WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reckitt & Colman (Overseas) Health Limited, Reckitt Benckiser (India) Private Limited v. پرنیان احمدی, Xanusgraphic
Case No. D2020-2592
1. The Parties
Complainants are Reckitt & Colman (Overseas) Health Limited (“Complainant 1”), United Kingdom, and Reckitt Benckiser (India) Private Limited (“Complainant 2”), India, represented by Studio Barbero S.p.A., Italy.
Respondent is پرنیان احمدی, Xanusgraphic, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name is <dettolindia.com> registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2020.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on November 18, 2020. This Panel finds that it was properly constituted. This 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
Complainants are both part of Reckitt Benckiser Group plc, a company headquartered in the United Kingdom and engaged, through its group of companies, in the manufacture and marketing of health, personal care and household products.
Complainant 1 has rights over the DETTOL mark for which it holds, among others, International trademark registration No. 1051284, registered on June 11, 2010, in classes 3, 5 and 21, and the European Union Trade Mark registration No. 003033842, registered on December 21, 2004, in classes 3, 5 and 21. Complainant 1 also has rights over the DETTOL and design mark for which it holds, among others, the European Union Trade Mark registration No. 003032299, registered on June 17, 2004, in classes 3, 5 and 21.
Complainant 2 has rights over the DETTOL mark for which it holds, among others, Indian trademark registration No. 141707, registered on December 22, 1949, in class 5, and Indian trademark registration No. 1145431, registered on October 22, 2002, in class 3.
Reckitt Benckiser SARL, one of Complainants’ affiliate, is the registrant of the domain names <dettol.com>, created on November 24, 1995, <dettol.co.in>, created on February 16, 2005, and <dettol.in>, created on February 16, 2005.
The disputed domain name was registered on April 15, 2020. At the time the Complaint was filed the disputed domain name resolved to a website (the “Website”) showing, among others, “CONTACT US BUY NOW”, “ABOUT US OUR PRODUCTS YOUR FAMILY ILLNESS & PREVENTION HEALTHY HOMES PERSONAL HYGIENE”, an image substantially similar to the DETTOL and design mark cited above, “© 2017 Reckitt Benckiser – All Rights Reserved”, “Reckitt Benckiser is unable to and accepts no responsibility to review communications or materials posted to its Sites […] Reckitt Benckiser only purports to use names, logos or marks appearing in this Site in those territories in which it or its affiliates are entitled to do so […] Reckitt Benckiser (India) Limited Registered office […] New Delhi â€“ 110020”.
5. Parties’ Contentions
Complainants’ assertions may be summarized as follows.
Complainants are part of the Reckitt Benckiser group of companies, one of the global leaders in consumer health, hygiene and home products. The Reckitt Benckiser group of companies (“RB”) manufactures and markets health, personal care and household products, including over-the-counter pharmaceuticals such as analgesics, antiseptics, flu remedies and gastrointestinal medications and products for hair removal, denture cleaning and pest control. RB has more than 34,000 employees, operations in more than 60 countries and sales in most countries across the globe.
Complainants have brought a single consolidated Complaint against Respondent since (i) both are part of RB and the owners of mark registrations for DETTOL, and thus both have a common legal interest, and (ii) it would be equitable and procedurally efficient to permit the consolidation of multiple complainants.
The DETTOL mark has been used for more than 80 years in relation to cleaning supplies, disinfectant and germ protection products, which have been marketed and sold in over 120 countries of the world, including India. The DETTOL mark is used for a line of liquid and solid antiseptic cleansing products, which include antiseptic, bar soaps, liquid hand washes, hand sanitizer, shower gels, dish and slab gel antibacterial sprays and wipes. As a result of its extensive use and marketing investments, DETTOL enjoys a considerable reputation in the marketplace as a leading brand in the field of germ protection, hygiene and sanitation. In light of the spread of the Coronavirus disease (COVID-19), demand for DETTOL products has increased substantially in recent months.
In India, i.e. the country to which the disputed domain name makes explicit reference, the DETTOL mark continues to be one of the most trusted protectors of health ranking among the top 10 most trusted brands in India since the last 10 years. The DETTOL mark is also closely associated with programs emphasizing the importance of good sanitation and hygiene. In the last decade, Complainant 2 has engaged in a social initiative, in partnership with the Indian television channel NDTV, aimed at spreading awareness around the importance of hygiene and sanitation to millions across India.
For many years RB has operated brand websites for DETTOL for consumers in many countries globally. The domain name <dettol.co.in> is used to promote the DETTOL mark and products online with a focus on the Indian market, by pointing it to a website where DETTOL products can also be directly purchased by Internet users.
On May 29, 2020, Complainants’ representative sent a cease and desist letter via email to the registrant’s email address. However, such communication has been disregarded by Respondent, which did not provide any formal response. Another cease and desist letter had been sent on May 26, 2020, to the hosting provider of the disputed domain name, requesting the deactivation of the corresponding website, but also such communication remained unanswered.
The disputed domain name is confusingly similar to the DETTOL mark in which Complainants have rights since it entirely reproduces Complainants’ mark with the mere addition of the geographic term “India” and the generic Top-Level Domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered the disputed domain name without authorization from Complainants or one of their affiliated companies. Respondent is not a licensee or an authorized agent of Complainants, or in any other way authorized to use Complainants’ DETTOL mark. Respondent has not been found to hold any trademark registration or trade name corresponding to the disputed domain name. Respondent is not commonly known by the disputed domain name, as an individual, business or other organization, and “Dettol” is not the family name of Respondent.
The Website is clearly mirroring Complainants’ website “www.dettol.co.in”, reproducing without authorization Complainants’ marks and visuals as well as the contact information of Complainant 2 and its customer care in India, thus generating the false impression that the Website is operated by Complainants or one of their affiliated entities. When selecting the “Buy now” button on the top of the home page of the Website, users are redirected to an internal web page of the “www.amazon.in” website where they can purchase purported DETTOL products from third parties.
Respondent cannot claim to be making a nominative fair use of the disputed domain name since the Website does not meet the requirements set forth in the leading case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: (i) Respondent appears to be using the disputed domain name not to directly offer for sale DETTOL products on the correspondent Website but, instead, to redirect users looking for such products to an external website (“www.amazon.in”), where they can purchase purported DETTOL products from third parties engaging in the resale of various cleaning products; (ii) Respondent has failed to publish a clear and accurate disclaimer to disclose its lack of relationship with Complainants and has reproduced on the Website Complainants’ marks and visuals, clearly imitating the layout of the website at “www.dettol.co.in” and displaying also the contact information of Complainant 2 and its customer care in India, in an effort to increase the likelihood of confusion with Complainants and their marks; (iii) the composition of the disputed domain name, combining Complainants’ DETTOL mark with the geographic term “India”, is per se apt to induce Internet users to wrongfully believe that the corresponding Website is operated by Complainants or one of their affiliated entities or authorized distributors.
The disputed domain name was registered and is being used in bad faith.
In light of the prior registration and extensive use of the DETTOL mark in connection with Complainants’ disinfectant and germ protection products in many countries, including India, it is inconceivable that Respondent was unaware of the existence of Complainants’ registered and well-known mark at the time of registration of the disputed domain name.
The DETTOL products have been marketed in the Indian market and online by Complainant 2 through the website “www.dettol.co.in”. They have been advertised throughout India via television and social media advertisements, and the demand of DETTOL products has increased significantly as of mid-March 2020 due to the spread of the COVID-19 disease. Given the distinctiveness and reputation of Complainants’ mark, Respondent clearly acted in opportunistic bad faith by registering the disputed domain name with full knowledge of Complainants’ mark for the purpose of taking commercial advantage of it. Respondent’s references to Complainants’ DETTOL products on the Website clearly demonstrate that Respondent was indeed actually aware of Complainants’ mark at the time of registration.
As set forth above, the Website clearly mirrors Complainants’ website “www.dettol.co.in”, reproducing without authorization Complainants’ marks and visuals as well as the contact information of Complainant 2 and its customer care in India, thus generating the false impression that the Website is operated by Complainants or one of their affiliated entities. By registering and using the disputed domain name, Respondent intentionally attempted to attract users to its Website for commercial gain, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Website and the products sponsored therein. Further, prior UDRP decisions have held that a failure to respond to a cease and desist letter can be evidence of bad faith.
Complainants request that the disputed domain name be transferred to Complainant1.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards having multiple complainants filing a single complaint, although the Policy uses the term “complainant” throughout, it does not preclude the filing of a single complaint by several persons. This Panel considers that it is appropriate to have both Complainant 1 and Complainant 2 as Complainants in this procedure since both have interests in and to the DETTOL mark and have shown a common grievance against Respondent (see section 4.11.1 of the WIPO Overview 3.0).
The lack of response from Respondent does not automatically result in a favorable decision for Complainants (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainants, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainants have rights over the DETTOL mark.
Since the addition of a gTLD after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name entirely incorporates the DETTOL mark, albeit with the geographical term “India”. The Complainants’ mark is recognizable in the disputed domain name and the addition of such geographical term is not enough to avoid the disputed domain name’s confusing similarity with such mark (see sections 1.7 and 1.8 of WIPO Overview 3.0).
Thus this Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainants contend that Respondent has not been authorized to use the DETTOL mark or to register a domain name incorporating such mark, that Respondent is not commonly known by the disputed domain name, and that Respondent is not an authorized agent of Complainants.1
Complainants assert that the Website mirrors Complainants’ website at “www.dettol.co.in”, reproducing without authorization Complainants’ marks and visuals as well as the contact information of Complainant 2 and its customer care in India, which conveys the false impression that the Website is operated by Complainants or an affiliated entity. Complainants provided screenshots of the Website (see section 4 above) and of the website at “www.dettol.co.in”, which on their face corroborate Complainants’ assertions.2 From those screenshots, it appears that the Website does not show any disclaimer as regards Complainants, but rather shows the DETTOL and design mark, a copyright claim for “Reckitt Benckiser” and the name and contact information of Complainant 2, as if trying to pass off as Complainant 2, thus leading consumers to believe that the Website is Complainants’, or at least associated with Complainants. All that demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
This Panel considers that Complainants have established prima facie that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the case file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainants contend that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
The evidence in the file shows that Respondent deliberately targeted Complainants’ DETTOL mark at the time it obtained the disputed domain name. Taking into consideration that Complainants’ registration and use of the DETTOL mark preceded the creation of the disputed domain name by a number of years, the widespread use and recognition of said Complainants’ mark and the content of the Website, this Panel is of the view that Respondent must have been aware of the existence of Complainants and the DETTOL marks at the time it obtained the registration of the disputed domain name.
As set forth above, the Website conveys the false impression that it is operated by, or somewhat associated with, Complainants since it largely resembles Complainants’ “www.dettol.co.in”. There appears to be no disclaimer disassociating the Website from Complainants, which is indicative of bad faith.3 It seems to this Panel that in using the disputed domain name, Respondent has sought to create a likelihood of confusion with Complainants and the DETTOL marks as to the sponsorship, source, affiliation, or endorsement of the Website, when in fact there is no such connection.
Thus the overall evidence shows that Respondent has registered and used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Website. Further, Respondent’s failure to reply to Complainants’ cease-and-desist letter is also indicative of bad faith (see Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.
In light of the above, this Panel finds that Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <dettolindia.com> be transferred to Complainant 1 (Reckitt & Colman (Overseas) Health Limited).
Date: December 2, 2020
1 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”.
2 See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211: “As a result of the content of the page, a visitor to Respondent’s site would be likely to believe that it was Complainant’s official site. Such a confusing commercial use cannot be ‘legitimate’ under the Policy”. See also Diamond Hill Investment Group, Inc. v. Carole Elkins, WIPO Case No. D2015-1191: “the creation of a mirror site is not a legitimate use”.
3 See Diamond Mattress Company, Inc. v. Diamond Mattress, WIPO Case No. D2010-1637: “Respondent’s website appears to have been intentionally designed to capture the look and feel of the Complainant’s website, and the Respondent in the Panel’s view has failed to effectively or accurately disclose its relationship with the Complainant. In view of the foregoing, The Panel concludes that the Respondent registered and has used the disputed domain names in bad faith”. See also Inter IKEA Systems BV (IISBV) v. Ali Armon, Netafraz Hosting, WIPO Case No. D2017-1688.