Complainants are is Reckitt & Colman (Overseas) Health Limited, United Kingdom, and Reckitt Benckiser (India) Private Limited, India, represented by Studio Barbero S.p.A., Italy.
Respondent is Madhumita Mohan, India.
The disputed domain names <dettoldisinfectantspray.com>, <dettolhandsanitizer.com> and <dettolhandwash.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing the contact details and indicating that the Domain Names have been placed on Registrar lock.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. While Respondent submitted various emails to indicate a willingness to settle this case (explained in the Factual Background below), Respondent did not submit a formal Response.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 1, 2020. 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.
Complainants are part of the Reckitt Benckiser group of companies, headquartered in Slough, United Kingdom, one of the global leaders in consumer health, hygiene and home products. The Reckitt Benckiser companies manufacture and market health, personal care and household products, including over-the-counter pharmaceuticals such as analgesics, antiseptics, flu remedies, and gastrointestinal medications and products for hair removal, denture cleaning, and pest control. They have more than 34,000 employees, operations in more than 60 countries and sales in most countries across the globe. Key brands include DUREX, GAVISCON, SCHOLL, NUROFEN, MUCINEX, MEGARED, MOVE FREE, STREPSILS, CLEARASIL, OPTREX, DETTOL, LYSOL, FINISH, HARPIC, AIR WICK, VANISH, and WOOLITE.
The trademark DETTOL has been used for more than 80 years in relation to cleaning supplies, disinfectant, and germ protection products, which have been marketed and sold in over 120 countries of the world, including India where Respondent is located. The well-known character of the trademark has been recognized by several court decisions and the trademark DETTOL has been cited as a famous mark in its sector in numerous articles and decisions.
Invented in 1933, DETTOL was first used in hospitals for the cleaning and disinfection of skin during surgical procedures. It was also used to protect mothers from illness after childbirth before delivering babies. Ever since then, DETTOL liquid has been trusted around the world to help clean wounds caused by cuts, bites, grazes, insect stings, and for personal hygiene to help protect families from harmful germs.
The trademark DETTOL is used for a line of liquid and solid antiseptic cleansing products manufactured by Complainant. DETTOL is one of the world’s leading brands of antiseptics. The DETTOL brand has stayed contemporary through the launch of new products and offered consumers a breadth of products across categories that can help protect them from germs. These include antiseptic, bar soaps, liquid hand washes, hand sanitizer, shower gels, dish and slab gel antibacterial sprays, and wipes.
In India, where Respondent is based, the DETTOL brand continues to be one of the most trusted protectors of health ranking among the top 10 Most Trusted Brands in India since the last 10 years. In the last decade, Complainant Reckitt Benckiser (India) Private Limited has engaged in a social initiative, in partnership with the Indian television channel NDTV, aimed at spreading awareness around the importance of hygiene and sanitation to millions across India. Such campaign, named Banega Swachh India (BSI), impacts the health and lives of the vulnerable with a focus on children and youth. Moreover, the “morethanatoilet” campaign, in partnership with Water.org, is providing microfinance that allows people in India, Bangladesh, and Indonesia to get access to clean water and fit flushing toilets in their homes and villages.
Complainant Reckitt & Colman (Overseas) Health Limited is the owner of several trademark registrations for DETTOL, including the following International and European Union registrations:
- the International Trademark Registration No. 1051284 DETTOL (word mark) registered on June 11, 2010, in classes 3, 5, and 21;
- the European Union Trade Mark Registration No. 003033842 DETTOL (word mark) registered on December 21, 2004, in classes 3, 5, and 21;
- the European Union Trade Mark Registration No. 009153511 DETTOL (word mark) registered on November 15, 2010, in classes 3, 5, and 21; and
- the European Union Trade Mark Registration No. 003032299 DETTOL (figurative mark) registered on June 17, 2004, in classes 3, 5, and 21.
Complainant Reckitt Benckiser (India) Private Limited is the owner, amongst others, of the following national trademark registrations for DETTOL in India, including the following:
- the Indian Trademark Registration No. 141707 DETTOL (word mark) registered on December 22, 1949, in class 5;
- the Indian Trademark Registration No. 1036911 DETTOL (figurative mark) registered on August 14, 2001, in class 5;
- the Indian Trademark Registration No. 1036909 DETTOL (word mark) registered on August 14, 2001, in class 3;
- the Indian Trademark Registration No. 1145431 DETTOL (figurative mark) registered on October 22, 2002, in class 3; and
- the Indian Trademark Registration No. 1145430 DETTOL (figurative mark), registered on October 22, 2002, in class 5.
The Reckitt Benckiser group of companies has, for many years, operated brand websites for DETTOL for consumers in many countries globally. Numerous identical domain names were registered in numerous generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”), including <dettol.com>, registered on November 24, 1995; <dettol.co.uk>, registered on December 20, 1999; <dettol.co.in>, registered on February 16, 2005; and <dettol.in>, registered on February 16, 2005. All such domain names are registered in the name of the Luxembourg entity Reckitt Benckiser SARL, which is a subsidiary of the Reckitt Benckiser group to which many of the domain names corresponding to the group’s trademarks are registered.
The domain name <dettol.co.in> is used to promote the DETTOL trademark and products online with a focus on the Indian market. It points to a website where DETTOL products can also be directly purchased by Internet users. The range of DETTOL products available for purchase includes, amongst others, liquid handwash and hand sanitizer.
Complainants became aware of the Domain Names on March 20, 2020, three days after their registration, when Complainants received the following email from Respondent:
“Dear Laxman Narasimhan,
It is a pleasure to write to the CEO of Reckitt Benckiser.
In this time of global crisis, I write to you with a humble request.
I work in a similar line of business and believe that it is safe to say I have a fair understanding of the industry.
Coming to the point, I do have a domain that I'm willing to part from “www.dettolhandwash.com” & “www.dettolhandsanitizer.com” which I believe will be of value to you.
Please do think about it and let me know as to how we can proceed with negotiations.
If this email is not reaching to you, kindly connect me to Laxman Narasimhan.
Hope to hear from you.
Regards,
Madhumita Mohan”
Complainants state that to obtain additional information about Respondent’s intentions as to the Domain Names, a message was sent in reply requesting that Respondent clarify the statement “I work in a similar line of business” and explain the reasons why Respondent registered the Domain Names. However, Respondent did not reply. Complainants then sent a cease-and-desist letter (via email) to Respondent on April 8, 2020 demanding that Respondent cease use of the Domain Names and transfer them to Complainants free of charge. Respondent replied on April 12, 2020, as follows:
“The domains were available on a third party platform GoDaddy and were up for sale.
That being said, I apologise for my lack of knowledge. I do not intend to infringe the legal properties of any company. Thus willing to comply to your terms and handover the domains.
Although I would put forth humble request, if you could reimburse the initial investment done on the domain from my end. Kindly consider my request. I would appreciate if you consider.
Hope to hear from you soon.
Regards,
Madhumita”
Complainants’ representative answered this communication on April 14, 2020, requesting that Respondent clarify what was meant by the request to “reimburse the initial investment done on the domain from my end” and indicating that it would then report the request to Complainants. However, Respondent did not reply.
Complainants state that in light of Respondent’s failure to comply with Complainants’ demands, Complainants decided to file the Complaint in order to obtain the transfer of the Domain Names. Further verifications conducted during the drafting of the Complaint highlighted that Respondent had also registered the Domain Name <dettoldisinfectantspray.com>, which was thus included in the Complaint.
After the Complaint was filed, Respondent submitted emails on May 13 and May 15, 2020, in which Respondent indicated that Respondent did not wish to participate in any legal proceedings and would be willing to transfer the Domain Names to Complainants. The Center sent emails to the Parties on May 14 and May 15, 2020, acknowledging Respondent’s emails and indicating that “pursuant to the Rules, paragraph 17, a UDRP proceeding may be suspended to implement a settlement agreement between the Parties.”
Complainants submitted an email on May 15, 2020 indicating that “Complainant is not willing to suspend the present proceedings” and providing detailed reasons, referencing the communications described above. In sum, Complainants stated that “Respondent already had the opportunity to resolve the issue in an amicable manner after having been put on notice of the infringement of Complainant’s IP rights before the filing of the Complaint, but failed to do so. Accordingly, Complainant is now interested in obtaining a decision, which is also aimed at constituting a deterrent against further infringing registrations of domain names identical or similar to its registered trademarks that might be considered by third parties in the future.”
On May 26, 2020, Complainants submitted an email to indicate that Respondent had also registered the domain names <dettolhandsanitizer.in>, <dettolhandwash.in>, and <dettoldisinfectantspray.in>, which allegedly infringe Complainants’ trademark rights, and requested that Respondent immediately cease use of these domain names and make arrangements to transfer them to Complainant. Respondent submitted an email on May 26, 2020 in which Respondent indicated a willingness to transfer these domain names to Complainants. On May 27, 2020, Complainants sent an email to Respondent to facilitate practical arrangements for the transfer of the “.in” domain names <dettolhandsanitizer.in>, <dettolhandwash.in>, and <dettoldisinfectantspray.in> to Complainants, but confirming that Complainants would await a decision in this UDRP case. On May 29, 2020, Respondent confirmed that it had followed the technical steps to facilitate the transfer of the “.in” domain names to Complainants.
On June 3, 2020, Respondent requested confirmation that the transfer of the “.in” domain names had been successfully completed and instructions for transfer of the “.com” Domain Names to Complainants. On June 4, 2020, Complainants sent an email confirming that “please be advised that the .in domain names have been successfully transferred to the account of our technical partners pursuant to the Complainant’s instructions”, but “[w]ith reference to the .com domain names, as mentioned in our prior communications, we confirm that our client is interested in obtaining a decision.” On June 10, 2020, Respondent submitted an email stating in relevant part that “[d]ue to lack of knowledge I have registered the [Domain Names], and I do not intent to infringe any of them”. Respondent requested that Complainants “not proceed further as I am willing to handover .com domains as well, and cannot afford any sorta [sic] financial investment on this case (as I got lost my job drying COVID-19 LAYOFF)”.
All of the Domain Names were registered on the same date, March 17, 2020. The Domain Names are pointed to registrar parking pages displaying links related to antibacterial and antiseptic products.
Complainants state that as a result of their extensive use and marketing investments, Complainants’ DETTOL trademark enjoys considerable reputation in the marketplace as a leading brand in the field of germ protection, hygiene and sanitation, including in India where Respondent is located. In light of the spread of the Coronavirus Covid-19, which represents one of the most serious global health emergencies in the last 100 years, with the pandemic having now reached over 120 countries, demand for DETTOL products has increased substantially in recent months.
Complainants state that Respondent registered the Domain Names on March 17, 2020 without authorization from Complainants or one of their associated companies. The Domain Names are pointed to registrar parking pages displaying links related antibacterial and antiseptic products.
Complainants contend that the Domain Names are confusingly similar to the trademark DETTOL in which Complainants have rights, since they entirely reproduce Complainants’ mark, with the mere addition of the generic or descriptive terms “hand wash”, “hand sanitizer” and “disinfectant spray” and the gTLD “.com”.
Complainants’ assert that the inclusion of the non-distinctive elements “hand wash”, “hand sanitizer” and “disinfectant spray” in the Domain Names does not affect the confusing similarity between the Domain Names and Complainants’ DETTOL trademark. To the contrary, it is apt to reinforce the likelihood of confusion, as the terms “hand wash”, “hand sanitizer” and “disinfectant spray” combined with the trademark are descriptive of products sold by Complainants under the DETTOL mark. Therefore, Internet users may be led to believe that the Domain Names are registered and used by Complainants or, at least, by an authorized reseller, in order to promote their products on the Internet.
In light of the above, Complainants urge that the Domain Names are certainly confusingly similar to the prior registered DETTOL trademark, in which Complainants have rights pursuant to paragraph 4(a)(i) of the Policy.
Complainants state that Respondent is not a licensee, an authorized agent of Complainants or in any other way authorized to use Complainants’ trademark DETTOL. The mere registration does not establish rights or legitimate interests in the Domain Names.
Complainants further state that, upon information and belief, Respondent is not commonly known by the Domain Names as an individual, business or other organization and “Dettol” is not the family name of Respondent, whose name according to the WhoIs records is Madhumita Mohan; nor has it been found to hold any trademark registration or trade name corresponding to the Domain Names. Therefore, Respondent is precluded from asserting any rights in the trademark DETTOL, or in the names encompassed in the Domain Names, established through common usage.
Complainants contend that Respondent has not provided them with any evidence of use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services, or with a legitimate noncommercial or fair use before or after any notice of this dispute. To the contrary, the Domain Names have been pointed to registrar parking pages with sponsored links related to antibacterial and antiseptic products, which are the products commercialized by Complainants under the DETTOL mark. Therefore, users visiting the websites at the Domain Names might be induced to believe that they are operated by Complainants or one of their affiliated entities.
Moreover, Complainants claim that the circumstance whereby Respondent sent an unsolicited email communication, three days after the Domain Names were registered, indicating a willingness to part with them and requesting how to proceed with negotiations, clarifies that Respondent did not intend to use them for any legitimate purpose but, on the contrary, to derive an illegitimate profit from the sale of the Domain Names, which target Complainants’ trademarks.
Finally, Complainants submit that while the burden of proving the absence of Respondent’s rights or legitimate interests in respect of the Domain Names for purposes of paragraph 4(a) of the Policy lies with Complainants, it is nevertheless a well-settled principle that satisfying this burden is unduly onerous since proving a negative fact is logically less feasible than establishing a positive. Accordingly, it is sufficient for Complainants to produce prima facie evidence in order to shift the burden of production to Respondent.
For all of the foregoing reasons, Complainants conclude that Respondent has no rights or legitimate interests in respect of the Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
Complainants contend that in light of the prior registration and extensive use of Complainants’ trademark DETTOL in connection with Complainants’ disinfectant and germ protection products in many countries, including India, where Respondent is based, it is inconceivable that Respondent was unaware of the existence of Complainants’ registered and well-known trademark at the time of registration of the Domain Names.
Complainants state that DETTOL products have been marketed in the Indian market and online by Complainant Reckitt Benckiser (India) Private Limited through the website “www.dettol.co.in”. Moreover, they have been advertised throughout India via television and social media advertisements and the demand of DETTOL products has increased significantly as of mid-March 2020 due to the spread of the Covid-19 virus. In view of this, Respondent was or ought to be aware of Complainants’ DETTOL mark when it registered the Domain Names on March 17, 2020.
Furthermore, in light of the wording adopted in the unsolicited message addressed by Respondent to Complainants three days after the registration of the Domain Names, it is evident that Respondent, who declared to be operating in the same sector as Complainants, was well aware of Complainants’ and their DETTOL mark. As held in prior UDRP decisions, actual or constructive knowledge of Complainants’ rights in the trademark is a factor supporting bad faith.
In addition, Complainants contend that given the distinctiveness and reputation of Complainants’ trademark, Respondent clearly acted in opportunistic bad faith by registering the Domain Names with full knowledge of Complainants’ trademark for the purpose of taking commercial advantage of the mark. Moreover, the obvious connection between the registration of the Domain Names and Complainants’ products cannot be interpreted with any legitimacy – their use is so obviously connected with Complainants’ products that their use by someone with no connection suggests opportunistic bad faith. They have been pointed to Registrar parking pages with sponsored links. As a result, Respondent may earn commission whenever an Internet user visits the websites and clicks on one of the sponsored links. Such conduct where Respondent sought or realized commercial gain indicates Respondent’s bad faith, as stated in previous UDRP decisions. Furthermore, the fact that most of the links relate to cleaning products, which is the category of goods identified under Complainants’ DETTOL mark, is apt to increase the likelihood of confusion with Complainants’ trademark.
In view of the above, Complainants claim it is that, by registering and using the Domain Names, Respondent intentionally attempted to attract users to its website for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites and the products sponsored therein, according to paragraph 4(b)(iv) of the Policy.
As an additional circumstance evidencing Respondent’s bad faith, Complainants state that a few days after Respondent’s registration of the Domain Names and in the midst of the Covid-19 emergency, Respondent sent the unsolicited email communication to Complainants, which was aimed at offering the Domain Names for sale. Furthermore, even after receipt of the cease and desist letter sent by Complainants’ representative, Respondent requested a monetary compensation to transfer the Domain Names to Complainants. Complainants argue that although Respondent did not specify the amount requested, it is very likely that Respondent aimed at obtaining a compensation exceeding out-of-pocket costs.
In light of the above, Complainants submit that the Domain Names were registered and are being used in bad faith in full satisfaction of paragraph 4(a)(iii) of the Policy.
While Respondent sent emails as discussed above, Respondent did not submit a formal Response to deny Complainant’s contentions.
Complainants have brought a single consolidated Complaint against Respondent and requested that consolidation be accepted since it meets the criteria set forth in prior UDRP decisions and in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel considers, among other things, that Complainants have a common legal interest and a specific common grievance against Respondent; therefore, the Panel determines that it is equitable and procedurally efficient to permit the consolidation of the multiple Complainants in this case.
In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
The Panel finds that Complainant has established rights in its DETTOL trademark, based on use of the mark in the United Kingdom, India and elsewhere around the world, as well as ownership of numerous trademark registrations around the world, including in India where Respondent is located. Further, the Panel determines that each of the Domain Names is confusingly similar to the DETTOL mark. Section 1.8 of the WIPO Overview 3.0 provides that “where a trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Here, the Panel determines that Domain Names are confusingly similar to Complainant’s DETTOL trademark – each Domain Name includes the mark in its entirety, placed in the first position before the addition of the descriptive terms “hand wash”, “hand sanitizer”, and “disinfectant spray”, respectively. The use of the gTLD “.com” does not alter this analysis.
Accordingly, the Panel finds that that the Domain Names are confusingly similar to a trademark in which Complainants have rights, in accordance with paragraph 4(a)(i) of the Policy. Complainants have satisfied the first element of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, noting the facts and arguments set out above, the Panel determines that Complainants have made out a prima facie case, while Respondent has failed to contest Complainants’ contentions. The Panel finds that Complainants have not authorized Respondent to use their DETTOL trademark; that Respondent is not commonly known by the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, the Domain Names have been used to resolve to a landing webpage with links that redirect users to products competitive with those of Complainants. Respondent’s use of the Domain Names in this manner does not give rise to any right or legitimate interest in them. As stated in section 2.9 of the WIPO Overview 3.0: “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondent. The Panel therefore finds that Complainants have established the second element of the Policy in accordance with Policy paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Names were registered and are being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainants and their DETTOL trademarks, and intentionally targeted those marks, when registering the three Domain Names. Each Domain Name, incorporating the DETTOL mark in its entirety, specifically references an application for which DETTOL products are used: “hand wash”, “hand sanitizer”, and “disinfectant spray”. Moreover, Respondent contacted Complainants only three days after registering the Domain Names, inquiring whether Complainants were interested in the Domain Names. Given the reputation of the DETTOL trademark and the fact that the Domain Names are so obviously connected with Complainants’ mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainants and their DETTOL mark when registering the Domain Names. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered); see Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980 (“the obvious connection between the registration of the Domain Name and the Complainant’s product extension and trademark application cannot be interpreted with any legitimacy”).
This point is further confirmed by Respondent’s use of the Domain Names in connection with landing pages containing links to third parties providing competitive goods. In these circumstances, it is clear that the Domain Names have been used in bad faith and that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the DETTOL trademark as to the source, sponsorship, affiliation, or endorsement of its websites. See section 3.5 of WIPO Overview 3.0, providing “particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”; see also AB Electrolux v. Zanussi Center, WIPO Case No. D2019-1823.
In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <dettoldisinfectantspray.com>, <dettolhandsanitizer.com>, and <dettolhandwash.com> be transferred to Complainants.
Christopher S. Gibson
Sole Panelist
Date: July 20, 2020