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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.
Case No. D2001-0110
1. The Parties
The Complainant is Ansell Healthcare Products, Inc., a Delaware corporation, having its principal place of business in Red Bank, New Jersey, USA.
The Respondent is Australian Therapeutic Supplies Pty, Ltd., having its principal place of business in New South Wales, Australia.
2. The Domain Name and Registrar
The domain name at issue is <ansellcondoms.com>. The domain name registrar is Network Solutions, Inc.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on
January 20, 2001, and in hard copy on January 22, 2001.
On January 30, 2001, Network Solutions, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant and that the administrative, technical and billing contact is Dominic Main of NetRegistry Pty Ltd.
On January 30, 2001, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On January 30, 2001, the Center located an active web site at: http://www.condoms.au.com.
On January 31, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by February 19, 2001. The notification was sent to the Respondent by courier, fax and by email. The courier and fax appear to have been transmitted. The email was not transferred successfully.
Respondent did not file a response by the due date. The Center sent a notification of respondent default to the Respondent by email on February 20, 2001.
Complainant elected a three-member Panel. On March 20, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the presiding panelist,
John Swinson and Mark Partridge as panelists and set April 2, 2001 as the deadline for issuance of a decision.
4. Factual Background
Because there is no response, the following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.
"Complainant and its affiliated entities are the owner of all rights in and to the trademark ANSELL for use with condoms not only in Australia, but worldwide. Complainant itself and through its affiliates has obtained over fifty registrations for its ANSELL condoms trademark in Australia and worldwide…
These registrations are valid, subsisting and in full force and effect.
Complainant markets its ANSELL condoms in Australia and throughout the world. It has sold hundreds of million dollars of its ANSELL condoms in Australia and worldwide. Complainant has spent large amounts of money and effort marketing its ANSELL condoms in Australia and worldwide.
Complainant uses its ANSELL mark in connection with many different lines of condoms, such as its LIFESTYLES, ROUGH RIDER and CHECKMATE brands. These brands are some of the most popular condom brands in Australia and worldwide. As a result of Complainant’s use of its ANSELL mark in connection with a wide diversity of popular brands, the ANSELL mark has become an exceedingly famous house mark, well known by the Australian and worldwide consumer population.
Complainant and its affiliates and subsidiaries maintain a web site on the Internet at the <ansell.com> address. At this site, Complainant advertises its various ANSELL condoms. Complainant has spent great amounts of money and effort developing and maintaining its <ansell.com> web site.
As a result of Complainant’s extensive marketing and sales, the ANSELL condoms and ANSELL mark have become extremely famous, and Complainant has created a strong market identity worldwide.
Long before the acts of Respondent complained of herein, and by virtue of Complainant’s extensive marketing of its ANSELL condoms, Complainant’s ANSELL mark had become recognized by consumers in Australia and throughout the world as designating Complainant as the source of the products so marked. Accordingly, the ANSELL mark is extremely valuable to Complainant."
The Respondent registered the domain name at issue Network Solutions on November 29, 2000.
5. Parties Contentions
Complainant makes the following allegations. The factual elements of such allegations are generally accepted as true in the circumstances of this case in light of the Complainant's supporting documents and in the absence of a response from the Respondent. The legal issues are discussed in the next section of this decision.
Complainant contends that the Respondent has no rights or legitimate interests in the domain name and relies on the following elements:
"Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainant’s ANSELL marks for any purposes.
Respondent has no legitimate rights in the ANSELL condoms mark, it is not Respondent’s business name, a trademark of Respondent’s, nor is Respondent using the ANSELL mark as part of the <ansellcondoms.com> domain name or otherwise for any legitimate non-commercial or fair use purposes."
Complainant further alleges that the domain name was registered and used in bad faith by the Respondent based on the following elements:
"On information and belief, Respondent registered the domain name <ansellcondoms.com> with Network Solutions on November 29, 2000 with full knowledge of Complainant’s famous ANSELL mark, and with the intent of profiting from the use of that mark in the domain name so registered…
Respondent not only registered the domain name <ansellcondoms.com> in bad faith, it is also using the registration in bad faith. Respondent is a direct competitor of Complainant. Respondent is using Complainant’s ANSELL mark to sell Respondent’s competing condoms. Specifically, Respondent uses the <ansellcondoms.com> domain name to direct users to its marketing and sales site (located at condoms.au.com), from which Respondent sells its own condom products…
On information and belief, respondent has a history of such bad faith behavior. Respondent has also registered another domain name that contains the trademark of another condom manufacturer, namely<durexcondoms.com> As with the <ansellcondoms.com> domain name, Respondent also uses the <durexcondoms.com> domain name to link Internet users to Respondent’s condoms.au.com web site, from which Respondent sells its own, competing, condoms.
The domain name at issue is not the name of Respondent, nor can it be considered its business name or common trade name. There is no legitimate basis for Respondent’s registration of <ansellcondoms.com>.
…Respondent’s acts constitute bad faith under Section 4(b)(iv) of the Policy. Specifically, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to [its] web site by creating a likelihood of confusion with the Complainant’s mark." Respondent has intentionally registered the <ansellcondoms.com> domain name in order to lure unsuspecting Internet users to its web site, pass Respondent’s condoms off as ANSELL condoms, and thereby profit from Complainant’s mark.
Because of the great fame of the ANSELL mark in Australia and worldwide, and as a direct competitor of Complainant, Respondent must have been (or should have been) aware of the ANSELL mark’s enormous strength as a house brand. On information and belief, Respondent is using the ANSELL mark in the <ansellcondoms.com> domain name in order to confuse consumers into believing that its condoms are another one of Complainant’s brands, or are somehow sponsored or affiliated with Complainant.
By reason of Respondent’s acts set forth herein, Complainant has been damaged and its business has been disrupted. If Respondent is permitted to retain the domain name registration <ansellcondoms.com>, the injury to Complainant will be irreparable."
The Respondent did not contest the above allegations of the Complainant.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainant has established its rights in the trademark "ANSELL" with trademark registrations in Australia and internationally.
This Panel finds that <ansellcondoms.com> is confusingly similar to the trademark "ANSELL". The addition of the generic name "condoms" does not avoid confusion. In fact, since the term describes the Complainant's products, the addition of "condoms" is more likely to increase confusion. The incorporation of a Complainant's well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant's trademark: see Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, Case No. D2000-0138 (WIPO, April 19, 2000) (finding that because the domain name <quixter-sign-up.com> incorporates in its entirety the Complainant's distinctive mark, QUIXTER, the domain name is confusingly similar); Hewlett-Packard Company v. Posch Software, Case No. FA95322 (Nat. Arb. Forum, Sept. 12, 2000).
The use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. 2000-0834 (WIPO, Sept. 4, 2000).
Therefore, the Complainant has satisfied the first requirement.
B. Respondent's Rights and Legitimate Interests.
The Complainant has established that the trademark has been registered in Australia and internationally. The trademark is well known in Australia. The trademark registrations were prior to the date on which the domain name was reserved.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark. Therefore prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4 (c)(i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name within the meaning of paragraph 4 (c)(ii) or (iii) of the Policy. As discussed below, the Complainant's evidence suggests that the Respondent has attempted to use the domain name for commercial gain.
By not submitting a response, the Respondent has failed to demonstrate, pursuant to paragraph 4 (c) of the Policy, that it has rights or a legitimate interest in the domain name.
Therefore, the Panel concludes on the basis of the evidence of the Complainant that the Respondent has no rights or legitimate interests in the domain name.
C. Bad Faith Registration and Use.
Respondent is clearly a direct competitor of the Complainant in the marketing and selling of condoms in Australia. Respondent appears to have registered the domain name at issue with the intention of disrupting the business of the Complainant. It did this by creating a likelihood of confusion with Complainant's mark "ANSELL" and combining it with the generic term "condoms" used to describe the Complainant's products: see EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., Case No. FA 94385 (Nat. Arb. Forum, July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business); Fossil Inc. v. NAS, Case No. FA 92525 (Nat. Arb. Forum, Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands). This is evidence of use of the domain name in bad faith under paragraph 4(b)(iii) of the Policy.
Registration of a domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name is evidence of bad faith under paragraph 4(b)(ii) of the Policy provided that the holder of the domain name has engaged in a pattern of such conduct. Complainant alleges that the Respondent has also registered the domain name <durexcondoms.com> containing the trademark of another condom manufacturer. Exhibit E of the Complaint shows that this domain name was registered by the Respondent on November 29, 2000, the same date of registration as that of the domain name in dispute. Therefore, there appears to be a pattern of such conduct that is evidence of bad faith under paragraph 4(b)(ii) of the Policy.
In addition, based on the facts as outlined above, it appears that the Respondent registered and is using the domain name in question to attract consumers so that they will access the web site operated by the Respondent.
The domain name is a hypertext link to what appears to be the Respondent's marketing and sales' site containing its product range and details on ordering its products.
Therefore, it appears clear to the Panel that the Respondent has sought to increase the number of "hits" to its site by using the trademark "ANSELL" as a domain name. That increases the commercial value of the Respondent's site, but at the expense of misuse by the Respondent of the trademark in which the Complainant holds rights. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel is satisfied that the Respondent registered and is using the domain name in bad faith in accordance with the criteria set out under paragraph 4(b)(ii), (iii) and (iv) of the Policy.
For the foregoing reasons, the Panel holds:
(a) that the domain name is confusingly similar to the trademark "ANSELL" in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondent registered and is using the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel decides that the domain name <ansellcondoms.com> must be transferred to the Complainant.
Thomas H. Webster
Dated: April 2, 2001