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Unilever N.V. v. Kentech, Inc. [2005] GENDND 2120 (12 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Unilever N.V. v. Kentech, Inc.

Case No. D2005-1021

1. The Parties

The Complainant is Unilever N.V. with its principal place of business at Weena, the Netherlands, represented by Duane Morris LLP of New York City, New York, United States of America.

The Respondent is Kentech, Inc. of Eldoret, Rift Valley, Kenya, not represented in this Complaint.

2. The Domain Name and Registrar

The disputed domain name <unilevericecream.com> is registered with Domain Contender, LLC., whose principal place of business is at New Orleans, Louisiana, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2005. On September 28, 2005, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On September 29, 2005, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 6, 2005. 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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2005.

The Center appointed Zoltán Takács as the sole panelist in this matter on November 16, 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.

Due to courier delivery problems, the Center extended the scheduled term for issuance of the Panel’s decision until December 12, 2005, and the parties have been notified by the Center on the extension on December 2, 2005.

The language of the proceeding is English.

4. Factual Background

The Complainant in this proceeding, Unilever N.V. is one of the two parent companies (the other being Unilever PLC) of one of the largest consumer product corporations in the world. Unilever N.V. and Unilever PLC operate Unilever as a joint venture, and these three companies operate as the Unilever Group. According to the Forbes Global 2000 (a ranking of the top 2000 public corporations in the world based on a balance of four metrics (sales, profit, assets and market value), which is compiled and published annually by Forbes magazine (www.forbes.com), Unilever ranks 92 overall with sales amounting to 47.09 billions of dollars US, and with a market value of 65.57 billions of dollars US. Unilever is among the world’s largest ice cream producers, with sales in more than 40 countries.

The Complainant holds trademark rights in the UNILEVER trademark. The Hungarian Trademark Registration No. 153.137 UNILEVER with priority of July 15, 1997, among other goods protects ice cream and confectionary of Class 30 under common classification of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.

The disputed domain name <unilevericecream.com> was created on May 5, 2005, and both at the time of filing of the Complaint and issuance of the decision resolved to a sponsored Web site called “Web Search” offering search options for subjects like: ice cream maker, ice cream franchise, ice cream equipment etc. Both at the time of filing of the complaint the sponsored Web site under the disputed domain name prominently displayed on the top right hand corner of the site’s home page inviting visitors to “Buy This Domain! Find Out How Click Here!”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <unilevericecream.com> incorporates in its entirety its UNILEVER trademark, making the domain name confusingly similar thereto. The Complainant claims that customers are likely to believe that the disputed domain name is related to or associated with Unilever, which amounts to and satisfies the confusing similarity requirement of the Policy.

The Complainant further alleges that Unilever has never authorized the Respondent to own or use the <unilevericecream.com> domain name or to apply for a domain name, which incorporates in whole or in part the UNILEVER trademark and trade name. The Complainant argues that not only the Respondent failed to put forward any facts that could possibly demonstrate its rights or interests in the disputed domain name, but when a trademark such as UNILEVER counts highly distinctive and venerable, it is not reasonable to believe that the Respondent could demonstrate any legitimate rights and interests in a domain name consisting in whole of UNILEVER, in particular being coupled with the phrase “ice cream”, which Unilever is famous for selling.

Finally, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, number of facts and circumstances of this case prove the Complainant’s bad faith conduct, e.g. the Complainant has taken Unilever’s trade name and trademark as the dominant part of the disputed domain name, it has not used the domain name bona fide, its registration and use of the domain name is highly likely to cause confusion with Unilever and last but not least, its trying to sell the domain name

The Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the domain name should be transferred or cancelled:

- The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted that it owns numerous registrations for its UNILEVER trademark, including but not limited for Class 30 goods, and as evidence of this has provided a computer printout sheet listing, with no hard copy printout of any of the corresponding registration certificates. Whereas paragraph 3 (b)(viii) of the Rules provides for obligation of specifying the trademark(s) on which the complaint is based, but does not explicitly require submission of any registration certificates as to the corresponding trademark(s), in the eye of this Panel, simple listing provided by the Complainant could have been supported by hard copy certificates for at least some of the trademarks referred to.

Though the Panel could have and was contemplating to request that the Complaint remedy this deficiency, it has decided not to do so for the following reasons.

First, it has been a broadly accepted view that the Policy provides cost-effective and efficient procedure for challenge of domain names that are believed to have been registered in bad faith and with that reduces incentives for cybersquatters, and the Panel considered important to observe this principle feature and advantage of the system, rather then to request formal evidence to what appeared to be highly likely, yet not properly evidenced.

Second, in accordance with paragraph 3 (b)(xiv) of the Rules, the Complainant certified that the information contained in the Complaint is, to the best of Unilever’s knowledge, complete and accurate. This Panel was not questioning accuracy of the Complainant’s statements, it only considered the evidence submitted insufficient.

Third, it has been a consensus view in the WIPO UDRP Panel Decisions (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5, http://arbiter.wipo.int/domains/search/overview/index.html) that when reaching the decision, the panel may undertake limited factual research into matters of public records if it feels that it needs that assistance in reaching a decision. To this end the Panel consulted the public register of trademarks maintained by the Hungarian Patent Office, and ascertained that the Complainant does indeed own valid trademark rights in the UNILEVER trademark, as per the registration number 153.137 with priority of July 15, 1997, for vast number of goods and services, including ice cream and confectionery.

It has also been a consensus view of the UDRP Panelists (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.1) that if the Complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights, irrespective of location of the registration and the goods and/or services for what the trademark has been registered for. Therefore, the Panel finds that Complainant has rights in the “UNILEVER” trademark.

The Panel also finds that the <unilevericecream.com> domain name is confusingly similar to the Complainant’s UNILEVER trademark, because the only difference is the addition of the word “icecream”, a generic term that is not capable to significantly distinguish the domain name from the mark. In addition, this generic term has close and obvious relationship to Complainant’s business, which would suggest that there is or at least might be an association with Complainant’s business. For all these reason the Panel finds that the first UDRP element is successfully established.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, Respondents may demonstrate their rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:

(i) their use or, or demonstrable preparations to use, the contested domain names or names corresponding to contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute, or

(ii) they (as individuals, a business, or other organization) have been commonly known by the contested domain names, even if they acquired no trade mark or service mark rights, or

(iii) they are making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If the Respondent had any justification for registering and using the disputed domain name, it could have provided it. Instead, the Respondent chose not to respond and rebut the Complainant’s allegations, and in view of its failure to submit a response, the Panel had to decide this dispute on the basis of the Complainant’s undisputed presentations. Though a failure of the Respondent does not automatically result in a decision of the complainant, the Panel may draw negative inferences from the Respondent’s default (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph. 4.6).

In this case, the Respondent is not a licensee of the Complainant, nor has ever been given any permission or authorization for use of the domain name, which fully incorporates the UNILEVER trademark of the Complainant. Further, the Complainant’s prior rights in the UNILEVER trademark long preceded the Respondent’s registration. Also, the Respondent has not been commonly known by the disputed domain name or used the disputed domain name in connection with legitimate or fair use.

For all these reasons the Panel finds that the second UDRP element has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists the circumstances, in particular but without limitation, which if found by the Panel, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy provides that there is evidence of bad faith registration and use where, by using the domain name, the respondent has intentionally attempted to attract for commercial gain, Internet users to its web site or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site.

There is compelling evidence put forward by the Complainant which convinces this Panel that the <unilevericecream.com> domain name registration and use amounts to tarnishing the Complainant’s image, diverting its clients and interfering with its business through domain name abuse.

Based on the evidence presented, the Panel can only conclude that the disputed domain name has been and is being used for diverting Internet users to sponsored links. The purpose of using the Complainant’s broadly recognized UNILEVER trademark in the <unilevericecream.com> domain name has been and is to capture consumers who are seeking the Complainant’s products, or other information about the Complainant, and to redirect them to other web sites. The Panel does not consider such use of a domain name to be either legitimate or in good faith.

The Respondent has been misusing the broad recognition of the UNILEVER trademark in order to obtain financial benefit from redirecting web traffic. The Panel finds that the <unilevericecream.com> domain name has been registered and is being used 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 name <unilevericecream.com> be transferred to the Complainant.

______________________________

Zoltán Takács

Sole Panelist

Date: December 12, 2005