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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eveready Battery Company, Inc. v. Ho Nim

Case No. D2010-1799

1. The Parties

The Complainant is Eveready Battery Company, Inc. of Missouri, United States of America, represented by Bryan Cave, LLP of the United States of America.

The Respondent is Ho Nim of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <energizerlighting.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, Above.com, Inc. 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 October 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2010.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 24, 2010. 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

According to the Complainant, it is one of the largest manufacturers of dry cell batteries and flashlights. The Complainant allegedly markets and sells a broad range of battery, lighting, solar power and related products in more than 150 countries around the world and occupies nearly 40% of the total battery market in the United States.

Since at least as early as 1955, the Complainant claims to have continuously used its ENERGIZER mark in connection with batteries and other related goods. Among others in the United States and China, the domicile of the Respondent, the Complainant is the registered owner of various trademarks containing the element ENERGIZER. It is asserted that the ENERGIZER marks of the Complainant are extremely valuable and famous in the United States and throughout the world.

The Complainant maintains an active presence on the Internet, primarily through its website "www.energizer.com".

The disputed domain name was registered on January 22, 2010 and is connected to a portal site displaying links to various third party websites, including websites offering goods of the Complainant's direct competitors.

5. Parties’ Contentions

A. Complainant

The only difference between the disputed domain name and the Complainant's ENERGIZER marks is the addition of the generic term "lighting" and the generic top-level domain ".com", which have no significance to a likelihood of confusion analysis.

The Respondent has no legitimate rights or interests whatsoever in the disputed domain name. The Respondent is not in any way associated with the Complainant and has never sought or received authorization or a license to use the Complainant's ENERGIZER marks in any way. Further, the Respondent has not and cannot demonstrate that it has ever made any legitimate offering of goods or services under the Complainant's marks, and has no means to establish that it is or ever has been commonly known as "energizerlighting". Finally, the Respondent is not making any legitimate non-commercial use of the disputed domain name.

The Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more competing websites in an effort to confuse and mislead consumers. Second, the Respondent's bad faith conduct is designed to disrupt and harm the Complainant's business. Third, the Respondent plainly knew of the Complainant's long and continuous use of its ENERGIZER marks at the time of registration. Finally, a search of the databases of WIPO and NAF UDRP decisions indicates that the Respondent is a new, but highly active serial cybersquatter. Since the beginning of 2010, the Respondent has been named as respondent in 19 different WIPO and 7 different NAF proceedings, in all of which he has been found to have violated the UDRP.

For these reasons, the Complainant respectfully requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns various trademarks containing the element ENERGIZER. The disputed domain name fully incorporates the Complainant's trademark ENERGIZER, added by the generic term "lighting", and is thus confusingly similar to the Complainant’s trademarks. It is well established under UDRP proceedings that the addition of a generic word (“lighting”) to a well-known mark (such as ENERGIZER in this case) does not prevent a finding of confusing similarity.

The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. To the contrary, the Respondent is using the disputed domain name to direct Internet users to products of the Complainant's direct competitors.

Having made a prima facie case of “illegitimate interests” on the part of the Respondent which remains unrebutted, the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The diversion of Internet users to competitors is also a clear indication of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

It may also be concluded that the Respondent knew of the existence of the Complainant’s trademarks and their significance when the disputed domain name was registered.

Under the circumstances, the Panel finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy.

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 <energizerlighting.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Dated: November 24, 2010

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