The Complainants are The Procter & Gamble Company and Tambrands Inc. of Cincinnati, Ohio, United States of America, represented by Studio Barbero, Italy.
The Respondent is Reserved for Customers, MustNeed.com of Taipei, Taiwan, Province of China.
The Disputed Domain Name <tampax.net> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2009. On July 14, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Disputed Domain Name. On August 14, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 11, 2009.
The Center appointed Ian Blackshaw as the sole panelist in this matter on August 17, 2009. 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.
The Procter & Gamble Company (the Company) was formed in 1837 by William Procter and James Gamble as a small – at the time – enterprise dedicated to the manufacturing of candles and soap. Today, the Company is one of the largest companies in the world and manufactures a wide range of consumer goods in diverse areas, such as health care (baby, child, feminine care, etc), cosmetics, laundry and fabrics care, prescriptions drugs, pet nutrition, snacks and the like.
As of 2008, the Company is the 6th largest corporation in the world by market capitalization and 14th largest United States (“US”) company by profit. In 2007, it was listed as 10th in Fortune's Most Admired Companies. According to the Nielsen Company, in 2007, the Company spent more on advertising in the United States than any other company in the world (USD 2.62 billion). Also, in 2008, it was named Advertiser of the Year by Cannes International Advertising Festival.
The Complainant is the owner, inter alia,of the following trademark registrations:
- TAMPAX, No. A65186, registered in Australia in December 28, 1962, and duly renewed thereafter for products corresponding to the international class 5;
- TAMPAX, No. 114795, registered in Austria in December 16, 1986, and duly renewed thereafter for products corresponding to the international classes 5 and 10;
- TAMPAX, No. 69398, registered in the Benelux in October 22, 1971, and duly renewed thereafter for products corresponding to the international class 5;
- TAMPAX, No. 99102, registered in Finland in August 5, 1987, and duly renewed thereafter for products corresponding to the international classes 5 and 16;
- TAMPAX, No. 1471554, registered in France in July 16, 1988, and duly renewed thereafter for products corresponding to the international class 5;
- TAMPAX, No. 1113540, registered in Germany in October 29, 1987, and duly renewed thereafter for products corresponding to the international class 5;
- TAMPAX, No. UCA 05609 registered on December 1, 1934, and duly renewed thereafter for products corresponding to the international class 5.
The Panel has been provided with copies of all these registrations.
The Company is also the owner of several other trademarks registrations for TAMPAX, which are registered in many countries, a full list of which has been provided to the Panel.
TAMPAX – in turn – is a very renowned brand of tampons that was originally both the name of an independent company (for over 50 years) and of the product itself. For many decades it had the dominant share of the tampon market.
The applicator tampon with removal cord was invented in 1929 by Dr. Earle Haas, who later sold the patent to Gertrude Tendrich, the founder of the Tampax Company. This company was renamed Tambrands, Inc. in 1984; was acquired by the Company in 1997; and the recordal of the assignment of the trademarks is still ongoing.
A full list of subsidiaries owned by the Company – including Tambrands Inc. – has been provided to the Panel.
Global sales for 2008 for TAMPAX related products amounted to USD 760 millions, while the Canadian contribution to such sales amounted to USD 57 millions.
In order to further increase the protection of its trademark TAMPAX on the Internet, the Complainant has registered the word “tampax” as a domain name under several different gTLDs and ccTLDs; the list of domain names registered by the Complainants, which include <tampax.com>, <tamapx.org>, <tampax.info>, <tampax.eu>, <tampax.biz>, <tampax.mobi>, <tampax.ca>, has been provided to the Panel.
More particularly the Complainant operates the website “www.tmpx.com” as a main portal aimed at promoting its activities worldwide, a print of an image of which has been provided to the Panel.
The Respondent registered the Disputed Domain Name on June 14, 2004, without authorization of the Complainant, and the Disputed Domain Name, at the time of this Complaint, points to a website (“www.tampax.net”) where Internet users can find in great evidence an image reproducing what appears to be a sample of the Complainant's product in the hands of a young woman, together with a number of sponsored links to various websites advertising the sale of such product. By definition a “sponsored link” is generating revenues for the registrar and/or for the Disputed Domain Name holder. The Panel has been provided with a print of the corresponding image.
For instance, by clicking on the “Feminine Hygiene” menu, Internet users are redirected to a page displaying several other links that, in turn, redirect users to other pages advertising and selling competitor's products. Again, the Panel has been provided with prints of the corresponding images.
All the pages used in connection with the Disputed Domain Name (home page and subsequent links) display with great evidence the following indication: “This Domain Name Might Be For Sale!!! Please contact us for more information”; which also contains a link through which it is possible to make an offer for the Disputed Domain Name.
As soon as the Complainant became aware of the registration of the Disputed Domain Name identical to its registered and well-known trademark TAMPAX, a strategy to reclaim the Disputed Domain Name was established.
In order to ascertain the real intentions of the Respondent and be advised of any possible legitimate interest, as a first step, an email was sent on December 15, 2008, by one web agency, requesting the Respondent as to what was the project related to the Disputed Domain Name and the possible availability and conditions to assign it.
That email was sent to the email addresses indicated on the Respondent's web page, which are provided as contact details to make an offer for the Disputed Domain Name.
The Respondent replied to this email on December 17, 2008, stating as follows:
“Thank you very much for your interest in tampax.net. The current price for this domain name is $3000. Is that acceptable with you? Thank you.
Best Regards,
Lee.”
Copies of these e-mails have been provided to the Panel.
In the light of the above, the Complainant instructed a legal representative to draft and send to the Disputed Domain Name holder a Cease and Desist Letter on January 12, 2009. Such letter was addressed to the known address of the Respondent, indicated in the WhoIs, via email and registered mail requesting the Respondent to transfer the Disputed Domain Name. A copy of this letter has been provided to the Panel. The Respondent did not reply to the authorised representative and decided to renew the Disputed Domain Name on June 1, 2009. Therefore, the Complainant decided to file the present Complaint in order to stop the infringing activities pursued by the Respondent, notwithstanding the issue of the Cease and Desist Letter.
The Complainant makes the following contentions:
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Disputed Domain Name registered by the Respondent is identical to the trademark TAMPAX in which the Complainant has rights.
In the light of the distinctiveness of the Complainant's trademark TAMPAX and the fact that it is certainly well-known and well advertised, it is apparent that the Respondent chose the Disputed Domain Name with the sole intention of selling it to the legitimate owner and taking advantage of its distinctive character.
The addition of a generic top-level domain (gTLD) “.net” to the Disputed Domain Name does not avoid confusing similarity.
As found, inter alia, in Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015 and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760, the top level “.net” is merely instrumental to the use in Internet and lacks distinctive character and cannot be considered an element capable of reducing the confusing similarity between a trademark and a second level Domain Name. See also in this regard: F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Furthermore, the Complainant points out that the Disputed Domain Name is identical to the domain name <tampax.com> under which, as stated above, the Complainant operates its official website in “www.tampax.com”.
In the light of the above, the Complainant concludes that the Disputed Domain Name is identical to the prior registered trademark in which the Complainant has rights, according to paragraph 4(a)(i) of the Policy.
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
The Respondent has not provided the Complainants with any evidence of the use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute. Indeed, as stated in the factual part, the Respondent has not established a right or legitimate interest in the Disputed Domain Name.
The Disputed Domain Name is presently pointing to a website consisting of a page displaying sponsored links which generate revenues via the pay-per-click system to the current Disputed Domain Name holder and at the same time are tarnishing the Complainant's trademark.
The use of the Disputed Domain Name via a redirection to the webpage currently on line, where services of competitors are advertised and sponsored links are published, is not to be considered a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, also in view of the fact that the Respondent and/or the Registrar are certainly gaining, for example, from the click-through commissions on the sponsored links. Such willful conduct clearly shows, to the contrary, that the Respondent was not interested in using the Disputed Domain Name in connection with any legitimate purpose. See, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; and F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424.
Also in this connection, the Respondent is not a licensee; an authorized agent of the Complainants; or in any other way authorized to use the Complainants' trademark TAMPAX. It is a well established principle, as stated, inter alia, in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134: “[the] mere registration, [or earlier registration,] does not establish rights or legitimate interests in the disputed domain name.” See also National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; and N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387.
In addition, upon information and belief, the Respondent is not commonly known by the Disputed Domain Name as an individual, business or other organization, and TAMPAX is certainly not his family name.
As a last remark on the issue of rights or legitimate interest, it is a consolidated principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Disputed Domain Name, according to Rule 4 (a) of the Policy, is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of proof onto the Respondent. See, inter alia, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Sampo plc v. Tom Staver, WIPO Case No. D2006-1135; and Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003.
The Complainant, therefore, concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, according to paragraph 4(a)(ii) of the Policy.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
In the light of the international reputation of the trademark TAMPAX and, as described above, the Respondent could not have possibly ignored the existence of the trademark registration identical to the Disputed Domain Name at the time of the registration.
As held in The Nasdaq Stock Market, Inc., v. H. Pouran, WIPO Case No. D2002-0770: “this Panel concludes that Respondent knew or should have known of the existence of Complainant, Complainant's trademark being widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith.”
Another indication of the bad faith of the Respondent at the time of the registration of the Domain Name is the fact that it appears that he is a “professional registrant”, who probably also makes a living from registering a large number of Domain Names, as evidenced through the records provided by the Domain Name's service “Domain Tools”, which demonstrates that the Respondent is associated with about 5,036 domain names. Evidence of this has been provided to the Panel.
As stated in Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666: “It seems to this Panel and others, (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448), that people who make a living from registering vast numbers of domain names must make reasonable efforts to ensure that they are not infringing on the rights of others.”
Also in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, the Panel found out that the Respondent, who carried on a business of registering multiple domain names and purchasing lapsed domain names, was not entitled to shield its conduct by “closing its eyes” to whether the domain names it was registering were identical or confusingly similar to a third party's trade marks.
The three-member panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, adopted an even stronger position on the obligations of professional Domain Name holders in the discharge of their obligations under paragraph 2 of the Policy. The Panel in that case said that: “Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge”. Furthermore, “… an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trademark application or registration. … Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term…Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages … In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights….It is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark”.
With reference to the actual use in bad faith, the Complainants underline the fact that the Disputed Domain Name is currently linked to the web page where, as described above, Internet users can find a number of sponsored links to various web sites. As a result, also the Respondent may well earn commissions whenever an Internet user visits the website published by the Respondent on a Domain Name related to a well-known trademark, and click on one of the sponsored links.
Such conduct, where the Respondent sought or realized commercial gain, indicates the Respondent's bad faith as stated in many previous UDRP decisions, such as: Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc.; Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferre' S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L'Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire's Stores, Inc., Claire's Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; and Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.
Also in The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492, the Panel found that: “The only reasonable conclusion is the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the site at <megago.com> by creating a likelihood of confusion with the Complainant's mark. In effect, they are leveraging off the fame of the ‘Nasdaq' mark for their own benefit. As such, this is evidence of registration and use of the domain names in bad faith.” See also Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Edmunds.com, Inc v. WWWEDMUNDS.com and DMUNDS.com, WIPO Case No. D2001-0937; and Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594.
Along these lines, in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, the Panel held that: “registering and using a Domain Name to divert traffic to the disputed Domain Name is sufficient to constitute bad faith registration and use.”
In view of the above, the Complainant deems paragraph 4(b)(iv) of the Policy applicable to the present case, since the Respondent intentionally attracted Internet users for commercial gain to the Respondent's website.
An additional circumstance evidencing actual use in bad faith, as indicated in the factual section of the present Complaint, could also be considered the request of USD 3,000 sent to the web agency at the end of the exchange of correspondence aimed at determining the Respondent's intentions.
This amount is well in excess of the out-of-pocket costs directly related to the Disputed Domain Name, as evidenced in several cases, such as Benetton Group SpA v. Domain for Sale, WIPO Case No. D2001-1498, where an amount as low as USD 450 was also considered in excess of the documented out-of-pocket costs. See also, inter alia, Harvey World Travel Limited v. GamCo, WIPO Case No. D2003-1023.
In the light of the above, the Complainant deems paragraph 4(b)(i) of the Policy also applicable to the present case, since the Respondent registered the Disputed Domain Name also with the purpose of selling it to the legitimate trademark owner for valuable consideration, in excess of the out-of-pocket costs.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them.
To qualify for cancellation or transfer of the Disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall 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.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the Complaint; and (b) 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 as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true.
It is well established in previous UDRP cases that, where a domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the Disputed Domain Name incorporates in its entirety the Complainant's well-established and well-known trademark TAMPAX.
The addition of the suffix “.net” to the Disputed Domain Name does not affect the position for trademark distinguishing purposes, as its presence in the Disputed Domain Name is for Internet registration purposes only. See Samsung Electronics Col. Ltd. v. Selim Civelek, WIPO Case No. DRO2008-0005 and the other UDRP cases cited therein. See also AHI Invest GmbH v. Site Service International, Richard Sorensen, WIPO Case No. D2009-0561 and the other UDRP cases cited therein.
In view of all this, the Panel finds that the Disputed Domain Name registered by the Respondent is identical to the Complainant's well-established and well-known trademark TAMPAX, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and extensive commercial use of the same prior to the registration of the Disputed Domain Name by the Respondent.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the Disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977. Furthermore, the Respondent must have been aware of the Complainant's well-known trademark TAMPAX and, as such, that the Respondent could hardly claim to be entitled to use it as part of and at the time the Respondent registered the Disputed Domain Name.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's well-established and well-known trademark TAMPAX. Indeed, in this Panel's view the adoption by the Respondent of a domain name identical to the Complainant's trademark TAMPAX inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities and services (see further on this point below) and the consequential tarnishing of the Complainant's trademark TAMPAX and also the goodwill that the Complainant has established in this trademark through its extensive commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the Disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the Disputed Domain Name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 [the Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the Disputed Domain Name, is trading on the Complainant's valuable goodwill established in its well-established and well-known trademark TAMPAX.
Again, by registering and using the Disputed Domain Name incorporating the Complainant's trademark TAMPAX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is in fact the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the Disputed Domain Name includes without any modification the well-established and well-known trademark TAMPAX of the Complainant, held and used by the Complainant many years prior to the date the Respondent became the registrant of the Disputed Domain Name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name would typically be used in good faith only by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
The Panel also agrees with the Complainant's contention that the Respondent's registration and use of the Disputed Domain Name also constitutes an infringement of Paragraph 4(b) (i) of the Policy in the particular circumstances and for the reasons stated by the Complainant in the final three paragraphs of section A3, above.
Also, the failure of the Respondent to reply to the Cease and Desist Letter issued on behalf of the Complainant and, in fact, to renew the registration of and continue to use the Disputed Domain Name, as mentioned above, is, in the view of the Panel, further evidence of bad faith on the part of the Respondent.
Likewise, a further indication of bad faith on the part of the Respondent at the time of the registration of the Disputed Domain Name may be deduced from the fact that the Respondent is associated with some 5,036 domain names, evidence of which has been provided to the Panel, which suggests that the Respondent is a “professional registrant”, making a living from registering such a large number of Domain Names.
As regards bad faith use of the Disputed Domain Name, the sponsored links on the resolving website to competitors of the Complainant is also an indication of bad faith as the Respondent is unfairly gaining a benefit at the expense of the Complainant through the ‘click-through' income generated as a result of these links. See Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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 <tampax.net> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: August 19, 2009