WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Colgate-Palmolive Company v. Arash Mahooti
Case No. DIR2017-0014
1. The Parties
The Complainant is Colgate-Palmolive Company of New York, New York, United States of America, represented Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
The Respondent is Arash Mahooti of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <palmolive.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 7, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 9, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on July 11, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 8, 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’s PALMOLIVE trademark, used for inter alia shampoo, conditioner and soap, was first introduced in 1898. Currently it is used in more than 88 countries around the world, generating annual sales over USD 15 billion.
The Complainant is the owner, amongst several others, of the following trademark registrations:
- United States of America Trademark Registration No. 0113591 for PALMOLIVE registered on October 24, 1916 and successively renewed; and
- Islamic Republic of Iran Trademark Registration No. 103469 for PALMOLIVE registered on April 16, 2003, successively renewed.
The disputed domain name <palmolive.ir> was registered on May 17, 2015. Currently it is used to redirect Internet users to <diginela.com>, a domain name also registered by the Respondent, which is used in connection with a website operating as an online cosmetics and cleaning products store which compete with the Complainant’s products.
5. Parties’ Contentions
The Complainant asserts that its PALMOLIVE trademark, originally introduced in 1898 in connection with shampoo, conditioner, body wash and liquid hand-wash products is now used for 54 variants of products including personal care, oral care, home products and so on. It is the Complainant’s second most important brand, only surpassed by the notorious Colgate toothpaste.
The Complainant further asserts that the disputed domain name is confusingly similar to its famous mark since it incorporates entirely the PALMOLIVE trademark.
As to the absence of rights or legitimate interests in the disputed domain name, the Complainant argues that the Respondent:
(i) has not used the disputed domain name in connection with a bona fide offering of goods or services;
(ii) is not and has not been commonly known by the disputed domain name, nor holds any rights over such expression;
(iii) has not made a legitimate and noncommercial use of the disputed domain name without the intent to mislead Internet users;
(iv) is not an authorized distributor or manufacturer of the Complainant’s products and there has never been any business relationship between the Respondent and the Complainant. The Complainant has not sponsored or endorsed the Respondent’s activities in any aspect and has not consented to the Respondent’s use and exploitation of the PALMOLIVE trademark in connection with the disputed domain name.
The registration and use of the disputed domain name in bad faith arises from the Respondent’s use of the disputed domain name who intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademark. Therefore, according to the Complainant, the Respondent is redirecting Internet users to the Respondent’s website in which competing products are promoted and sold, thus benefiting from an undue association with the Complainant’s reputation and notoriety for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of the Respondent’s website. Lastly, another element that indicates the Respondent’s bad faith is the lack of reply to the cease-and-desist letter sent by the Complainant prior to the filing of this Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the PALMOLIVE trademark.
The disputed domain name includes the Complainant’s trademark in its entirety. In this case, the “.ir” country code Top-Level Domain is not to be taken into account as already established in case law under the Policy.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant states that the Respondent is not an authorized distributor or manufacturer of the Complainant’s products and there has never been any business relationship between the Respondent and the Complainant; not having the Complainant sponsored or endorsed the Respondent’s activities in any aspect.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent’s use of the disputed domain name to redirect Internet users to an online cosmetics and cleaning products store, in direct competition to the Complainant’s notable products cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant’s consumers.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered or Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s redirection of Internet users to webpages which operate as online stores, in direct competition with the Complainant.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for the Respondent’s own commercial gain.
Other factors corroborate a finding of bad faith such as wrong information in the WhoIs records (non-existing address relating to the Respondent), non-active email addresses and the absence of any response of the cease-and-desist letter sent by the Complainant prior to initiating this proceeding as well as the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 <palmolive.ir> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: August 14, 2017