Kimberly-Clark Worldwide, Inc. v. Arexim
Claim Number: FA1109001409627
Complainant is Kimberly-Clark Worldwide, Inc. (“Complainant”), represented by Chad J. Doellinger, Illinois, USA. Respondent is Arexim (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2011; the National Arbitration Forum received payment on September 29, 2011.
On October 2, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dependadultdiaper.com, postmaster@dependsadultdiaper.com, postmaster@dependincontinence.com, postmaster@dependbriefs.com, postmaster@dependsbriefs.com, postmaster@dependdiaper.com, postmaster@dependsdiaper.com, postmaster@dependsproducts.com, and postmaster@dependundergarments.com. Also on October 7, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent’s Default.
On November 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names are confusingly similar to Complainant’s DEPEND mark.
2. Respondent does not have any rights or legitimate interests in the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names.
3. Respondent registered and used the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kimberly-Clark Worldwide, Inc., offers adult incontinence products under its DEPEND mark. Complainant owns numerous trademark registrations for its DEPEND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,154,489 registered May 19, 2001) and Panama’s Directorate General of the Industrial Property Registry (“DGIPR”) (e.g., Reg. No. 38875/4086 registered June 30, 1996).
Respondent, Arexim, registered the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names on March 4, 2010. The disputed domain names resolve to a portal website, <adultdiapers.com>, that hosts multiple hyperlinks to third-parties that sell competing incontinence products.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In support of its claim that Complainant owns Policy ¶ 4(a)(i) rights in the DEPEND mark, Complainant provides evidence that it holds numerous trademark registrations for the DEPEND mark with the USPTO (e.g., Reg. No. 1,154,489 registered May 19, 2001) and DGIPR (e.g., Reg. No. 38875/4086 registered June 30, 1996). The Panel determines that this evidence is sufficient and holds that Complainant has established Policy ¶ 4(a)(i) rights in the DEPEND mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names are confusingly similar to Complainant’s DEPEND mark. The disputed domain names make some or all of the following alterations to Complainant’s mark: the addition of descriptive terms, the addition of generic terms, the addition of the letter “s,” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel determines that all of these changes are insufficient to adequately distinguish the disputed domain names from Complainant’s mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s DEPEND mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known by the disputed domain names. Complainant asserts that it has not granted Respondent any rights in the DEPEND mark and that Complainant is unrelated Respondent. The WHOIS information identifies the registrant of the disputed domain names as “Arexim,” which is not similar to any of the disputed domain names. After examining the record, the Panel finds no evidence that Respondent is commonly known by the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant alleges and presents screen shot evidence that Respondent uses the disputed domain names to resolve to the <adultdiapers.com> website that hosts hyperlinks to third-parties that sell competing incontinence products. The Panel concludes that Respondent’s use of the disputed domain names demonstrates that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant does not argue bad faith registration and use under Policy ¶ 4(b)(iii) specifically. However, Complainant does claim that Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by redirecting potential customers to Complainant’s competitors. The Panel determines that Respondent’s registration and use of the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names does disrupt Complainant’s business and holds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant does contend that Respondent registered and uses the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent has attempted to attract Internet users to the <adultdiapers.com> website by creating confusion as to Complainant’s affiliation with the disputed domain names and resolving websites. Complainant argues that Respondent profits from this confusion. The Panel finds that Complainant’s contentions are true and concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dependadultdiaper.com>, <dependsadultdiaper.com>, <dependincontinence.com>, <dependbriefs.com>, <dependsbriefs.com>, <dependdiaper.com>, <dependsdiaper.com>, <dependsproducts.com>, and <dependundergarments.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 3, 2011
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