The Complainants are SCA Capital NV of Diegem, Belgium (the "First Complainant") and SCA Hygiene Products AB of Gothenberg, Sweden (the "Second Complainant") (together the "Complainants"), both represented by ByrneWallace, Solicitors, Ireland.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Diarmuid Hart, Selco of Baltinglass, Ireland.
The disputed domain names <smartonesystem.com> and <smartonetissue.com> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 10, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 17, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 22, 2018.
On January 19, 2018, the Center received an email communication from the Respondent.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2018. On February 15, 2018, the Center received an email communication from the Respondent. On the same day, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 20, 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.
The First Complainant is a company registered in Belgium. The Second Complainant is a company registered in Sweden. Both Complainants are subsidiaries of an ultimate parent company, Essity AB, registered in Sweden, which is a supplier of personal hygiene products including toilet tissue rolls.
The Complainants (or other members of their group of companies) are the owners of certain trademark registrations which include the term SMARTONE. Those registrations include, for example:
- International Trademark number 0881233 for the figurative trademark shown below, registered on February 10, 2006 for goods and services including toilet paper and apparatus for distributing toilet paper in Classes 16 and 21 and designating a total of 25 jurisdictions including Ireland;
- Irish trademark number 1049965 for the figurative trademark shown below, registered on August 12, 2010 with a priority date of March 18, 2010 in Classes 3, 5, 11, 16 and 21 for goods and services including toilet paper and related apparatus;
- European Union Trade Mark number 011439742 for the word mark SMARTONE, registered on May 21, 2013 with a filing date of December 19, 2012 in Classes 16, 20 and 21 for goods and services including toilet paper and dispensers.1
Both of the disputed domain names were registered on October 8, 2010.
According to evidence submitted by the Complainants, on January 8, 2018 the disputed domain name <smartonesystem.com> resolved to a website at "www.selco.ie", being the website of "Selco Hygiene Supplies", which offered toilet rolls and other hygiene products for sale online. The disputed domain name <smartonetissue.com> resolved to a website at "www.smartonetissue.com" which stated:
"Welcome to www.SMARTONETISSUE.COM and SMARTONESYSTEM.COM web site. We are available at Selco Hygiene Supplies Ireland. www.selco.ie. We are offering these domain names for sale to the public. If you are looking to buy these high ranking domain names please contact Selco Hygiene Supplies with your offer."
The website also stated:
"Smart One Tissue @ Selco Hygiene Supplies, Centrepull Toilet Tissue Cost u Less @ Selco.ie"
The Complainants say that they are one of the world's largest personal care companies and have operated since 1929. They state that in 2012 they acquired the European paper tissue operations of a company named Georgia-Pacific, from whom they obtained the SMARTONE brand and trademark. The Complainants exhibit evidence that a "Smart One Toilet Tissue System" was being marketed in Ireland in 2006 and was being actively promoted by Georgia-Pacific in 2007. The Complainants submit that both the disputed domain names were registered well after the date of Georgia Pacific's use of the SMARTONE mark in connection with toilet tissue systems in Ireland.
The Complainants submit that both the disputed domain names are identical or confusingly similar to their SMARTONE trademark. They say that the mark SMARTONE is incorporated in full in each case, together with the respective terms "system" and "tissue", which they say are obvious references to their toilet tissue system.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainants say that they have never licensed or permitted the Respondent to use their SMARTONE mark, that they have no affiliation with the Respondent and that the Respondent has never been known by a name corresponding to either of the disputed domain names. In relation to the disputed domain name <smartonesystem.com>, the Complainants refer to the website mentioned above and provide evidence that the Respondent has used the site to offer cheap third-party toilet paper rolls for the "Smart One" system which compete with the Complainants' genuine goods. In connection with the disputed domain name <smartonetissue.com>, the Complainants refer to the Respondent's website offering to sell both disputed domain names. They submit evidence that the disputed domain name <smartonesystem.com> is being offered for sale on a GoDaddy auction site with a reserve price of USD 4,500 and that the disputed domain name <smartonetissue.com> is being offered for immediate sale for USD 5,000. The Complainants also exhibit email correspondence from October 2017, at which time the Respondent was requesting between EUR 1,400 and EUR 1,800 for each of the disputed domain names. The Complainants say that none of the Respondent's activities amounts to either bona fide commercial use or legitimate noncommercial use of either of the disputed domain names.
The Complainants contend that the disputed domain names were registered and are being used in bad faith. In this regard, they rely on the same facts as set out above. They say that the Respondent must have known of the Complainants' trademark SMARTONE when it registered the disputed domain names because the Complainants' trademarked products had been widely known in the Respondent's industry since 2006 or 2007. They also argue that the addition of the terms "system" and "tissue" make it obvious that the Respondent know of, and intended to take advantage of, the Complainants' trademark. The Complainants say that the Respondent is using names which correspond to their trademark to offer competing products for sale, and is therefore misrepresenting an affiliation with the Complainants in connection with its website in order to gain an unfair commercial advantage. The Complainants add that the Respondent offering both disputed domain names for sale at prices significantly in excess of its out-of-pocket expenses is also evidence of bad faith.
The Complainants request the transfer of the disputed domain names to the Second Complainant.
The Respondent did not file a formal Response to the Complainants' claim. However, the Panel determines that the Respondent's emails to the Center dated January 19, 2018 and February 15, 2018 shall stand as its Response in this proceeding. In the first email, the Respondent states that it has owned the disputed domain names for seven years "as the product is one that we sell." It adds that it has "used these names to promote these products which we sell, along with thousands of other products on our web page." In the second email, the Respondent argues that its business is too small to impact upon that of the Complainants. It adds that the name "Smart One" is used by many companies and provides an example of a wall-mounted sanitary system in which the name "Smart One" is claimed as a registered trademark by a third-party company.
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Complainants have established that they have registered trademark rights in the mark SMARTONE, including a word mark and figurative marks of which this term is a significant component. The disputed domain names are <smartonesystem.com> and <smartonetissue.com>. Each of these names incorporates the Complainant's marks SMARTONE in full together with the addition of a descriptive dictionary term. In the view of the Panel, neither of the terms "system" or "tissue" is effective to distinguish the respective disputed domain names from the Complainant's trademark and the Panel therefore finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainants have rights.
It appears to the Panel that the Respondent makes an inconsistent case with regard to its use of the disputed domain names. It claims in its first email that it legitimately uses the names in connection with its sale of the Complainant's products, but suggests in the second email that the disputed domain names do not necessarily refer to the Complainants' trademark. In the view of the Panel, however, it is clearly to be concluded from the evidence, including the Respondent's use of the disputed domain name <smartonesystem.com> and the submissions contained in its first email, that it registered and has used the disputed domain names in order to refer to the Complainants' trademark.
In certain limited circumstances, a reseller of trademarked goods or services may legitimately incorporate that trademark into a domain name used for the resale of the goods or services in question (see, e.g., section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). However, those circumstances do not include those where the domain name amounts to an impersonation of the trademark owner, or those where the domain name is used to sell goods or services other than those offered by the trademark owner. In this case the Complainants (or their predecessor) has marketed products including the "Smart One Toilet Tissue System" and in the view of the Panel, there is a significant likelihood that Internet users, particularly in the relevant marketplace, would mistakenly assume that disputed domain names, <smartonesystem.com> and <smartonetissue.com>, are operated or authorised by the Complainants. This constitutes an impersonation of the Complainant in the view of the Panel. Further, the disputed domain name <smartonetissue.com> is not actually used to offer any goods and the Respondent has, by its own admission, used the disputed domain name <smartonesystem.com> to redirect to a website offering goods including those which emanate from suppliers other than the Complainants. The Panel accepts the Complainants' submission that these include in some cases directly competitive goods. The Panel also finds that the disputed domain name <smartonetissue.com>, in addition to offering both disputed domain names for sale, has promoted the Respondent's website at "www.selco.ie" to customers looking for the Complainant's goods. Therefore, the Panel finds that there is no legitimate use of either of the disputed domain names in connection with the resale of the Complainants' goods.
The Panel finds further that the Respondent has offered the disputed domain names for sale at prices which are likely to be significantly in excess of its documented out-of-pocket costs directly related to those domain names. While the sale of domain names consisting of acronyms, dictionary words, or common phrases can in certain circumstances give rise to a bona fide interest in those names (see, e.g., section 2.1 of the WIPO Overview 3.0), this does not apply in cases where a respondent has registered a domain name with a view to targeting the complainant's trademark. The Panel finds that the Respondent has so targeted the Complainants' trademark in this case, and that its offer to sell the disputed domain names does not in those circumstances give rise to any rights or legitimate interests.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names.
It is evident to the Panel from the Respondent's use of both disputed domain names as described above, as well as the admissions contained in its first email to the Center, that it was aware of the Complainants' trademark SMARTONE at the time it registered the disputed domain names and registered those names in order to refer to that trademark.
The Respondent accepts that it has used the disputed domain name <smartonesystem.com> to redirect to a website offering goods including those not emanating from the Complainants, and the Panel finds that the Respondent has used the disputed domain name <smartonetissue.com> both to promote that website and to offer both the disputed domain names for sale. The Panel finds both the disputed domain names to be inherently misleading and that, by using the disputed domain names the Respondent has sought to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation or endorsement of that website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).
Further or alternatively, the Panel finds that the Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain names (paragraph 4(b)(i) of the Policy).
In the circumstances, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith.
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 names, <smartonesystem.com> and <smartonetissue.com>, be transferred to the Second Complainant, SCA Hygiene Products AB.
Steven A. Maier
Date: February 22, 2018
1 While the Complainants have produced evidence of this registration in the name of the First Complainant as of November 27, 2017, the Panel notes that it is currently held in the name of Essity Hygiene and Health AB.
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