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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LRC Products Limited v. CM YJ

Case No. D2020-1598

1. The Parties

Complainant is LRC Products Limited, United Kingdom, represented by Studio Barbero, Italy.

Respondent is CM YJ, China.

2. The Domain Name and Registrar

The disputed domain name <durexeshop.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. Also, on June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 22, 2020.

The Center verified that the Complaint together with the amendment to 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 June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2020.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 27, 2020. 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

Complainant is LRC Products Limited – the London Rubber Company. The Company was founded by LA Jackson in 1915, selling imported condoms and barber shop supplies. In 1929, the DUREX brand was registered and in 1950 Complainant released its first lubricated condom under that brand name. In 2010, LRC Products Limited was acquired by Reckitt Benckiser Group plc, a global leader in consumer health, hygiene and home products.

Complainant owns various trademark registrations for its DUREX mark (or the “Mark”) including: European Union Trade Mark Registration No. 000200923 (word mark, registered on December 8, 1999), Chinese Trademark Registration Nos. 10277453 (word mark, registered on June 28, 2013) and 11314677 (design mark, registered on January 28, 2014). Its condoms are sold in almost 200 countries worldwide, including in China.

Complainant has invested substantial time and resources protecting and enforcing the DUREX Mark and its associated reputation and goodwill, including by worldwide advertising campaigns on television, in magazines, and on the Internet (e.g., Facebook, Twitter, YouTube and Instagram).

Complainant has registered numerous generic Top-Level Domains (“gTLDs”) and country code Top-Level Domain (“ccTLDs”) (e.g., <durex.com>, registered on October 11, 1995) using the DUREX Mark and variations thereof. That domain is the primary web portal for global promotion of products sold under the DUREX Mark. Complainant’s official Chinese website for its DUREX brand products is available at <durex.com.cn>, registered since July 18, 2002.

Respondent registered the Domain Name on January 8, 2018. It resolves to a website with text in Chinese providing information about DUREX brand products and using Complainant’s DUREX design mark, and images taken from one of Complainant’s advertising campaigns. There is also a statement in the copyright line which, translated into English, reads: “All Rights Reserved. © 2018 Durex Condom Copyright - Condom丨Durex condom Taiwan online official website”.

On October 30, 2018 and November 1, 2018, Complainant sent Respondent cease and desist letters, as well as several reminders. Respondent did not respond to them. Furthermore, Complainant cent a cease and desist letter on November 28, 2018 to the hosting provider of the website “www.durexeshop.com” but they did not comply with the request to deactivate Respondent’s website.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the DUREX Mark because it reproduces the entirety of the Mark with the mere addition of the non-distinctive element “eshop” and the gTLD “.com”. Including the former does not affect the confusing similarity between the Domain Name and the Mark. On the contrary, it is apt to reinforce the likelihood of confusion, as the term “eshop” is descriptive of an online location where Complainant’s products can be purchased and, therefore, Internet users might believe that the Domain Name is registered and used by Complainant or one of its affiliated companies to promote and offer for sale its products on the Internet. It is permissible to disregard the gTLD, or the ccTLD, as a functional aspect of the domain name system.

Respondent is not a licensee, an authorized agent of Complainant, or in any other way authorized to use the DUREX Mark. Upon information and belief, Respondent is not commonly known by the Domain Name as an individual, business, or other organization and “Durex” is not Respondent’s family name. Respondent has not provided any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, or with a legitimate noncommercial or fair use before or after any notice of the dispute herein. The Domain Name has been pointed to a website prominently displaying the DUREX design trademark and one of Complainant’s official images and providing information about Complainant’s DUREX brand products, without including any disclaimer apt to inform users of the lack of affiliation with Complainant, and there is a misleading statement in the copyright line of the webpage reading “All Rights Reserved. © 2018 Durex Condom Copyright - Condom丨Durex condom Taiwan online official website”. In addition, although Respondent’s website does not appear to be currently used in connection with the actual sale of DUREX brand products, the fact that the Domain Name combines the trademark with the term “eshop” unduly suggests to Internet users that Respondent might engage in the sale of authorized DUREX brand products. Furthermore, Respondent did not reply to the cease and desist letters sent by Complainant’s representatives.

In light of the prior registration and extensive use of the DUREX Mark in connection with Complainant’s products, including in China, where Respondent is based, it is inconceivable that Respondent was unaware of the existence of Complainant’s registered and well-known trademark at the time it registered the Domain Name. Given the distinctiveness and reputation of the Mark, Respondent clearly acted in opportunistic bad faith by registering the Domain Name with full knowledge of Complainant’s trademark for the purpose of taking commercial advantage of the Mark. Furthermore, based on Respondent’s statements on its website (which, translated in English, read “Born in 1929, It is a well-known global gender health brand. The name Durex is derived from a combination of three English words: Durability, Reliability, Excellent. The Durex product line covers condoms, lubricants. Sex toys and many other fields. At present, Durex products mainly include condoms. Three series of lubricating fluid and sex toys” and “Durex condoms are brands we are familiar with, and there are many kinds of them”), it is clear that Respondent was perfectly aware of Complainant’s trademark when it registered the Domain Name.

In combining the DUREX Mark with the term “eshop”, which clearly refers to an “electronic shop” or “online shop”, and the contents of Respondent’s website “www.durexeshop.com”, which prominently displays Complainant’s figurative trademark DUREX along with images taken from Complainant’s official advertising and information about DUREX brand products, Respondent clearly intended to impersonate Complainant or one of its affiliated entities or resellers, to attract users willing to purchase DUREX brand products to its own website. The likelihood of confusion is enhanced by including the following statement in the footer of the home page “All Rights Reserved. © 2018 Durex Condom Copyright - Condom丨Durex condom Taiwan online official website”.

Moreover, a failure to respond to a cease and desist letter can be evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the DUREX Mark by virtue of the aforementioned trademark registrations.

The Domain Name incorporates in its entirety Complainant’s DUREX Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082. Adding the gTLD “.com” after the Mark does not prevent a finding of confusing similarity. See M Moncler S.p.A. v. Ndiaye Therese and Ndiaye Therese, Newbeta, WIPO Case No. D2017-0346.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

On the evidence of record, it is uncontested that Respondent has no rights or legitimate interests in the Domain Name.

Complainant maintains: (1) Respondent is not a licensee or an authorized agent of Complainant for using the DUREX Mark; (2) Respondent is not commonly known by the Domain Name as an individual, business, or other organization and “Durex” is not Respondent’s family name; (3) Respondent has not provided any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, or with a legitimate noncommercial or fair use before or after any notice of this dispute. The Domain Name has been used and continues to be used in connection with a website prominently displaying the DUREX design mark and one of Complainant’s official images and providing information about Complainant’s DUREX brand products, without any disclaimer. There is also a misleading statement in the copyright line of the webpage reading “All Rights Reserved. © 2018 Durex Condom Copyright - Condom丨Durex condom Taiwan online official website”. Although Respondent’s website does not appear to be currently used in connection with the actual sale of DUREX brand products, the fact that the Domain Name combines the Mark with the term “eshop” unduly suggests to Internet users that Respondent might engage in the sale of authorized DUREX brand products. Furthermore, Respondent did not reply to the cease and desist letters sent by Complainant.

Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is undisputed that Complainant has been making and selling condoms since 1950 under the DUREX Mark. Respondent registered the Domain Name on January 8, 2018 many years after Complainant’s trademark registrations issued (see for example, European Union Trade Mark Registration No. 000200923 (registered on December 8, 1999) and Chinese Trademark Registration No. 10277453 (registered on June 28, 2013)).

It is further undisputed: (1) Complainant advertises and sells its products and services through its website at <durex.com> (registered on October 11, 1995). That domain is Complainant’s primary web portal for global promotion of products sold under the DUREX Mark. Complainant also has an official Chinese website for its DUREX brand products using the domain name <durex.com.cn> that it registered on July 18, 2002; (2) Complainant sells its condoms in almost 200 countries worldwide, including in China; and (3) On the website associated with the Domain Name, Respondent repeatedly uses the DUREX Mark in word and design form, provides information (in Chinese) about DUREX brand products using images taken from one of Complainant’s advertising campaigns, and sets forth (in Chinese) historical information about the DUREX brand. The copyright line which reads in English: “All Rights Reserved. © 2018 Durex Condom Copyright - Condom丨Durex condom Taiwan online official website” also reflects the Mark. Given this undisputed evidence, the Panel finds Respondent was aware of Complainant and its DUREX Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that the Domain Name: (1) was formed by adding “eshop” to the DUREX Mark, which relates to Complainant’s business (e.g., offering an online shopping experience for its products); (2) is confusingly similar to the Mark; and (3) is not being legitimately used by Respondent.

In combining the DUREX Mark with the descriptive term “eshop”, which refers to an “electronic shop” or “online shop”, and using it in connection with a website which deliberately uses Complainant’s Mark and photographic images, provides information about Complainant’s products, presents historical information about Complainant, and uses a copyright notice that suggests Complainant’s rights in the site, Respondent clearly intended to impersonate Complainant or one of its affiliated entities or resellers, to attract users willing to purchase DUREX brand products to its own website. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. They have also found that a respondent’s attempt to cause confusion, its lack of rights or legitimate interests in the disputed domain name, and the absence of any conceivable good faith use, are all circumstances which support a finding that a respondent registered the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark. WIPO Overview 3.0, section 3.1.4. The Panel finds that the above circumstances are present in the current dispute.

An additional circumstance demonstrating bad faith is Respondent’s failure to respond to multiple cease and desist letters and reminders. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <durexeshop.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: August 6, 2020

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