The Complainant is Reckitt & Colman (Overseas) Health Limited, United Kingdom (“UK”), represented by Studio Barbero, Italy.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Zhongqi Jia, China / Effie Sokolowski, United States.
The Disputed Domain Names <dettolclean.com> and <dettols.com> are registered with NameSilo, LLC
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 20, 2020, 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 Complainant on November 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 25, 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 the Respondent of the Complaint, and the proceedings commenced on November 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on December 30, 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.
The Complainant has made a request for consolidation of the Disputed Domain Names based on Complainant’s belief that they are owned and controlled by the same Domain Holder, which registered and used them for the same infringing purpose.
Pursuant to section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in consolidation scenarios panels look at whether (i) the domain names or corresponding websites are subject to common control, and (2) the consolidation would be fair and equitable to all parties. Procedural efficiency is also considered.
Despite that the Disputed Domain Names have been registered through a privacy protection service and are formally registered in the name of different underlying registrants, the Panel considers that there are many circumstances in the case which would lead to indicate that they are in fact under common control, which justifies the requested consolidation.
The Disputed Domain Names have been registered with the same registrar NameSilo, LLC. and within a short period of time, i.e. October 2 and 28, 2020.
Both Disputed Domain Names use Cloudflare nameservers.
The Disputed Domain Names incorporate the Complainant’s trademark DETTOL in its entirety and are registered in the same generic Top-Level Domain (“gTLD”), i.e. “.com”.
The Disputed Domain Names have been used to host the same website, imitating the look and feel of the official website “www.dettol.co.uk” by using the Complainant’s trademarks and visuals, publishing Reckitt Benckiser’s (“RB”) Consumer Relations’ contact details and offering for sale purported DETTOL products, (interestingly with the same typo “Shiping” instead of “Shipping” displayed on the home page of the website to which the Disputed Domain Names resolved).
The same email address “[email protected]”, was published on the website to which the Disputed Domain Names resolved.
In the light of the foregoing and the fact that the Respondent has not raised any objection to the Complainant’s request, despite having had the opportunity to do so, the Panel considers that in all probability the Disputed Domain Names are subject to a common control, that the requested consolidation is fair and equitable to all parties and in addition entails procedural efficiency. Therefore, the Panel grants the Complainant’s request for consolidation.
The Complainant is part of the RB group of companies, headquartered in Slough, United Kingdom, with global dealings in consumer health, hygiene and home products.
The Complainant owns several trademark registrations for DETTOL, including the following:
International Trademark Registration No. 1051284 DETTOL (word mark) of June 11, 2010, in classes 3, 5 and 21;
European Union Trademark Registration No. 003033842 DETTOL (word mark) of December 21, 2004 in classes 3, 5 and 21;
European Union Trademark Registration No. 009153511 DETTOL (word mark) of November 15, 2010
European Union Trademark Registration No. 003032299 DETTOL (figurative mark) of June 17, 2004 in classes 3, 5 and 21.
The domain name <dettol.com> registered on November 24, 1995 in the name of the Luxembourg entity Reckitt Benckiser SARL, which is a subsidiary of the Reckitt Benckiser Group is pointed to the RB’s global website “www.rb.com” providing information about RB’s business and main brands including DETTOL.
The Disputed Domain Name <dettols.com> was registered on October 2, 2020 and is currently not resolving to an active website, since it has been put by the registrar in the “clientHold” status as a result of a report filed by the Complainant to the UK police and an abuse report sent to the registrar by the representative of the Complainant in this proceeding on October 23, 2020.
The Disputed Domain Name <dettolclean.com> was registered shortly after on October 28, 2020 and was pointed to a website identical to the one to which the Disputed Domain Name <dettols.com> previously resolved, including also the same contact details of RB Consumer Relations in the UK and the email address “[email protected]”, as shown in screenshots supplied with the Complaint.
The Complainant claims that the trademark DETTOL has been used for more than 80 years in relation to cleaning, disinfectant and germ protection products, which have been marketed and sold in over 120 countries of the world. DETTOL is the world’s leading brand of antiseptics used for a line of liquid and solid antiseptics manufactured by the Complainant.
In essence, the Complainant claims that the Disputed Domain Names <dettols.com> and <dettolclean.com> are confusingly similar to the trademark DETTOL in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the Disputed Domain Names, which have been registered and are used by the Respondent in bad faith.
More specifically, the Complainant asserts that the Respondent is not nor ever has been generally known by the Disputed Domain Names and, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademark DETTOL or to seek registration of any domain name incorporating said trademark.
Finally, the Complainant requests the Panel to order the transfer of the Disputed Domain Names to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Names, the Complainant must prove each of the following, namely that:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names were registered and are being used in bad faith.
The Panel is satisfied that the Complainant has proven that it has rights in the trademark DETTOL.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case, the Disputed Domain Name <dettols.com> contains the Complainant’s trademark DETTOL in its entirety with the addition of the letter “s” which makes it a clear case of “typosquating”. As to the other Disputed Domain Name <dettolclean.com> it also includes the trademark DETTOL in its entirety with the addition of the descriptive word “clean” (related to the hygiene products business of the Complainant) which in the Panel’s view does not avoid a finding of confusing similarity.
As set forth in section 1.7 of WIPO Overview 3.0, in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar with that mark.
Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms (such as “clean”) would not prevent a finding of confusing similarity under the first element.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” included in the Disputed Domain Names.
The Panel finds that the Disputed Domain Names are confusingly similar with the trademark DETTOL in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the Disputed Domain Names, enabling it to establish rights or legitimate interests therein. The names of the Respondent do not resemble the Disputed Domain Names in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the Disputed Domain Names.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Names - which are confusingly similar with the Complainant’s trademark - but rather that it intends to use the Disputed Domain Names for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the Disputed Domain Names relate is the official site of the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.”
As indicated in paragraph 6.A above, the Disputed Domain Names are confusingly similar with the Complainant’s trademark DETTOL and the Respondent is not using the Disputed Domain Names in any way that may be considered fair use.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Disputed Domain Names (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s business and its DETTOL mark when it registered the Disputed Domain Names on October 2 and 28, 2020.
The Respondent when registering the Disputed Domain Names has targeted the Complainant’s trademark DETTOL, which is the most prominent and distinctive element in the Disputed Domain Names, followed by the letter “s” and the descriptive word “clean”, related to the hygiene product business of the Complainant, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademark for its own monetary benefit.
Considering that the website to which the Disputed Domain Names resolved imitated the Complainant’s website “www.dettol.co.uk” provided no disclaimer as to lack of affiliation with the Complainant and was promoting the sale of purported DETTOL products at discount prices, and offering free shipping for certain orders, there is no doubt that by registering and using the Disputed Domain Names the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the products offered therein, in the terms of paragraph 4(b)(iv) of the Policy.
The fact that the Disputed Domain Names currently pointed to an inactive website as a result of the Complainant’s reports to the UK Police and the relevant registrar, on the basis of the “passive holding” doctrine, it does not avoid a finding of bad faith from the Panel.(see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.
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 <dettolclean.com> and <dettols.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: January 6, 2021
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