WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reckitt Benckiser (Belgium) S.A./N.V. v. Will Tell, a/k/a J. Sernets
Case No. DNU2001-0002
1. The Parties
The Complainant in this administrative proceeding is Reckitt Benckiser (Belgium) S.A./N.V., Allée de la Recherche 20, 1070 Brussells, Belgium.
The Respondent is Will Tell, also known as J. Sernets of Cybernet Activities BV, Ondernemingsweg 54R, 1422 DZ Uithoorn, The Netherlands.
2. The Domain Name and Registrar
The domain name in dispute is <glassex.nu>.
The Registrar with which the domain name is registered is .NU Domain Limited.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on December 20, 2001, by e-mail and on December 27, 2001, in hardcopy. The Center had acknowledged receipt thereof on December 21, 2001.
On December 31, 2001, the Center sent the corresponding Request for Registrar Verification in connection with this case to NU Domain Limited. On January 10, 2002, the Registrar's verification response confirmed that the Registrant was Will Tell and that the domain name <glassex.nu> was in "active" status.
On January 17, 2002, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail, fax and courier the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), granting the Respondent until February 6, 2002, to submit its response.
On February 4, 2002, the Center received by fax dated February 1, 2002, the Respondent's Response, an original hardcopy of which was received on February 13, 2002.
On February 6, 2002, the Center issued by e-mail and fax the Response Deficiency Notification to the Respondent since its response did not comply with any formalities required by the Uniform Domain Name Dispute Resolution Policy; a Model Response was communicated to the Respondent which was further advised that, absent any filing, by February 10, 2002, of a Response in line with the formalities prescribed, the Center would proceed with the case by appointing the Administrative Panel, transmitting the file to the latter and advising of the Respondent's default.
On February 7, 2002, the Respondent request a twelve day extension of time to file its response; the Center considered that it was not able to grant it. No amended Response was filed by the Respondent.
On February 25, 2002, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on February 21, 2002, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on February 25, 2002, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
Since 1814, the Complainant and its associated companies have been engaged in the business of the manufacture and distribution of household cleaning and health and personal care products.
Reckitt Benckiser is currently the world leader in five core categories: Fabric Care, Surface Care, Health and Personal Care, Dishwashing and Home Care. Reckitt Benckiser operates in all continents and its products are sold in 180 countries. It currently has operations in 60 countries, including the Complainant in Belgium. As part of its household cleaning core business, Reckitt Benckiser manufactures and distributes a window-cleaning product under the brand name of GLASSEX which benefits from trademark protection in fifty-four countries in all continents (Complainant's Annexes A, D and E).
Since 1971, the Complainant, under its previous name of S.A. Reckitt & Colman NV, has owned Benelux Registered trademarks in the GLASSEX name (Complainant's Annex D). These trademark registrations are currently in the process of being transferred to the Complainant’s new legal entity (Reckitt Benckiser (Belgium) S.A./N.V.) following the merger (Complainant's Annex E). The trademarks are as follows :
31 Dec. 71/31-Dec-76
S.A. Reckitt &
10 Nov 88
S.A. Reckitt &
1, 3, 21
8 Dec 00/2 May 01
S.A. Reckitt &
These marks are used in connection with goods for cleaning, polishing and scouring, in particular for a window-cleaning and polishing product.
The Complainant owns the domain name <glassex.nl>.
The following facts have been submitted by the Complainant which were not denied by the Respondent, except for the nature of its web site's contents.
(a) The Respondent registered the GLASSEX name as a domain name on January 25, 2001, and pointed it to the active web site <www.glassex.nu>. This web site contained exclusively graphic pornographic material arranged by sexual tastes and preferences all of which provided links to web sites catering to those tastes. This web site was in the Dutch language and was clearly aimed at Respondent’s Dutch customers in the Netherlands. As at that date, across the center of the website and prominently displayed was a link : <www.glassex.nl>. The link, however, was a false link and there was no disclaimer on the Respondent’s web site warning the public that this web site had no connection to the Complainant. Upon clicking on the link, one was led to another site by the name of <amsterdamxxx.net>; pop up window advised that one was now downloading material which could only be downloaded by persons over 18. The window also advised the cost of the download. In addition, each time the web site was accessed, a banner advertising other pornographic sites popped up (Complainant's Annex F, as of November 21, 2001).
Also displayed to the bottom left of the front page of the site was a drop down box containing links which led to various other specialist pornographic sites owned or thought to be owned by the Respondent. In all, there were about forty-seven (47) sites (list of sites attached as Complainant's Annex G) These sites were all in Dutch language.
(b) The Complainant was alerted to the existence of this site on or about November 19, 2001, by its web watching service.
(c) On December 4, 2001, the Complainant approached the Respondent at all his known addresses and requested from the latter that the <glassex.nl> link be removed forthwith and that the domain name be transferred to the Complainant for the Respondent’s reasonable cost of registration and transfer (Complainant's Annexes H and I).
(d) The Respondent answered by e-mail dated December 5, 2001 (Complainant's Annex J), advising that he had "informed his provider to stop use of <glassex.nu> at once". However, the site continued to be in use by being pointed to another site owned by the Respondent at <www.sexxtreme.com>. This site is almost identical to the <glassex.nu> site in that it contains graphic pornographic material and links that lead to paid download sites. (Complainant's Annex K).
(e) As of December 15, 2001, the <glassex.nu> web site was back online. As before, the contents are graphic pornographic material. However, it no longer displays the <glassex.nl> link but still has a link to the same exact "pay-per-download" site at <amsterdamxxx.net> (Complainant's Annex L, as of December 17, 2001).
5. Parties’ Contentions
The Complainant submits the following :
(i) The domain name is identical to trademarks in which the Complainant has rights because the relevant part of the domain name <glassex.nu> is "glassex"; this is textually identical to its GLASSEX marks.
(ii) The Respondent has no rights or legitimate interests in the GLASSEX name because :
- the Respondent's domain name, both as an individual and in his various business incarnations, has never been commonly known as GLASSEX and except for the registration of the domain name <glassex.nu> which is connected to a pornographic website at <www.glassex.nu>; furthermore, the Respondent and his businesses have never used the GLASSEX name;
- the Respondent has no trademark rights whether registered or unregistered in the GLASSEX name and is not a licensee or other authorized user of the Complainant’s mark;
- the word GLASSEX has no secondary meaning in the Dutch language as to be considered either descriptive of the Respondent's activities or of such general use within the language as to give the Respondent any legitimate interest in the name;
- The Respondent’s lack of rights and legitimate interests in the GLASSEX name is further demonstrated by his reaction upon receiving the Complainant’s letter of December 4, 2001, mentioned above, (Complainant's Annexes H and I), when responding by e-mail dated December 5, 2001 (Complainant's Annex J) that he had "informed his provider to stop use of <glassex.nu> at once".
(iii) The Respondent has registered and is using the domain name <glassex.nu> in bad faith because :
- to attract for financial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website;
- there can be no doubt that the Respondent, in registering the domain name, attempted to attract financial gain; at registration, this domain name was intended to be used for a "pay-per-download" pornographic website; secondly, the banner advertising on the site was intended to generate revenues; furthermore, the Respondent’s subsequent conduct has proved the case that he attempted to attract financial gain;
- the Respondent was fully aware of the Complainant’s GLASSEX products and its reputation in the Dutch market at the time of his registration of the name and could have had no good intention except to take advantage of the reputation and goodwill associated with the Complainant’s mark in increasing traffic to his site, and thereby, hopefully increasing revenues from the download and advertising;
- the Respondent having had such knowledge at registration, confirmed his bad faith registration by his subsequent conduct in the use of the name;
- the fact that the Respondent registered the domain name under the ".nu" domain whilst intending to use it for a commercial pornographic website clearly targeted at the Dutch market knowing that the GLASSEX name has certain positive associations within that market is evidence of bad faith registration;
- the Respondent conduct in registering the domain name under a false name, Will Tell, demonstrates that he may have been attempting to evade detection;
- The false link, <www.glassex.nl>, posted on the front page of the Respondent’s website without an accompanying disclaimer clearly, indicates an intention to create an association with the Complainant’s mark whether by way of an endorsement or some other affiliation or an attempt to pass off his activities as having some connection to the Complainant the association of which is certain to cause irreparable loss to the goodwill and reputation of the Complainant;
- The mere fact that the Respondent’s website at <www.glassex.nu> contains
pornographic material with or without the <glassex.nl> link and the fact
that it provided links to other websites classified according to sexual preference
as well as links to no less than forty- seven (47) pornographic websites containing
graphic, sexually explicit material likely to cause damage to the reputation
and goodwill of the Complainant is in itself evidence of bad faith use; registration
and use of a domain name incorporating another’s mark for a pornographic website
has been widely held to be registration and use in bad faith (e.g. WIPO Cases
Nos. D2000-0118, D2001-0661,
- this is a website designed to attract financial gain via its "pay-per-download" system, so that the association with the Complainant’s mark was intended to increase traffic to the site;
- there is no evidence of use of the domain name in connection with a bona fide offering of goods or services; this very use made by the Respondent of the domain name is in itself bad faith use and as such should not act to absolve him but should be taken as conclusive evidence of his bad faith;
- Internet users searching for information about the Complainant’s product may inadvertently access the Respondent’s website;
- whether one exits the site immediately or lingers to sample the Respondent’s services, the mere fact of the Complainant’s customers accessing the Respondent’s site in error immediately causes damage to the Complainant’s reputation and goodwill.
The Complainant concludes by requesting that <glassex.nu> be transferred in its favor or in the alternative that its registration be cancelled.
In its communication to the Center dated February 1, 2002, mentioned above, the Respondent answered to the Complaint that:
- at the time of the registration of the domain name in dispute, it was not aware of a product named "GLASSEX";
- <glassex.com> and <glassex.net> have not been registered by the Complainant;
- <glassex.biz>, ".info.", ".org", ".ws", ".cc", and ".bz" are still available for registration; so is for <glassex.be>;
- the chance that anyone in the Benelux would associate <glassex.nu> domain name with the Complainant's trademark, especially with the extension ".nu" which is not very well known from the public is very low;
- the domain name in dispute is associated with an erotic site, with no explicit hardcore;
- the domain name <glassex.nl> is not connected to an active website;
- there is no association made of the Respondent's products to those of the Complainant;
- <glassex.nl> was immediately removed by the Respondent's web designers after such a mistake was discovered.
6. Discussion and Findings
Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4 (a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15 (a) of said Rules.
As notified to the Respondent by the Center, the former did not submit a response formally complying with the provisions laid down in Article 5 of the Rules.
As rightly pointed out by the Center in its e-mail communication of February 11, 2002, to the Respondent, it remains at the discretion of the Administrative Panel, once appointed and seized with the file, to determine the admissibility and examination of the Respondent's arguments that have not been properly submitted as to the form.
The Rules do not provide for any sanction in case a Response is not submitted in accordance with Article 5 of said rules.
In the instant case, given that the Respondent has submitted a response within the deadline set by the Center in its notification of the Commencement of Administrative Proceeding, and, in accordance with the well-recognized procedural principle of due process and related rights to be heard, its response of February 1, 2002, although defective as to its form, shall nevertheless be examined as to its contents by the undersigned when rendering his decision.
A. Identity or Confusing Similarity
There is no doubt that there is identity between the Complainant's trade mark GLASSEX and the domain name <glassex.nu>.
The Complainant has also established its rights in the trade mark GLASSEX with numerous registrations worldwide, especially in the Benelux, for such a name (see Complainant's Annexes A, D and E).
B. Rights or Legitimate Interests of the Respondent
Paragraph 4 (c) of the Policy provides a non-exclusive list of circumstances
that evidence rights or legitimate interests to the domain name. Any one of
the following behaviors is sufficient to support a finding of rights or legitimate
interests in the use of the domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Respondent has neither submitted that it has been commonly known by the domain name in question, nor that it has had a legitimate noncommercial or fair use of said domain name, within the meaning of Article 4 (c) (ii) and (iii) of the Rules.
However, the Respondent seems to imply from its submissions that it has used the domain <glassex.nu> in connection with a bona fide offering of services according to Article 4 (c) (i) of the Policy and that, in any case, it was unaware of the trademark rights of the Complainant.
The Respondent cannot reasonably pretend that he was not aware of the existence of such a brand. Whether such a word mark has been registered and used under other top-level domains (TLDs) such as ".com", ".net", ".biz", ".info", etc. is not relevant in this respect.
It is the Sole Panelist's finding that the Complainant has established that the trade mark GLASSEX has generally been known worldwide - especially in the Benelux - for a significant period of time.
Furthermore, the Complainant has not granted any license or otherwise permitted the Respondent to use such trade mark or to apply for any domain name incorporating the said trade mark.
As mentioned by the Complainant in its Complaint, several Administrative Panels
have decided that the use of a domain name to direct internet users to other
web sites which may offer goods or services - usually of pornographic nature
- does not constitute use of the domain name for the bona fide offering of goods
or services (e.g. WIPO Case No. D2000-0118:
National Football League Properties, Inc. and Chargers Football Company v.
One Sex Entertainment Co. aka chargersgirls.net; WIPO
Case No. D2000-0186: Libro AG v. NA Global Link Limited; WIPO
Case No. D2001-0610: Women in Military Service for America Memorial Foundation,
Inc. v. Russian Web Marketing).
In the instant matter, the domain name <glassex.nu> directs to a web site whose contents are of pornographic nature and the access of which is based on a "pay-per-download" system; such a site also allows the Internet users to connect themselves to various other web sites which contain pornographic material.
Although in this case - compared to the other cases cited above - the Internet users are not directly connected to other sites, it is the Sole Panelist’s finding that there is nevertheless no bona fide offer for goods or services made by the Respondent, also for reasons that pertains to good faith and that are developed below.
Under those circumstances, the Respondent has, therefore, failed to evidence any rights or legitimate interests it may have had in this matter so as to justify the use of the domain name in dispute.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith :
(i) circumstances indicating that you 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; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Clearly in the Sole Panelist's view, the Respondent, in using the domain name <glassex.nu> has expressed its intent to attract Internets users, for financial consideration since, inter alia, its system works on "pay-per-download basis", by creating a likelihood of confusion with Complainant's mark as to its source or affiliation, pursuant to Article 4 (b) (i) of the Rules. The fact that such domain name is a ".nu" TLD, not commonly known by the public, is not relevant in this respect.
Moreover, the Sole Panelist finds that the Respondent's behaviour, as described above, amounts to bad faith within the general meaning of Article 4 (b) of the Policy. Knowing the Complainant's established trade mark rights in GLASSEX, the Respondent preferred to limit itself by deleting the reference included "by mistake" to <glassex.nl>, but to keep, however, the contents in the site with its pornographic material and its pay-per-download system and to accept the adverse consequences this may cause to the Complainant.
For the reasons set out above, the transfer of the domain name <glassex.nu> to the Complainant shall be ordered.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical to the corresponding trademark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name <glassex.nu> shall be transferred to the Complainant.
Dated: March 11, 2002