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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eveready Battery Company, Inc. v. Web Master

Case No. D2006-1483

 

1. The Parties

The Complainant is Eveready Battery Company, Inc., St. Louis, Missouri, United States of America, represented by Thompson Coburn LLP, United States of America.

The Respondent is Web Master, Georgetown, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <energiser.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2006. On November 22, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On November 23, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2006.

The Center appointed Knud Wallberg as the sole panelist in this matter on January 16, 2007. 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.

 

4. Factual Background

The Complainant is one of the world’s largest manufacturers of dry cell batteries and flashlights. Since at least as early as 1955, the Complainant has continuously used the ENERGIZER mark in connection with its batteries and other related goods.

The Complainants products are marketed and sold in more than 150 countries around the world, just as the Complainant holds several registrations of the trademark ENERGIZER in the United States of America and elsewhere.

Complainant also maintains an active presence on the Internet, primarily through its website “www.energizer.com”, but Complainant and its related companies also own other domain names that contain the term ENERGIZER, including <energizerbatteries.com> and <energizerbunny.com>.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the contested domain name <energiser.com> is virtually identical and thus confusingly similar to Complainant’s ENERGIZER marks. Respondent has merely changed the letter “z” to the letter “s.” UDRP panels have repeatedly held that typosquatted domain names such as this are confusingly similar for the purposes of Section 4(a)(i) of the Policy. .

Also, the “www.energiser.com” website provides links to various websites that offer batteries other than those of Complainant, including a link to a website that sells “Duracell” batteries, which are made by one of Complainant’s largest competitors, and links to other websites that likewise promote the products of Complainant’s competitors. This fact also weighs in favor of a finding that the <energiser.com> domain name is confusingly similar to Complainant’s mark.

In view of the foregoing, Complainant submits that Respondent’s domain name is identical or confusingly similar to trademarks in which it has rights as required under the Policy para 4(a)(i).

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

Respondent has no rights or legitimate interests in the domain name <energiser.com>. The domain name energiser.com was first registered on July 11, 2004, approximately 50 years subsequent to when Complainant first used its ENERGIZER mark in connection with batteries.

Complainant states that Respondent is not a licensee of Complainant and has never been affiliated with, connected to, or sponsored or endorsed by Complainant. Additionally, because Respondent is using a domain name that is identical or confusingly similar to Complainant’s mark, and is doing nothing more than offering sponsored links - many of which redirect visitors to websites selling batteries and related products of Complainant’s competitors - Respondent is not using the domain name in connection with a bona fide offering of goods or services.

Additionally, the Whois record fails to establish that Respondent is one commonly known by the name <energiser.com>, and a search of the current U.S. Patent and Trademark Office records reveal no applications or registrations for marks incorporating the term “Energiser” in the name of Respondent.

Under such circumstances, it is inconceivable that the Respondent has any rights or legitimate interests in the energiser.com domain name. Rather, it is only reasonable to presume that Respondent’s only interest in using the <energiser.com> domain name is to trade off the goodwill of Complainant for its commercial benefit, as it has done in at least 5 other instances.

Complainant submits that Respondent has no rights or legitimate interest in the <energiser.com> domain name as required under paragraph 4(a)(ii) of the Policy.

The domain name was registered and is being used in bad faith

Complainant submits that paragraph 4(b) of the Policy provides four nonexclusive circumstances that provide evidence of bad faith registration and use of a domain name, including evidence that (i) Respondent registered the domain name to prevent the owner of the relevant trademark from doing so, provided that Respondent has engaged in a history of doing so, (ii) the domain name was registered primarily for the purpose of disrupting the business of a competitor, or (iii) Respondent intentionally attempted to attract Internet users to the Respondent’s website or other on-line location for commercial gain by creating a likelihood of confusion.

In this case the Respondent has registered the domain name in order to prevent Complainant from doing so, as evidenced by Respondent’s prior pattern of such conduct. Complainant is aware of numerous UDRP decisions that appear (based on the available registrant information) to involve Respondent, although the Respondent in some of these cases is not identified specifically as “Web Master,” the Complainant suspects that Respondent has registered the disputed domain names in these cases under different names, in view of the fact that the addresses provided by the Respondent in each case appears to be the same as the address of the Respondent in the present case. This history of registering domain names confusingly similar to the trademarks of others clearly evidences Respondent’s bad faith use and registration of the disputed domain name.

The present circumstances also clearly indicate that the <energiser.com> domain name was registered primarily for the purpose of disrupting the business of Complainant. Respondent is competing with Complainant by providing “sponsored results” that link to websites selling the products of Complainant’s competitors. Evidence that a registrant uses a domain name in this manner supports a finding that its use of the disputed domain name is in bad faith.

Additionally, the Respondent has registered the domain name <energiser.com> to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Given the fame and notoriety of the ENERGIZER trademark, it is inconceivable that the Respondent registered the energiser.com domain name in good faith and without knowledge of the Complainant’s ENERGIZER mark, particularly in view of the fact that the associated website provides links to sites selling “Eveready” products.

According to the Complainant there is no doubt that Respondent was aware of Complainant’s rights at the time it renewed the <energiser.com> domain name registration in July 2006. Complainant first contacted Respondent regarding its use of the domain name in April 2006, explaining its rights in the ENERGIZER mark, and asking that the Respondent transfer the domain name to the Complainant. The Complainant specifically requested that the Respondent respond no later than April 14, 2006. As of June 2006, Complainant had not received a response, so it sent a second letter to Respondent, noting that the energiser.com domain name was due for renewal on July 11, 2006, and indicating that any renewal of the domain name would constitute willful infringement. The Complainant has not received a response to this letter. The Respondent subsequently renewed the domain name and continued to display “Sponsored Results” until July 2006, at which time all references to batteries were removed. The Complainant continued to monitor the site and, in October 2006, learned that Respondent had again changed the site, to contain battery-related “Sponsored Results.” These facts indicate that the Respondent was aware of Complainant’s rights in the ENERGIZER mark as of the time that it renewed its registration and then posted battery-related “Sponsored Results”.

Moreover, the Respondent has no trademark or service mark rights for the term “Energizer” (or “Energiser”) and is not commonly known by it. It appears that Respondent is attempting to attract members of the public who have an interest in purchasing or obtaining additional information about ENERGIZER batteries, and then offering them links to websites selling, among other things, the batteries of Eveready’s competitors. The Respondent presumably obtains a commercial benefit by providing “sponsored results” on its site, as operators of websites of this type generally receive revenue for each click-through by on-line consumers. It is recognized in other UDRP decisions that such acts may “generate unjustified revenues for each click-through by on-line consumers of the sponsored links,” and thus illegitimately capitalize on the trademark owner’s fame. Use and registration of a domain name for such purposes is misleading, and constitutes evidence of bad faith registration and use of a domain name under the UDRP. The fact that the sponsored links direct consumers to the websites of the trademark owner’s competitors, it is a “strong indicator” of bad faith.

For all of these reasons, Complainant submits that Respondent’s registration and use of the disputed domain name is in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) 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; and
(2) that the Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The contested domain name contains Complainant’s distinctive trademark ENERGIZER, with the only difference that the “z” is substituted with a “s” and with the addition of the “.com” designation. For the purpose of these proceedings the domain name is found to be confusingly similar to the Complainant’s trademark.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.

B. Rights or Legitimate Interests

According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this. Although the word ”energiser” may be a generic word that is descriptive for some goods namely for energisers/energizers, Respondent does thus not claim that the domain name is intended to be used for such goods. Such a claim would also be contrary to the way the Respondent has been using and is still using the contested domain name, namely for a website that links to other sites that offer batteries including batteries offered by competitors of the Complainant. The Panel further refers to its below findings in relation to the actual use made of the domain name

Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf. 4(c) of the Policy are also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent’s registration and use of the domain names in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.

The Complainant’s trademark was registered and used well in advance of the date of registration of the disputed domain name. Given the geographically widespread use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.

This is underlined by the fact that the disputed domain name is apparently used for a website that links to other sites that offer products of the Complainant and of competitors of the Complainant. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent’s bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

 

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 <energiser.com> be transferred to the Complainant.

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Knud Wallberg
Sole Panelist

Dated: January 26, 2007