health AB v. Daniel Lifveredson, Excore Consulting KB
Case No. D2018-0345
1. The Parties
The Complainant is Essity Hygiene and Health AB of Göteborg, Sweden, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Daniel Lifveredson, Excore Consulting KB of Göteborg, Sweden.
2. The Domain Name and Registrar
The disputed domain name <essitygroup.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2018. On February 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2018, 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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. On March 6, 7 and 14, 2018, the Respondent sent several emails communications to the Center. The Respondent did not submit a formal Response.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 22, 2018. 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 Swedish company which produces and sells personal care, consumer tissue and professional hygiene products and solutions. Furthermore, the Complainant is the holder of numerous trademark registrations for ESSITY. For instance, the Complainant is the holder of the International trademark registration for ESSITY (registration number 1366140), registered on January 26, 2017.
The disputed domain name was registered on April 6, 2017, and currently resolves to a parking page.
5. Parties’ Contentions
The Complainant and its affiliates operate in approximately 150 countries around the world and have about 48,000 employees. Until June 15, 2017, the Complainant was part of the SCA Group, which has been in business since 1929. On April 5, 2017, it was publicly announced that the SCA Group’s business would be split into two companies, of which one would be a hygiene products company to be branded under the new name “Essity”. The Complainant now operates its hygiene products business under the name Essity. The Complainant’s new ultimate parent, Essity Aktiebolag (publ), also began trading shares on the main market of Nasdaq Stockholm on June 15, 2017, under the symbols ESSITY A and ESSITY B. On January 12, 2018, the Complainant’s company name was changed from “SCA Hygiene Products AB” to “Essity Hygiene and Health AB”. The Complainant has not yet recorded its recent change of company name with the trademark offices around the world and thus the Complainant’s trademark registrations and applications largely remain under its former name SCA Hygiene Products AB.
The Complainant began actual use of the ESSITY trademark and trade name in connection with its health and hygiene business on June 15, 2017. However, the Complainant began filing trademark applications to protect the new name as early as January 26, 2017. Since that time, the Complainant has made a significant investment of time, effort and money in advertising and promoting its health and hygiene products business under the ESSITY trademark and trade name.
The disputed domain name consists solely of the Complainant’s trademark, followed by the non-distinctive word “group”. The addition of a descriptive term does not serve to distinguish a domain name from a registered mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the disputed domain name. Nearly a year after registering the disputed domain name, the Respondent has not made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parked website.
The Respondent is not commonly known by the domain name. The term “Essity” is a coined word and has no meaning aside from its trademark and trade name significance in relation to the Complainant and its affiliates.
The Respondent registered the disputed domain name exactly one day after the public announcement and launch of the Complainant’s new trade name and brand. This suggests that the Respondent knew of the Complainant’s trademark and registered the disputed domain name with bad faith intent to unfairly capitalize on the Complainant’s trademark rights.
When the Complainant’s law firm in Sweden reached out to the Respondent regarding transferring the disputed domain name to the Complainant, the Respondent replied on December 11, 2017, that the Respondent’s client has incurred costs to build the website and start up its business and so it would be presumptuous to transfer the registration without valuable consideration. However, nearly a year has passed since the Respondent registered the disputed domain name, which still resolves to a parked site.
Furthermore, during a subsequent telephone call the Respondent informed the Complainant’s attorneys that the Respondent would sell the disputed domain name for a price of SEK 100,000, a price that far exceeds the presumed out-of-pocket costs directly related to the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s ESSITY trademark, with the addition of the descriptive word “group” and the generic Top-Level Domain (“gTLD”) “.com”. According to the well-established consensus among UDRP panels, the gTLD is not distinguishing for the purposes of establishing identical or confusing similarity. The addition of the word “group” – apparently referring to a group of companies – after the distinctive word “essity” is in the Panel’s view insufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks within the meaning of the Policy, paragraph 4(a)(i), and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates the Complainant’s trademarks.
Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s trademarks in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent is using the disputed domain name for a bona fide offering of goods or services.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The disputed domain name was registered on April 6, 2017, which is only one day after the announcement that “Essity” would be the new brand for the Complainant’s hygiene products. The evidence submitted with the Complaint also shows that the Complainant had filed several trademark applications for ESSITY before the registration of the disputed domain name.
The submitted material includes email correspondence between the subject parties, showing that the Respondent has been willing to discuss a transfer – against remuneration – of the disputed domain name.
According to the Complainant’s uncontradicted information, the Respondent has offered the Complainant the disputed domain name for a significant amount of money. The Complainant has also submitted evidence showing that the disputed domain name resolves to a parking page, which is in the Panel’s view a further indication of bad faith under the circumstances. The Panel cannot foresee any plausible circumstances in which the Respondent could make active use of the disputed domain name that would not interfere with the trademark rights of the Complainant.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
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 <essitygroup.com> be transferred to the Complainant.
Date: April 5, 2018