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Henkel Corporation v. Loctite-Henkel Antique Vending Machines/Norpak Adhesives/Gary Shipko [2005] GENDND 1785 (16 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Henkel Corporation v. Loctite-Henkel Antique Vending Machines/Norpak Adhesives/Gary Shipko

Case No. D2005-0840

1. The Parties

Complainant is Henkel Corporation, Gulph Mills, Pennsylvania, United States of America, represented by Abelman Frayne & Schwab, United States of America.

Respondent is Loctite-Henkel Antique Vending Machines/Norpak Adhesives/Gary Shipko, all of Lowell, Massachusetts, United States of America.

2. The Domain Names and Registrar

The disputed domain names <henkel-loctite.com> and <loctite-henkel.com> are registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2005. On August 5, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain names at issue. On August 5, 2005, Register.com transmitted by email to the Center its verification response confirming that Loctite-Henkel Antique Vending Machines, Gary Shipko is the registrant of the domain name <loctite-henkel.com> and that Norpak Adhesives, Gary Shipko is the registrant of the domain name <henkel-loctite.com>. The registrar verification response also provided contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on August 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 31, 2005. Respondent did not submit any response by this due date. Accordingly, the Center notified Respondent’s default on September 2, 2005.

The Center appointed Kevin C. Trock as the sole panelist in this matter on September 9, 2005. 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 Center received a late Response to the Complaint from Respondent Gary Shipko on September 19, 2005. The Panel issued Administrative Order No. 1 requesting further submission of information from the parties on September 21, 2005. The Center received supplemental information from Complainant on September 29, 2005. No supplemental information was received by the Center from Respondent.

4. Factual Background

The domain names at issue are <henkel-loctite.com> and <loctite-henkel.com>. The disputed domain names were registered by Respondent on November 2, 1999 and October 12, 2000 respectively.

Complainant is the Henkel Corporation, a wholly owned subsidiary of Henkel KGaA. Henkel KGaA owns numerous trademark registrations for the mark HENKEL in relation to adhesive products in the United States of America and internationally. Complainant is the exclusive licensee of the HENKEL mark in the United States. Complainant owns numerous registrations for the mark LOCTITE in relation to adhesive products in the United States.

Complainant seeks transfer of the disputed domain names and claims standing for such transfer because of its ownership of the LOCTITE registrations and its status as exclusive licensee of the HENKEL mark in the United States.

Respondent Gary Shipko has admitted that he is the registrant of the disputed domain names and he is listed as registrant of each of the domain names, along with Loctite-Henkel Antique Vending Machines for <loctite-henkel.com> and Norpak Adhesives for <henkel-loctite.com>.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it is the exclusive licensee for the HENKEL mark in the United States and that it is the wholly owned subsidiary of the owner of the HENKEL mark. Complainant also alleges that the owner of the HENKEL mark has numerous trademark registrations for the mark throughout the world including the United States. Complainant alleges that the HENKEL mark has developed a substantial reputation and is well known among consumers in the adhesives industry among others.

Complainant also alleges that it is the owner of the LOCTITE mark in the United States. Complainant alleges that the LOCTITE mark has been used in connection with adhesive products since 1954, and has been used in connection with adhesive products in over 80 countries. Complainant alleges that it owns numerous trademark registrations for the LOCTITE mark in the United States and other countries. Complainant alleges that millions of dollars are spent each year advertising and promoting the HENKEL and LOCTITE marks.

Complainant alleges that Respondent has not been authorized to use the HENKEL or LOCTITE trademarks in any manner and has registered the disputed domain names to create consumer confusion and to trade off the good will of the HENKEL and LOCTITE trademarks.

B. Respondent

A late Response to the Complaint was submitted by Respondent. Although not required to, the Panel has considered Respondent’s allegations as set out in the Response.

Respondent claims that he has been a customer of Complainant for over 30 years. Respondent claims that he registered the domain name <henkel-loctite.com> for the purpose of marketing both the HENKEL and LOCTITE brand of products on the Internet with the knowledge of his Henkel Representative at the time. Respondent alleges that subsequent to a reorganization of the Henkel Group, Respondent lost his contacts with Complainant and had no further use of the <henkel-loctite.com> domain name. Respondent alleges that he offered to sell this domain name to Complainant for “a little more than just a couple of dollars”. Complainant apparently refused to pay for the domain name. Respondent alleges that he subsequently considered using this domain name in connection with his antique slot-machine hobby, but was never able to do so.

Respondent provided no explanation for the registration of the <loctite-henkel.com> domain name which is also under dispute. Respondent alleges that this domain name was being used by someone without his authority to direct visitors to the Henkel and Loctite websites, among others.

6. Discussion and Findings

In order to prevail, Complainant must prove the following three elements:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the domain name; and

(iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

A. Identical or Confusingly Similar

Complainant alleges that it is the owner of the LOCTITE mark and that it is the exclusive licensee of the HENKEL mark and has provided evidence in support of these allegations. Respondent provides no information to dispute these assertions. Accordingly, the Panel finds that Complainant has rights in the HENKEL and LOCTITE marks.

The disputed domain names <henkel-loctite.com> and <loctite-henkel.com> are an exact combination of two trademarks owned or licensed by Complainant, HENKEL and LOCTITE. The disputed domain names are confusingly similar to the HENKEL and LOCTITE marks and the combination of these two marks in the disputed domain names does nothing to dispel this confusion.

Accordingly, the Panel finds that the disputed domain names <henkel-loctite.com> and <loctite-henkel.com> are confusingly similar to the HENKEL and LOCTITE marks.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has not been licensed, authorized, contracted or otherwise permitted to use the HENKEL and LOCTITE marks in any manner.

Respondent alleges that he has been a customer of Complainant for over 30 years. Respondent also claims that he has been a supplier of Complainant, supplying them with products packaged under the HENKEL brand. Respondent admits that he was not a customer of Loctite and has not purchased or resold any LOCTITE products. Thus it appears that at one time Respondent may have had some rights to use the HENKEL mark only.

Respondent alleges that he registered the <henkel-loctite.com> domain name for the purpose of selling HENKEL and LOCTITE branded products and that his Henkel representative at the time was aware of this development. However, Respondent admits that this relationship changed with the reorganization of the Henkel Group and that this project never went forward.

Subsequently, Complainant has alleged that Respondent has no authority to use the HENKEL or LOCTITE marks.

Accordingly, while the Panel has considered Respondent’s allegations that he at one stage had a legitimate interest in the domain names, the Panel finds that Respondent no longer has any rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

Complainant alleges that Respondent registered the disputed domain names to create consumer confusion and to trade off of the goodwill associated with the HENKEL and LOCTITE brands. Complainant also alleges that Respondent offered to sell the disputed domain names to Complainant for $350,000. Complainant also alleges that Respondent placed the domain name <loctite-henkel.com> up for auction on Ebay for $3,000,000.

The disputed domain names are either not currently being used to support a website or are supporting a website that provides links to Complainant’s website and/or websites of Complainant’s competitors.

Respondent claims that he offered to sell the <henkel-loctite.com> domain name to Complainant for “a little more than just a couple of dollars”. Respondent does not discuss Complainant’s allegations of posting the <loctite-henkel.com> domain name up for auction on Ebay for $3,000,000.

Paragraph 4(b)(i) of the Policy states that evidence of registration and use of a domain name in bad faith can be demonstrated by:

“circumstances indicating that you [the respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.

Here, the circumstances indicate that Respondent attempted to sell at least one of the disputed domain names to Complainant for a substantial amount of money. Circumstances also indicate that Respondent posted the other disputed domain name on Ebay to auction it off for $3,000,000. Although auctioning a domain name is not specifically addressed by the paragraph of the Policy cited above, it is clear from the evidence that Respondent has attempted to profit from the transfer of the disputed domain names in an amount far in excess of his registration costs. Previous Panels have found that placing a disputed domain name up for auction is evidence of bad faith. See CONOCO INC. v. RDH Computer Solutions/Ronald D. Harris, WIPO Case No. D2000-0960. This Panel concurs and finds that Respondent has registered and used the domain names in bad faith.

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 names <henkel-loctite.com> and <loctite-henkel.com> be transferred to Complainant.

Kevin C. Trock
Sole Panelist

Date: October 16, 2005