WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Unilever N.V. v. Net Admin, Landrush Investments

Case No. D2018-0455

1. The Parties

Complainant is Unilever N.V. of Rotterdam, Netherlands, represented by SILKA Law AB, Sweden.

Respondent is Net Admin, Landrush Investments of Cape Town, South Africa.

2. The Domain Name and Registrar

The disputed domain name <pgtips.com> (the “Domain Name”) is registered with Rebel.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2018. On February 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 3, 2018.

The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on April 13, 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.

On April 18, 2018 the Registrar sent an email to the Center on behalf of Respondent, advising that Respondent did not wish to dispute the ownership of the Domain Name and was willing to relinquish control of the Domain Name to Complainant. Complainant advised on April 19, 2018 that it did not agree to settle and wished to proceed to a final determination.

4. Factual Background

Unilever is a supplier of Food, Home and Personal Care products to over 190 countries, under brands such as PG Tips, Persil, Dove, Knorr, Domestos, Hellmann’s, Lipton, Wall’s, Ben & Jerry’s, Marmite, Magnum and Lynx.

In 2007, Unilever became the first major tea company to commit to sustainably sourcing tea on a large scale, from farmers mostly in Africa and Asia, as well as on its own estates in Kenya and Tanzania.

PG Tips was developed by Arthur Brooke, who founded the company Brooke, Bond & Co in the United Kingdom of Great Britain and Northern Ireland in 1869. In 1930, PG Tips was launched in the UK as a loos-leaf tea in soft packs. It was originally called Pre-Gest-Tee but was soon abbreviated to PG. The company adopted this as the official name and added “tips” to highlight that PG Tips takes only the top two leaves and a bud to make its tea.

Complainant is the owner of the registered trade mark PG TIPS (“Complainant’s PG TIPS Marks”) as a word mark in numerous countries around the world. Many of Complainant’s PG TIPS Marks are still registered to Brooke, Bond & Co, but for the purpose of this Complaint, Complainant has only relied upon the trade marks that have been updated to Complainant’s ownership. Examples of Complainant’s PG TIPS Marks are:

Trade Mark

International / National

Registration Date

Trade Mark No.

PG TIPS

European Union trade mark (word mark)

April 7, 2018

006995773

PG TIPS

Iceland (figurative)

October 31, 1991

V0018899

PG TIPS

Japanese

May 13, 2005

T4863269

Complainant is also the registered proprietor of several domain names under generic Top-Level Domains (“gTLD”) containing the term “pgtips”, including <pgtips.co.uk>, <pgtips.jp>, <pgtips.com.cn>, and <pgtipsusa.com> (“Complainant’s domain names”).

According to WhoIs the Domain Name was originally registered in 2004 by Flexiscene Computing Ltd. Upon expiration it was re-registered via a snapback service called Pool.com. In 2009 it was registered to Forsyte Corporation. Respondent has been in the possession of the Domain Name since 2010.

The Domain Name resolved to a pay-per-click webpage and is currently inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that Complainant’s PG TIPS Marks are well-known world-wide, and are marketed over social media channels such as FACEBOOK, YOUTUBE, INSTAGRAM and TWITTER. Complainant also contends that it uses Complainant’s domain names to connect to websites through which it informs potential customers about its services.

Complainant states that the Domain Name incorporates Complainant’s PG TIPS Marks in its entirety, and that the addition of the gTLD “.com” adds no distinctiveness to the Domain Name.

Complainant asserts that it has not found that Respondent is commonly known by the Domain Name, and can find no evidence that Respondent has any history of using, or preparing to use, the Domain Name in connection with a bona fide offering of goods and services or noncommercial fair use.

Complainant notes that Respondent’s website redirects to a pay-per-click site, with the landing page containing links to advertisements that relate to Complainant’s PG TIPS Marks. Complainant submits that Respondent has intentionally attempted to attract Internet users to its websites with the intention of commercial gain, thereby misleading consumers and tarnishing the trade mark of Complainant.

Complainant also notes Respondent’s website is listed for sale via the auction site “www.sedo.com”.

Complainant asserts that Respondent has a large portfolio of domain names where several well-known trade marks have been identified, including <elizabethardenspa.com> (ELIZABETH ARDEN ®), <foxsprorts.com> (FOX SPORTS ®), <gamesnokia.net> (NOKIA ®). Complainant submits that this registering of trade marks using well-known names in domain names, further supports its assertion that Respondent has no legitimate interest in the Domain Name other than selling the Domain Name to take commercial advantage of the trade mark.

Complainant states that its trade mark registrations all pre-date the registration of the Domain Name and asserts that it seems unlikely that Respondent was not aware of the existence of Complainant’s PG TIPS Marks.

Complainant further states that Respondent has never been granted permission to register the Domain Name. Complainant submits that Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions by the Due Date.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established to the satisfaction of the Panel that Complainant’s PG TIPS Marks have been used in relation to Complainant’s tea products and that Complainant has registered Complainant’s PG TIPS Marks in various jurisdictions including in the European Union, Iceland and Japan.

Complainant contends that the Domain Name reproduces Complainant’s PG TIPS Marks in their entirety, with the addition of the gTLD “.com” which adds no distinctiveness to the Domain Name.

There is clear merit in these submissions and in the absence of any attempt to refute them it is found that:

a) Complainant has rights in respect of Complainant’s PG TIPS Marks.

b) The Domain Name is the same or for all intents and purposes the same as Complainant’s PG TIPS Marks.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant asserts that Respondent uses the Domain Name for commercial purposes by operating or being associated with a website which redirects to a pay-per-click site. It is asserted that the site has a landing page which contains links to advertisements that relate to Complainant’s PG TIPS Marks. This illustrates use by Respondent of the Domain Name to attract Internet users to its website, thereby misleading consumers or potential consumers of Complainant.

Such conduct is not legitimate. It is found that Respondent has no rights or legitimate interests in the Domain Name.

The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Given Complainant’s use and registration of Complainant’s PG TIPS Marks, the Panel infers that Respondent knew of Complainant’s PG TIPS Marks when registering the Domain Name and conducting a click-through business by reference to Complainant’s PG TIPS Marks in the manner described above.

The Panel concludes that Respondent has registered and used the Domain Name for purpose of making a commercial gain and that Internet users might wrongly believe that the Domain Name is associated with Complainant or is otherwise endorsed by Complainant, when this is not the case.

The Panel thus finds that the third limb of the Policy has been met.

7. Decision

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 <pgtips.com> be transferred to Complainant.

Clive L. Elliott QC
Sole Panelist
Date: April 30, 2018