WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eveready Battery Company, Inc. v. Deborah R. Heacock

Case No. D2013-0463

1. The Parties

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

The Respondent is Deborah R. Heacock of Seattle, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <energizer.biz> is registered with Dynadot, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.

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 March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2013.

The Center appointed Angela Fox as the sole panelist in this matter on April 14, 2013. 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. It markets and sells a broad range of batteries, lighting, and related products in more than 100 countries around the world. In the United States alone, the Complainant is one of the top market share leaders of the total battery market, and the leader for rechargeable batteries.

The Complainant’s primary consumer battery lines include the well-known ENERGIZER brand. Since at least as early as 1955, the Complainant and its predecessors have continuously used the ENERGIZER mark in connection with batteries and related goods. The Complainant owns numerous trademark registrations for ENERGIZER and marks incorporating ENERGIZER in the United States and around the world, including the following, details of which were annexed to the Complaint:

1. United States Registration No. 1,502,902 ENERGIZER for “batteries” in Class 9;

2. United States Registration No. 2,044,427 for ENERGIZER Logo for “batteries” in Class 9;

3. United States Registration No. 2,423,714 for ENERGIZER Logo for “batteries” in Class 9;

4. United States Registration No. 1,177,083 for ENERGIZER [Stylized] for “electric flashlights” in Class 11;

5. United States Registration No. 2,957,357 for ENERGIZER for “light bulbs” in Class 11;

6. United States Registration No. 3,554,124 for ENERGIZER for “lamps, under cabinet lighting, LED utility lights with rechargeable base stations sold as a unit, LED light sticks, and lighting sconces,” in Class 11.

7. China Registration No. 3751485 for ENERGIZER in Class 9;

8. Hong Kong Registration No. 300235458 for ENERGIZER in Class 9;

9. Macau Registration No. N/13167 for ENERGIZER in Class 9;

10. Malaysia Registration No. 95/10411 for ENERGIZER in Class 9;

11. Singapore Registration No. B2753/84 for ENERGIZER in Class 9;

12. Taiwan Registration No. 1076477 for ENERGIZER in Class 9;

The Complainant’s website at “’www.energizer.com’’ receives more than a million unique visitors every year, and the Complainant and its related companies also own other domain names that contain the term “energizer”, including <energizer.eu>, <energizerbatteries.com>, <energizerbunny.com>, and <energizerkeepgoinghalloffame.com>. A list of the Complainant’s ENERGIZER-composite domain names was annexed to the Complaint.

The disputed domain name was registered on July 25, 2012. It links to a commercial search portal site displaying links to various third-party websites, including websites purporting to offer batteries and related goods manufactured by the Complainant’s direct competitors. Print-outs from the linked site were annexed to the Complaint.

The hyperlinked headings on the website under the disputed domain name include “AA Lithium Batteries”, “Panasonic Lithium Battery”, and “NiMH Rechargeable Battery”, all of which lead to additional links to third-party websites including “www.batteryjunction.com”, “www.batteriesandbutter.com”, “www.all-battery.com”, and “www.interstatebatteries.com”, print-outs of which were also annexed to the Complaint, showing that they offer batteries and related goods for sale in competition with the Complainant.

The Complainant’s attorneys wrote to the Respondent on February 11, 2013, notifying the Respondent of the Complainant’s rights and demanding transfer of the disputed domain name to the Complainant. On the same date, the Complainant’s attorneys received a response from “Bruce Zhao” through the email address […]@gmail.com, stating simply “6000usd.” Copies of this correspondence were annexed to the Complaint.

This Complaint was filed on March 5, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to its registered trademark ENERGIZER, differing only in the addition of the non-distinctive, generic Top-Level Domain (gTLD) suffix “.biz”.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has not been licensed or otherwise authorized to use a domain name incorporating the ENERGIZER mark, is not and never has been commonly known by a name corresponding to the disputed domain name, has not used the disputed domain name in connection with a bona fide offering of goods or services since it has been using it to attract Internet users by creating a likelihood of confusion with the Complainant, and has not used it in connection with any legitimate noncommercial use since it has been using the disputed domain name to display links to third-party commercial websites and has most likely been profiting from click-through income.

Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith, citing in particular the Respondent’s offer to sell the disputed domain name to the Complainant for a price well in excess of likely out-of-pocket registration costs. In addition, the presence on the Respondent’s website under the disputed domain name of a banner stating, “Buy this domain. The domain energizer.biz may be for sale by its owner!”, is also alleged to constitute evidence that the disputed domain name was registered in bad faith for the purpose of sale to the Complainant or a competitor for costs in excess of documented out of pocket expenses (see e.g. CBS Broadcasting Inc. v. Rossi Hassad, WIPO Case No. D2000-1064; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; and Banca d’Intermediazione Mobiliare IMI S.p.A. v. Hundred.net, WIPO Case No. D2007-1097).

The Complainant also submits that the Respondent is intentionally attempting to divert Internet users to websites of competitors of the Complainant, for commercial gain in the form of click-through income, by creating a likelihood of confusion with the Complainant’s trademark (see e.g. Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644; Dr. Ing. h.c. F. Porsche AG v. Vasilly Terkin, WIPO Case No. D2003-0888; and NET2PHONE INC v. DYNASTY SYSTEM SDN BHD, WIPO Case No. D2000-0679). Such conduct, the Complainant contends, is moreover designed to disrupt and harm the Complainant’s business by diverting Internet users away from the Complainant and its goods and services, and constitutes “opportunistic bad faith” (see e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Finally, the Complainant notes that a Reverse WhoIs search for the Respondent’s email address […]@gmail.com, details of which were annexed to the Complaint, indicates that the Respondent has registered or is otherwise connected with a variety of domain names incorporating the trademarks of various unrelated companies, organizations, and famous individuals, which redirect to commercial search portal websites similar to that to which the disputed domain name is linked. The Complainant alleges that the Respondent is a serial cybersquatter who has engaged in a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and 14(b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) a respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The ENERGIZER trademark is well-known internationally including in the United States, where both parties are based, as denoting the Complainant’s batteries and related products, and the Complainant has shown that it owns registered trademark rights in ENERGIZER and marks incorporating ENERGIZER in multiple countries including the United States, China, Hong Kong, Taiwan Province of China, Malaysia and Singapore.

The disputed domain name is identical to the Complainant’s distinctive ENERGIZER trademark, adding only the non-distinctive gTLD suffix “.biz”.

The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name. The Complainant has not authorized the Respondent to use the ENERGIZER trademark and the Respondent does not appear to own, to be known by or to be using any trademark or trading name corresponding to the disputed domain name. The Respondent has made no attempt to demonstrate that it does enjoy a right or legitimate interest in the disputed domain name.

Under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to it in connection with a bona fide offering of goods or services. In this case, the Respondent has been using the disputed domain name to link to a landing site page hosting links to third-party commercial websites offering inter alia batteries for sale in competition with the Complainant. The Complainant alleges, and the Respondent does not deny, that the Respondent has been profiting from click-through income arising from that use.

In the Panel’s view, these activities do not amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy. The value of the disputed domain name as a means of attracting Internet users is bound up in the trademark significance of the Complainant’s well-known and distinctive ENERGIZER trademark. The Respondent’s use of the Complainant’s trademark to attract Internet users to a website offering links to competing third-party websites is a form of bait-and-switch selling, which is calculated to mislead Internet users. Such activities are not regarded as a bona fide offering of goods or services capable of conferring a right or legitimate interest in the disputed domain name (see similarly mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Robert Bosch GmbH v Asia Ventures, Inc., WIPO Case No. D2005-0946; and LEGO Juris A/S v J.h.Ryu, WIPO Case No. D2010-1156).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the disputed domain name is identical to the Complainant’s well-known ENERGIZER trademark and the Respondent has used it to host pay-per-click links to unrelated third-party commercial websites offering competing goods.

The Respondent is based in the Complainant’s home market, where the ENERGIZER trademark has been used for some sixty years in respect of one of the top-selling battery ranges. As the Complainant suggests, it would stretch credibility to suppose that the Respondent might not have known about the Complainant’s ENERGIZER trademark at the time the disputed domain name was registered, and the Respondent makes no effort to deny such knowledge.

The Respondent’s immediate demand for USD 6,000 following an approach on the Complainant’s behalf indicates that it was well aware that the disputed domain name was valuable and signals that the disputed domain name was more likely than not registered with a profitable sale to the Complainant or a competitor of the Complainant in mind. Paragraph 4(b)(i) of the Policy provides that a panel may infer registration and use in bad faith from evidence of such intent. On the circumstances of this case the Panel so finds.

In addition, the Respondent’s use of the disputed domain name appears to have been calculated to attract Internet users by creating a likelihood of confusion with the Complainant’s ENERGIZER mark and then to profit from click-through income arising from diversion of Internet users to competing third-party websites. Such conduct is strong evidence that the Respondent registered the disputed domain name with the intention of misleading Internet users and to profit from improper exploitation of the Complainant’s well-known ENERGIZER trademark. The Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy, as well.

The Respondent’s registration and use of the disputed domain name also appears to have been designed to disrupt and harm the Complainant’s business by diverting Internet users away from the Complainant and its goods and toward the goods of competitors instead. In the Panel’s view, such activities are also abusive and represent a type of activity that the Policy was intended to combat. See paragraph 4(b)(iii) of the Policy.

The Panel finds that the Respondent both registered and is using the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <energizer.biz> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: May 15, 2013