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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Unilever PLC v. ABC Corp

Case No. D2003-0164

 

1. The Parties

The Complainant is Unilever PLC, a public limited company, of Unilever House, Blackfriars, London, England, United Kingdom of Great Britain and Northern Ireland. The Complainant is represented by Vellani & Vellani, Advocates & Legal Consultants of Karachi, Pakistan.

The Respondent and registered owner of the disputed domain name is ABC Corp, C/o Mr. Aamir Awan, Avaari, Kuching, Malaysia. The Complainant alleges that these particulars are fictitious. A document purporting to be a Response was filed on May 17, 2003, by a person under the name of "Umair Sheikh," claiming that "his client" had acquired the disputed domain name on March 5, 2003. He provided a telephone number and same email address as that of Mr. Aamir Awan who was also shown as the billing and technical contact for the disputed domain name.

 

2. The Domain Name and Registrar

The disputed domain name <daldaadvisory.com> is registered with BookMyName SAS ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2003. On March 3, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Despite repeated requests from the Center, the Registrar did not provide the requested information until April 15, 2003. No reason for this delay was provided by the Registrar. This Panel has not previously encountered a delay of this dimension on the part of a Registrar in supplying the basic information necessary for the prompt and proper functioning of the Policy. Registrars should be reminded of their clear responsibilities in this regard.

The Registrar advised that the language of the registration agreement was French. Prima facie, the language of the administrative proceeding should therefore be French. However, the Panel in the exercise of its discretion under Rule 11 of the Policy, determines that the language of the administrative proceeding should be English. The Complainant is an English company. The Respondent appears to come from either Malaysia or Pakistan, both countries where English not French is commonly spoken in commercial life. The parties appear to have no connection with any French-speaking country other than the Respondent’s registration with a registrar in France. Nevertheless, French and English versions of the Complaint were sent to the Respondent by the Complainant.

On April 15, 2003, the Registrar 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 (and its French translation) 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 May 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was May 25, 2003. The named Respondent did not submit any formal response. There was however the email from Umair Sheikh referred to above received on May 13, 2003.

The Center appointed the Honourable Sir Ian Barker QC as the Sole Panelist in this matter on June 6, 2003. 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. Identity of Respondent

Despite the advice from the Registrar on April 15, 2003, that ABC Corp was listed as registrant of the disputed domain name, a search in the WHOIS database by the Center on May 16, 2003, showed domainexperts@hotmail.com as the listed registrant: Other contact details had been modified. The Center emailed the Registrar on May 16, 2003, pointing out that under Paragraph 8(a) of the Policy, a registrant cannot transfer its domain name registration during a pending administrative decision. The Center asked the Registrar to confirm that ABC Corp is the listed registrant and that the domain name is under lock. The Registrar did not reply. Once again, the Panel notes that this particular Registrar does not seem to have complied with its obligations. It is unclear whether there has been a transfer, since the alleged assignee who sent the email to the Center on May 13, 2003, has the same email address as the initial Respondent.

On June 19, 2003, the Complainant emailed the Center and the Panel alleging that the disputed domain name had been transferred to a Shahab Bin Shadid of Lahore, Pakistan. The Complainant did not seek leave from the Panel to file further material. It should not have communicated directly with the Panel. However, as will be seen from the following paragraphs, the view that the Panel takes is that the proper Respondent is the one registered at the date when the Registrar received a notice of the Complaint. The Registrar confirmed to the Center that it had received a copy of the Complaint, but did not say when it had received it.

The Complainant sent an email copy of the Complaint to the Registrar at the same time as it filed the Complaint with the Center. The Complainant advised the Center on March 7, 2003, that the Registrar’s contact details had changed and that it had, on that date, sent a copy of the Complaint to the Registrar. This was 2 days after the alleged date of the alleged transfer of the disputed domain name, i.e. March 5, 2003.

The Registrar should have known about the Complaint before March 5, 2003, because the Center’s request for Registrar information was sent on March 3, 2003. Accordingly, the Panel assumes that the Registrar should have known of the Complaint by that date, if not before. The Center’s email was sent to "gerald@bookmyname.com". "Gerald" was the member of the Registrar’s staff to whom similar requests had been made by the Center in the past. The Registrar had also received an email from the Complainant dated December 26, 2001 (see section 5). It is noteworthy that the Registrar said nothing about any assignment of the disputed domain name when it eventually got around to replying to the Center’s request for information on April 15, 2003.

If there has been a transfer of the registration of the disputed domain name after the administrative proceeding had been commenced, then there is a clear case of "cyberflying": WIPO precedent shows that neither a change of registrar or a change of registrant in these circumstances can affect the proceedings. Transfer orders have been made against the nominated registrant at the time when a Complaint was received by the Registrar. In the majority decision in Gloria-Werke H. Schulte-Frankenfeld GmbH & Co v.Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056 (<gloria.com>) it was stressed that the register must be taken as reflecting the correct identity of the registrant at the time the registrar receives a copy of the Complaint. See also Disney Enterprises Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489, British Broadcasting Corp. v. Data Art Corporation, WIPO Case No. D2000-0683 and AT & T Corp v. WNA, WIPO Case No. D2001-1160.

Accordingly, the Panel proposes to disregard the purported Response from "Umail Sheikh." It did not come from the registrant of the disputed domain, registered as such at the time when notice of the administrative proceeding was received by the Registrar. Moreover, it does not address the allegations in the Complaint.

 

5. Factual Background

The Complainant is a parent of a worldwide group of companies. It carries on a world-wide business manufacturing and selling a variety of products, including, edible oils, fats and other food products falling in classes 29 and 30 of the International Classification of Goods. In Pakistan, these products are and have for many years been manufactured and sold either directly by the Complainant or by its affiliate, Unilever Pakistan Limited (formerly named Lever Brothers Pakistan Limited). Unilever Pakistan Limited manufactures and sells the said products under various distinctive trademarks owned by the Complainant, including DALDA, which had been adopted as a trademark by the Complainant or its predecessor-in-title many years ago and which was first used in the territories now forming Pakistan in 1926. The Complainant’s DALDA trademark is currently in use in Pakistan and India either alone or in combination with variations and subbrands. The Complainant has numerous registered trademarks for DALDA and variants in Pakistan and many other Asian countries (but not Malaysia) and in other countries such as Kenya and Fiji, which have many citizens with ethnic origins from the Indian subcontinent.

Products under the Complainant’s DALDA trademark have been sold in substantial quantities throughout Pakistan and elsewhere since 1926. The Complainant has extensively advertised DALDA products through newspapers, television and radio and also through international magazines, periodicals, leaflets, brochures and other promotional materials which have been supplied to and distributed among the trade and the purchasing public in a number of countries. On account of such extensive advertising, DALDA products are well known. The Complainant’s affiliate in Pakistan, Unilever Pakistan Limited also publishes a Cookbook called "Dalda Ka Dastarkhwan" which is popular and is available in various bookstalls in Pakistan and other countries.

The Complainant is the owner of the domain name <dalda.com.pk> which has been registered in Pakistan since November 14, 2000.

The Complainant, its affiliates and licensees, have acquired and enjoy valuable reputation and goodwill in respect of the DALDA trademark.

The Respondent obtained registration of the disputed domain name with the Registrar on March 28, 2001. Registration was initially valid up until March 26, 2002. Upon checking the sites operated under the said domain name on October 25, 2001, the Complainant discovered that the site "www.daldaadvisory.com" had been linked to pork recipes, "www.daldaadvisory.net" to a site advertising alcohol and "dwww.daldaadvisory.org" to a site that invited visitors to play a game that involved killing Osama Bin Laden. These sites were registered from a Cyber Café at Gujranwala City in Pakistan. The contact details given by the Respondent from time to time were alleged to be fictitious. Mr. Aamir Awan, who is the contact person for the said domain names, has also initially supplied the email address that used the Complainant’s name.

On December 26, 2001, the Complainant through its agents, sent a "cease and desist" notice to the Respondent, by post as well as electronic mail, charging the Respondent with infringement and passing-off of the Complainant’s name/trademarks DALDA and UNILEVER. The legal notice sent to the Respondent by post was returned undelivered with the remark that the Respondent’s address had been incomplete. The Complainant also addressed a separate letter to the Registrar, through email dated December 26, 2001, seeking the assistance of the Registrar to resolve the problem and to either cancel the said domain names or assign the same to the Complainant. To date the Complainant has not received any response to the said letters either from the Respondent or the Registrar. Upon checking the sites in question on February 14, 2002, the Complainant found out that the site "www.daldaadvisory.com" was linked to the "www.viagra.com" website, whereas the remaining two sites, i.e. "www.daldaadvisory.net" and "www.daldaadvisory.org," had been de-linked and showed blank pages.

The Respondent had amended the records of the said domain names on February 8, 2002, by changing the email address of the contact person. Upon a renewed Internet search on February 27, 2003, the Complainant learned that out of the three domain names <daldaadvisory.net> and <daldaadvisory.org>, had not been renewed and were therefore available for registration. However, the disputed domain name i.e. <daldaadvisory.com> still stood as registered in the name of the Respondent and had been renewed up until March 28, 2003. But the Respondent changed its address to Kuching Malaysia.

 

6. Parties’ Contentions

Complainant:

Identical or confusingly similar

The disputed domain name is confusingly similar to various DALDA trademarks in which the Complainant has rights. This disputed domain name comprises the Complainant’s trademark DALDA in its entirety with an addition of the word "advisory." The disputed domain name is likely to deceive and cause confusion if it is used by or remains registered in the name of the Respondent or any third party.

No Legitimate Interests

The Respondent has no rights nor legitimate interests in respect of the disputed domain name. The Complainant is the registered proprietor of the trademark DALDA and has been using the mark since 1926. The Respondent has obtained registration of the disputed domain name with full knowledge of the Complainant’s prior rights in the DALDA trademark and of the true proprietorship thereof. The adoption, use and registration by Respondent of the disputed domain name is with fraudulent intent and with a view to deceiving the internet users into believing that the disputed domain name is in some way connected or associated with, endorsed or sponsored by the Complainant or that the products and services (if any) as advertised on the relevant website from time to time, emanate from the Complainant or are or have at any time been sponsored or endorsed by the Complainant. Such adoption, use and registration of the disputed domain name is made with intent to trade unfairly on the substantial and valuable goodwill and reputation attached to the Complainant’s DALDA trademark and to make wrongful profits from such use. Such conduct on the part of the Respondent, besides constituting a fraud on the public, is injurious to the Complainant’s business and its reputation. The disputed domain name seeks to appropriate for the Respondent what is essentially the trademark and property of the Complainant.

Bad Faith

The disputed domain name was registered and is being used by the Respondent in bad faith for the reasons: (a) the use of the Complainant’s entire mark in the disputed domain name, makes it difficult to infer a legitimate or fair use of the disputed domain name by the Respondent; (b) given the fame of the trademark DALDA, the Respondent registered the domain name with full knowledge of Complainant’s prior rights in the trademark DALDA; (c) false information given by the Respondent to the Registrar; (d) lack of any demonstrable use of the domain name by the Respondent either for an active website or as a trademark; (e) Respondent’s failure to respond to the Complainant’s request for transfer; (f) subsequent steps taken by the Respondent to change the link of or to de-link the websites "www.daldaadvisory.com," "www.daldaadvisory.net" and "www.daldaadvisory.org"; (g) multiple changes to the Respondent’s email addresses and (h) abandonment of two of the domain names, <daldaadvisory.net> and <daldaadvisory.org>.

The disputed domain name also contravenes the provisions of Paragraph 2 of the Policy followed by the Registrar, and of the registration agreement between the Respondent and the Registrar. In particular, both the dispute policy and the registration agreement contain a representation or warranty on the part of the applicant that "to the best of his knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal rights of a third party."

Respondent

As indicated earlier, the true Respondent – i.e. the one on the register at the time of the filing of the Complaint - did not file a Response.

The email from the purported assignee does not deal with the Complainant’s contentions. It purports to quote from a pharmaceutical text and to allege that the word DALDA has some pharmaceutical or physiological import. It alleges that DALDA is a term for a tetrapeptide mu-opioid agonist for use as an analgesic. It claims that any confusion with Complainant’s business is co-incidental. Other claims made in the alleged Response are irrelevant. It claimed that ‘our client’ (whoever that may be) wished to utilise the domain "for their own setup."

No trademarks for any pharmaceutical product called DALDA were alleged. It is well known in intellectual property law that the trivial names of pharmaceutical products are trademarked relentlessly, worldwide, as soon as, if not before, any development of a product which might become a useful medicine.

However, the Panel cannot regard any transfer of the disputed domain name to this anonymous registrant as legitimate. It would be most unusual for the manufacturer of a genuine pharmaceutical product on a website to proffer the product in this devious way.

 

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- 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
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used by the Respondent in bad faith.

Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The mark itself is used plus the word "advisory." That word indicates to the Internet user that the domain name website will give advice or information about products protected by the mark DALDA.

Legitimate Rights & Interests

The Complainant gave the Respondent no legitimate rights or interests in respect of the domain name. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, could demonstrate a Respondent’s rights or legitimate interests to a domain name. The purported Response, even if it were admissible, goes nowhere to establishing any of the 4(c) criteria.

Bad Faith Registration

The Panel considers this criterion proved for the reasons set out in the Complainant’s submissions most of which the Panel accepts. The fact that the Respondent’s present address is in Malaysia, a country where the Complainant does not have trademark registration, is of no consequence in the particular circumstances of this case. The address had previously been in Pakistan. The email address is the same for the Respondent and the purported assignee. There is also the link to Pakistan shown by the telephone number of ‘Umair Sheikh’, who lodged the purported response on behalf of the anonymous party. The Complainant and its mark are well known in many parts of Asia. Because of the use of the same domain name by the named Respondent and its purported assignee, one can assume that the purported assignment was not an arms-length commercial transaction but rather a device to give some legitimacy to the Respondent’s cybersquatting. Its attempts at cyberflying, detailed earlier, also support this view.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <daldaadvisory.com> is confusingly similar to trademarks to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <daldaadvisory.com> be transferred to the Complainant.

 

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Hon. Sir Ian Barker QC
Sole Panelist

Dated: June 20, 2003