WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Daikin Australia Pty Ltd v. James Carlson

Case No. D2011-0121

1. The Parties

The Complainant is Daikin Australia Pty Ltd, New South Wales, Australia, represented by Middletons Lawyers, Sydney, New South Wales, Australia.

The Respondent is James Carlson, Delaware, United States of America.

2. The Domain Name and Registrar

The disputed domain name <daikinair.com> is registered with Regtime Ltd (“Domain Name”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2011. On January 21, 2011, the Center transmitted by email to Regtime Ltd. (“Registrar”) a request for registrar verification in connection with the Domain Name. On January 27, 2011, 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 Registrar also indicated that the language of the registration agreement for the Domain Name was Russian.

The Complaint was filed in English. The Center sent an email communication to the Complainant on February 1, 2011 informing them that the language of the registration agreement is Russian and stating that the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceeding, and inviting the Complainant to submit the amendment to the Complaint. Next day the Complainant submitted a request that the language of the proceeding to be English. The Respondent did not object.

The Center verified that the Complaint together with the request for 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2011.

The Center appointed Olga Zalomiy as the sole panelist in this matter on March 14, 2011. 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

Based on the written evidence submitted by the Complainant, the Panel finds the following to be the facts of this case:

The Complainant traded under the name “Daikin Australia Pty Ltd since 1980. It is an Australian wholly-owned subsidiary of Daikin Industries, Ltd., Japan (“Daikin Industries”). Daikin Industries owns the following Australian DAIKIN trademark registrations: No. 1131030 dated August 23, 2006, No. 1160563 dated February 12, 2007, No. 1160576 dated February 12, 2007, and No. 1160578 dated February 12, 2007 (“DAIKIN Trademarks”). The Complainant is the exclusive distributor and installer of DAIKIN air conditioning systems and the exclusive user of Daikin Trademarks in Australia.

The Complainant is also the registered owner of a domain name that incorporates the DAIKIN mark: <daikin.com.au>. The domain name directs to the Complainant’s official website. The website offers information about the Complainant and DAIKIN products.

In January of 2011, the Complainant became aware of the use by the Respondent of the Domain Name. The history of what then transpired is summarized in the Statutory Declaration of Ms. Zoras-Christodoulout, the Complainant’s General Counsel, dated January 20, 2011 (“Statutory Declaration”).

The Respondent registered the disputed domain name <daikinair.com> on January 7, 2011. The Domain Name resolves to a website that purports to be the website of “Daikin Australia and New Zealand.” The website, however, offers for sale only one product, an air conditioning unit manufactured by Panasonic Corporation, which the Complainant does not sell. The Respondent’s website contains the Complainant’s contact information, trademarks and extracts of text copied from the Complainant’s website.

The Respondent and/or such persons in control of the Domain Name, in emails sent from an email address located at the Domain Name <support@daikinair.com>, represented themselves as a “Rodney Parker”, a “support rep” of Daikin Air that is a “sister sub company of Daikin Australia” (supposedly an employee of a Complainant related company). The emails were sent to numerous printing companies across Australia. Each email sought to have printed and distributed 100,000 flyers advertising a sale of the Panasonic air conditioner at almost 50% discounted price. The flyer directed consumers to the website associated with the Domain Name to complete the purchase. Consumers who sought to purchase Panasonic air conditioners from the website linked to the Domain Name were sent an email from <support@daikinair.com>, which contained details of a bank account for the transfer of AU $1,499.00 to non-existent company “Daikin Air”.

Upon investigation of the situation, the Complainant notified the Respondent, the Registrar and Australian authorities that Respondent’s actions infringed on the Complainant’s trademarks and copyrights. On January 18, 2011 the Registrar blocked the Domain Name because of “fake domain owner data.” The Domain Name is currently not being used to resolve to a website.

The postal address of the Respondent, as contained in the Registrar’s registry, is an address in “Houston, Delaware”. The Respondent’s postal code of record, 52556, however, refers to the state of Iowa, the United States. The Center made substantial efforts to mail to the Respondent the Written Notice using the postal address in the Registrar’s WhoIs database. After these attempts, it became evident that the postal address of record for the Registrant is false.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Domain Name is identical or confusingly similar to the DAIKIN trademark in which the Complainant has rights. According to the Complainant, Australian registered trademarks DAIKIN belong to Daikin Industries. The Complainant states that it is a wholly-owned subsidiary of Daikin Industries. The Complainant alleges that it has satisfied the threshold requirements of demonstrating trademark right by virtue of its rights as an authorized user of the DAIKIN trademarks. The Complainant claims that the Domain Name is identical or confusingly similar to the DAIKIN trademark because the Domain Name incorporates the DAIKIN trademark in its entirety. In Complainant’s view, the confusion is not negated by the addition of the term “air” and a gTLD suffix “.com” Instead, in its view, the inclusion of the term “air” increases the confusion because of the Complainant’s extensive reputation in relation to its business of manufacturing and distribution of air-conditioners.

The Complainant contends that the Respondent does not have rights or legitimate interest in the Domain Name. It alleges that there is no evidence that the Respondent has ever had any trademark rights in the DAIKIN trademark anywhere in the world. According to the Complainant, there has never been any relationship between the Complainant and the Respondent that would give rise to a license or other authorization to use, directly or indirectly, the DAIKIN trademark. Further, the Complainant alleges that the Domain Name has not been used in connection with a bona fide offering of goods or services. On the contrary, according to the Complainant, the Respondent used the Domain name to perpetrate a scam on consumers who sought to purchase a Panasonic product offered on the website associated with the Domain Name. The Complainant states that the Respondent never offered for sale any of DAIKIN products. Instead, the Respondent is alleged to have offered for sale the Panasonic product, which has no relation to DAIKIN products. The Complainant further alleges that Respondent’s representations of the Respondent’s website to be the website of Daikin Australia and New Zealand is prima facie evidence that the Respondent has no rights or legitimate interest in the Domain Name.

Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. In Complainant’s view, the Respondent has attempted to attract Internet users to the Respondent’s website associated with the Domain Name, for commercial gain, by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship affiliation or endorsement of the Respondent’s website. The Complainant argues that the Respondent misrepresented himself as the Complainant’s representative and used the Domain Name to perpetrate a scam on consumers.

The Complainant argues that by virtue of Respondent’s actions, the DAIKIN trademark’s goodwill is harmed.

The Complainant requests the Domain Name to be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the proceeding

Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.¹

The Panel finds English to be an appropriate language for this proceeding based on the Registrant’s apparent, place of residence and ability to understand the English language, and based on the absence of any objection to English as the language of the proceeding.

The Complainant originally filed the Complaint in English and alleged that the language of the registration agreement was English. In support of this contention, the Complainant submitted a copy of the registration agreement in English. The language of the registration agreement according to the Registrar is, however, Russian, as ascertained by the Center during its verifications prior to the notification of the Complaint. The Panel checked the Registrar’s website and found that the website and the registration agreement exist in both the Russian and English languages.

The Panel, finds that it is justified in satisfying the Complainant’s request to conduct the proceeding in English. The Complainant presented sufficient evidence to conclude that the Respondent can understand English. It is a consensus view of the WIPO panelists that “where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of the proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.” ² The Complainant argues that there is evidence showing that the Respondent has sufficient proficiency in the English language. In support of this allegation, the Complainant submitted printouts from the Respondent’s website showing that the website hosted under the Domain Name was displayed in English. In addition, according to a printout from the WhoIs database presented by the Complainant, the Registrant provided contact information of a person who purportedly resides in the United States of America. Moreover, the Complainant submitted copies of emails sent from an email address located at the Domain Name <support@daikinair.com> to various companies in connection with advertising of the Registrant’s website. All emails are written in English by a person who has a good command of the language.

The Panel also notes that the Center sent the notification of the Complaint documents, as well as all case related communications, to the Respondent in both languages. Thus, the Respondent had a fair chance to learn about his right to object to the language of the proceeding, and chose not to respond.

Based on the foregoing, the Panel is satisfied that it is appropriate for the language of the proceeding to be English, and the Panel so determines pursuant to paragraph 11(a) of the Rules.

6.2. Procedural matters

In accordance with the Rules, paragraph 15(a), the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the Rules, and any rules and principles of law that it deems applicable. To ensure fair, effective and predictable operation of the UDRP system, where appropriate, the Panel will make decisions consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview of WIPO Panel Views”).³

Also, where necessary, the Panel will make appropriate assumptions from the Respondent’s default. The Rules, paragraph 10(b), require that the panel ensure that “each Party is given a fair opportunity to present its case. ” Here, the Center gave the Respondent such opportunity. The Respondent, however, chose not to respond to the complaint. In case of default and in the absence of exceptional circumstances, the Rules, paragraph 14(b), require the panel to “draw such inferences therefrom as it considers appropriate.”

But “the respondent’s default does not automatically result in a decision in favor of the complainant.”⁴ The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP”. ⁵ Thus, to succeed on its claim, the Complainant must prove that: 1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Тhe Respondent has no "rights or legitimate interests in respect of the domain name"; and 3) The domain name "has been registered and is being used in bad faith." Paragraph 4(a) of the UDRP.

6.3. Identical or Confusingly Similar

The Panel finds that the Complainant proved that it has rights in the DAIKIN mark. Under paragraph 1.8 of the WIPO Overview of WIPO Panel Views, in most circumstances a licensee or “a related company such as subsidiary to the registered holder of the mark is considered to have rights in a trademark under UDRP.” Here, the Complainant submitted copies of the DAIKIN Trademarks’ registrations belonging to Daikin Industries. According to the Statutory Declaration made under penalty of criminal prosecution, the Complainant is a wholly owned subsidiary of Daikin Industries and the exclusive authorized user of all of the Daikin Trademarks pursuant to the terms of a distribution agreement. Absent Respondent’s allegations to the contrary, the Panel accepts Complainant’s allegations supported by the Statutory Declaration and copies of the documents. The Panel, therefore, finds that the Complainant has rights in the trademark DAIKIN under UDRP as a wholly owned subsidiary Daikin Industries and its exclusive authorized distributor.

To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark in which a complainant has rights.⁶ “The test for confusing similarity should be a comparison between the mark and the domain name.”⁷ Based on the comparison of the DAIKIN trademark and the Domain Name, the Panel finds them to be confusingly similar for two reasons. First, the Domain Name incorporates the Complainant’s trademark in its entirety. Second, neither the addition of the generic word “air” nor the inclusion of the generic domain suffix “.com” dissipates the confusion.

As a rule,⁸ when a domain name wholly incorporates a complainant’s mark and adds a generic word, there is typically a sufficient showing of confusing similarity for purposes of the UDRP. Here, the Domain Name incorporates the DAIKIN trademark in its entirety and adds a generic word “air” and a generic domain suffix “.com” Therefore, the Panel finds that <daikinair.com> is confusingly similar to the DAIKIN trademark.

Moreover, the Panel accepts the Complainant’s allegations that the addition of the term “air” to the DAIKIN mark actually adds to the likelihood of confusion. Previous panel decisions have paid attention to the business of the trademark owner in determining the issue of confusing similarity.⁹ “The addition in a domain name of words and phrases descriptive of the goods and services with which the mark is used to the mark itself constitutes confusing similarity.”¹⁰ The Complainant alleges that, as in previous panel decisions, and taking into account the nature of Complainant’s business, manufacturing and distribution of air conditioning systems, the addition of the word “air” is not sufficient to negate confusing similarity between the DAIKIN trademark and the Domain Name. The Panel agrees with the Complainant. The addition of the term “air” to the DAIKIN mark is likely to increase confusion among consumers familiar with the DAIKIN brand and reputation in the business of manufacturing and distribution of air conditioners.

Moreover, it is well-established that the addition of the gTLD suffix “.com” or its equivalent, being an inevitable part of the domain name, has no bearing on the question of confusing similarity.¹¹

Therefore, the Domain Name is confusingly similar to the Complainant’s trademark, and the first element of paragraph 4(a) of the UDRP has been satisfied.

6.4. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the UDRP, a complainant must prove that respondent has no rights or legitimate interest in the domain name. Тo satisfy this requirement, the complainant must make out a prima facie case, that the respondent lacks rights or legitimate interest in the domain name.¹² If the complainant shows sufficient evidence to prove that the respondent lacks rights or legitimate interests in the domain name and the respondent fails to show otherwise, then the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Paragraph 2. 2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

Paragraph 4(c) of the UDRP provides an open list of circumstances that may demonstrate rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exists here. The Panel finds that the Complainant presented prima facie showing that the Respondent lacks rights or legitimate interest in the Domain Name for three reasons. First, the Respondent did not use the Domain Name in connection with bona fide offering of goods. Second, the Respondent uses the Domain Name for commercial gain and to misleadingly divert consumers to its website. Third, the Respondent has not been commonly known by the domain name.

The Complainant alleges that the Respondent did not use the Domain Name in connection with bona fide offering of goods. In support of this proposition, the Complainant alleges that it has not licensed or otherwise authorized the Respondent to register or use the DAIKIN trademarks in any manner. In previous UDRP cases, it has been held that, an unauthorized party cannot claim a legitimate interest in a domain name that intentionally contains, or is confusingly similar with, a complainant’s mark, as the activities of such party cannot be said to constitute a good faith offering of goods or services.¹³ Since it is undisputed that the Domain Name is confusingly similar to the mark in which the Complainant has rights, the Respondent’s use of the Domain Name without Complainant’s authorization cannot constitute bona fide offering of goods or services in the circumstances of this case.

In addition, the Respondent does not have rights or legitimate interest in the Domain Name as a reseller. Under the UDRP, a reseller may have a legitimate interest in the domain Name, if a respondent’s offering of goods and services meets certain requirements.¹⁴ Such requirements include: “the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.”¹⁵ According to the printouts from the Respondent’s website presented by the Complainant and the Statutory Declaration, consisting of copies of flyers ordered by the Respondent or someone under his control, the Domain Name was used to resolve to the website offering for sale only Panasonic air conditioner model no. CSCUE28LKR, which the Complainant does not sell. Further, there is no evidence that the Respondent ever sold any of the Complainant’s trademarked goods. Moreover, instead of disclosing a relationship between the Respondent and the Complainant, the Respondent’s website was designed to appear as a website affiliated with the Complainant. Therefore, the Respondent does not have rights or legitimate interests in the Domain Name.

Further, the Complainant relies on a number of previous panel decisions for the proposition that fraudulent use of a domain name can never be qualified as a legitimate offer of goods for sale.¹⁶ The Complainant alleged, and has attached to the Complaint copies of emails apparently sent by the Respondent or other persons in control of the Domain Name, suggesting that the Respondent has engaged in a scam. According to this evidence, Respondent and/or such persons, in emails sent in January 2011 from an email address <support@daikinair.com>, misrepresented themselves as a “Rodney Parker”, a “support rep” of Daikin Air that is a “sister sub company of Daikin Australia” (supposedly an employee of a Complainant related company). The emails were sent to numerous printing companies and sought to have printed and distributed flyers advertising a sale of the Panasonic air conditioner. The Complainant submitted copies of the flyer that displayed a sign substantially identical to the DAIKIN trademark. The flyer directed consumers to the website associated with the Domain Name to purchase the Panasonic air conditioner at almost a 50% discounted price. According to the Complainant, Panasonic Australia Ltd. represented that its products cannot be sold at this price. Therefore, the Panel finds it likely that the Respondent was engaged in a scam activity, and such activity cannot constitute evidence of any legitimate rights in the Domain Name.

The Panel also finds that it is likely that consumers will visit the Respondent’s website in the belief that the website is an official website of the Complainant. The Respondent used the Domain Name to resolve to a website, which reproduced a number of the DAIKIN trademarks and purported to be the website of “Daikin Australia and New Zealand,” so that a user would believe that he/she was on a website endorsed by the Complainant. According to the Complainant, the Respondent’s website listed an Australian Business Number of the Complainant, amounting to a fraudulent representation. According to the Statutory Declaration and accompanying documents, the Respondent’s website contained large slabs of text copied from the Complainant’s website. Therefore, it is not likely that the Respondent was commonly known by the Domain Name, or that the Respondent “is making, or intends to make, a legitimate non-commercial or fair use of the Domain Name.”

The Panel finds that the Complainant has made a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the UDRP has been established.

6.5. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”¹⁷ Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds the Complainant has shown that the Respondent registered and used the domain name in bad faith, and in particular, that the Respondent’s conduct puts the case squarely within paragraph 4(b)(iv) of the Policy, which states the following:

(iv) “by using the domain name, [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the UDRP.

i). Registration in Bad Faith

In the Complainant’s view, the Respondent registered the Domain Name in bad faith. The Panel agrees. The Complainant provided a copy of the printout from a search of the WhoIs database of the Registrar conducted on January 19, 2011, and an extract from the Australian Securities and Investment Commission historical company search of the Complainant conducted on January 18, 2011. The evidence shows that since 1980 the Complainant traded under the name “Daikin Australia Pty Ltd.” The Complainant’s parent company registered its DAIKIN mark in Australia in 2006, i.e. five years prior to registration of the Domain Name. Therefore, it is likely that the Respondent knew about existence of the Complainant’s marks prior to registration of the Domain Name.

Moreover, there is ample evidence before this Panel that the Respondent intended to trade on the Complainants’ reputation. The creation of a Domain Name confusingly similar to the DAIKIN trademark, the placement of extensive parts of text copied from the Complainant’s official website on the website associated with the Domain Name, and the copying of the DAIKIN trademarks on the Respondent’s website shows that the Respondent knew about the Complainant’s trademarks and reputation, and tried to use them to his advantage in bad faith.

Furthermore, the WhoIs information and the registration verification reply provided by the Registrar indicate that the postal address provided by the Respondent with the Registrar is false (in the sense that it apparently refers to non-existent locations). Therefore, it appears that the Respondent purposefully used false contact information to conceal his true identity. This is further evidence of registration in bad faith.

ii). Use in Bad Faith

The Panel finds that the Complainant presented overwhelming evidence that the Respondent used the Domain Name in bad faith.

First, the Statutory Declaration and the supporting evidence show that the Respondent most likely tried to deceive Internet users by inducing them to believe they were dealing with the legitimate DAIKIN website. The Respondent used the DAIKIN trademarks, the Complainant’s contact information, and large abstracts of text from the Complainant’s website. In his emails to the printing companies, the Respondent plainly represented himself as a representative of a non-existent affiliate company of the Complainant. As the Halifax¹⁸ panel stated, “evidence of duplication in the Complainant’s trading get-up, branding and imagery is direct evidence of the domain name being used in bad faith.”

Therefore, the Panel finds that these circumstances make it likely that the Respondent tried to create confusion with the Complainants’ trademark as to the sponsorship, affiliation and endorsement of the Respondent’s site and the products and services marketed thereon.

Second, the Panel agrees with the Complainant that the most likely reason for the Respondent’s registration of the Domain Name was to perpetrate a scam to obtain financial benefit. Similar to the facts in the MasterCard case¹⁹, the Respondent created web pages imitating the Complainant’s website and offered for sale via his website the Panasonic air conditioner at the 50% discounted price. Consumers who sought to purchase Panasonic air conditioners from the website linked to the Domain Name were sent an email from <support@daikinair.com>, which contained details of a bank account for the transfer of AU $1,499.00, an impossibly low price according to Panasonic Australia, to non-existent company “Daikin Air”.

Third, the Respondent undertook an incredible effort to print and distribute advertising materials promoting its website to consumers. The Respondent and/or persons in control of the Domain Name sent emails to printing companies across Australia ordering to produce 100,000 “Daikin” flyers using false credit card information. Therefore, it is very likely, that the Respondent attempted to deceive consumers by making them believe they were dealing with an authorized distributor of Complainant. Clearly, the Respondent attempted to use the DAIKIN trademark and Complainant’s business and reputation in connection with air conditioners to induce consumers to send him money. The consumers would have arrived at the Respondent’s website because they thought they were dealing with the Complainant or a Complainant-endorsed company. Therefore, the Respondent likely tried to create confusion with the DAIKIN trademark about the affiliation of its website for financial gain.

Fourth, as previous panels have found “a Domain Name which has been acquired and used for the purpose of perpetrating a fraud has been acquired and used in bad faith.”²⁰ As it has been established that the Domain Name was likely acquired and used for the purpose of perpetrating fraud, the Domain Name was used in bad faith. Accordingly, the Complainant has established the third of the three elements of the UDRP.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <daikinair.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Dated: March 24, 2011

¹ See paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. See also, Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.

² Paragraph 4.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview of WIPO Panel Views”).

³ See paragraph 4. 1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions .

⁴ See paragraph 4. 6. of the WIPO Overview of WIPO Panel Views.

⁵ Id.

⁶ See paragraph 4(a) of the UDRP.

⁷ Paragraph 1. 2. of the WIPO Overview of WIPO Panel Views.

⁸ See Industrial Farmaceutica Cantabria, S. A. v. Mr. Gideon Kimbell, WIPO Case No. D2010-0733, finding that the addition of the descriptor “make up” to the Complainant’s mark HELIOCARE did not dispel confusing similarity.

⁹ See Dell Inc. v. Pateh Mnowe, WIPO Case No. D2004-0689.

¹⁰ Clearwire Communications LLC v. Yvan Edwards, WIPO Case No. D2010-1440.

¹¹ See Research In Motion Limited v. International Domain Names Inc,/Moniker Privacy Services, WIPO Case No. D2008-0780; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

¹² See paragraph 2. 1 of the WIPO Overview of WIPO Panel Views.

¹³ Research In Motion Limited v. BLACKBERRY World, WIPO Case No. D2006-1099; See also Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

¹⁴ See paragraph 2. 3 of the WIPO Overview of WIPO Panel Views.

¹⁵ Id.

¹⁶ See e.g., Migros-Genossenschafts-Bund v. Marcello Bologna, Interhome AG, WIPO Case No. D2010-1489; Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367.

¹⁷ Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

¹⁸ Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237.

¹⁹ MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen, WIPO Case No. D2009-0864.

²⁰ Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561.