Kimberly-Clark Worldwide, Inc., Kimberly-Clark Corporation and Kimberly-Clark de México, S.A.B. de C.V. v. liu wan fen / chang sha zhao nuo ke ji you xian gong si
Claim Number: FA2304002040281
Complainant is Kimberly-Clark Worldwide, Inc., Kimberly-Clark Corporation and Kimberly-Clark de México, S.A.B. de C.V. (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is liu wan fen / chang sha zhao nuo ke ji you xian gong si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kimberlyclarkde.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 17, 2023; Forum received payment on April 17, 2023. The Complaint was submitted in both Chinese and English.
On April 18, 2023, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <kimberlyclarkde.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 24, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 15, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kimberlyclarkde.com. Also on April 24, 2023, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Chinese language, thereby making the language of the proceeding to be Chinese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in the English language.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceeding, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The three Complainants are: Kimberly-Clark Worldwide, Inc., Kimberly-Clark Corporation, and Kimberly-Clark de México, S.A.B. de C.V. Kimberly-Clark Corporation owns the organization’s domain names, including kimberlyclark.com and Kimberly-clark.com.mx, which are the main brand sites of Complainant in the United States and Mexico, respectively. Kimberly-Clark Worldwide, Inc. is the owner of the US trademark registrations, and Kimberly-Clark de México, S.A.B. de C.V. is the branded owner of the website directed to consumers in Mexico, specifically, kimberly-clark.com.mx.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity”.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and it will therefore treat them all as a single entity in this proceeding.
The proceeding may therefore go forward on that basis.
However, for ease of reference the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant
is engaged in the medical equipment and hygiene product businesses. Complainant
submits that it has rights in the KIMBERLY-CLARK mark based upon registration
of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g.,
Reg. No. 1,885,939, registered March 28, 1995). See Compl. Ex. B.
Respondent’s <kimberlyclarkde.com>
is confusingly similar to
Complainant’s KIMBERLY-CLARK
trademark because it removes a hyphen and adds the geographic term “de” and the
generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <kimberlyclarkde.com> domain name. Respondent is not
licensed or authorized to use Complainant’s KIMBERLY-CLARK
mark and is not commonly known by the disputed domain name. Respondent also
does not use the disputed domain name for any bona fide offering of
goods or services or legitimate noncommercial or fair use. Rather,
Respondent attempts to pass itself off as Complainant.
Respondent registered and uses the <kimberlyclarkde.com> domain name in bad faith. Respondent creates a likelihood of confusion for commercial gain. Respondent had actual and constructive knowledge of Complainant’s rights in the KIMBERLY-CLARK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the worldwide manufacturer of medical equipment, disposable diapers, tissue, feminine products, disposable garments and related goods and services.
2. Complainant has established its rights in the KIMBERLY-CLARK mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,885,939, registered March 28, 1995).
3. Respondent registered the <kimberlyclarkde.com> domain name on January 10, 2023.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant and to cause confusion for commercial gain.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the KIMBERLY-CLARK mark based upon its registration of the mark with the USPTO(e.g., Reg. no. 1,885,939, registered March 28, 1995) and other trademark agencies. See Compl. Ex. B. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the KIMBERLY-CLARK mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KIMBERLY-CLARK mark. Complainant argues that the <kimberlyclarkde.com> domain name is confusingly similar to Complainant’s KIMBERLY-CLARK trademark because it misspells the mark by removing the hyphen in the mark and adds the geographic term “de” and the gTLD “.com”. Changes in punctuation, and the additions of a geographic term and a gTLD, do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s KIMBERLY-CLARK mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KIMBERLY-CLARK mark and to use it in its domain name, misspelling the mark by removing the hyphen in the mark and adding the geographic term “de”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <kimberlyclarkde.com> domain name on January 10, 2023;
(c) Respondent has used the domain
name by attempting to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent
or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <kimberlyclarkde.com> domain name because Respondent is not licensed or authorized to use Complainant’s KIMBERLY-CLARK mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name in the present case lists the registrant as “liu wan fen / chang sha zhao nuo ke ji you xian gong si.” See Registrar Verification Email. Complainant further contends that Complainant did not authorize Respondent to use Complainant’s KIMBERLY-CLARK mark in the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant. Attempting to pass off as a complainant, presumably for financial gain, is not using a domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of loan services. See Compl. Ex. G. Thus, the Panel finds that Respondent does not provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent creates a likelihood of confusion for commercial gain. While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, the Panel notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of loan services. See Compl. Ex. G. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent had actual and constructive knowledge of Complainant’s rights in the KIMBERLY-CLARK mark because of Complainant’s registration of the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, it is open to the Panel to find on appropriate evidence that Respondent had actual knowledge of Complainant's mark and rights and therefore to find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, Complainant contends that the notoriety of Complainant’s mark indicates that Respondent had actual knowledge of Complainant’s rights in the mark. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kimberlyclarkde.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 23, 2023
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