Unilever triumphs in PG Tips domain case
Unilever, the owner of household brands such as PG Tips, has successfully recovered the domain name pgtips.com from an organisation based in Cape Town, South Africa.
British-Dutch company Unilever supplies a range of well-known brands to consumers in more than 190 countries. Its product portfolio includes PG Tips, a tea which was originally released as a loose-leaf tea in the UK in 1930.
In February 2018 Unilever filed a complaint with the World Intellectual Property Organization’s Arbitration and Mediation Center.
The pgtips.com domain name is owned by Net Admin, Landrush Investments in Cape Town. It resolves to a pay-per-click webpage and is currently inactive. Net Admin has reportedly been in possession of the pgtips.com domain name since 2010.
The longstanding reputation of PG Tips is central to the brand, which Unilever said is well-known globally. PG Tips became the first major tea company to commit to sustainably sourcing tea on a large scale in 2007, Unilever said, and since 2012 all the tea used in PG Tips has been Rainforest Alliance certified.
Unilever owns a number of word and figurative marks for ‘PG Tips’ across Europe and Asia and is also the registered owner of a number of domains containing the term, including pgtips.co.uk and pgtips.com.cn.
Net Admin’s domain name incorporates the ‘PG Tips’ mark in its entirety, Unilever said, and there is no evidence of the domain name being used legitimately in either a commercial or non-commercial manner.
Unilever claimed the pay-per-click site has a landing page which contains links to advertisements. Net Admin is intentionally attempting to attract internet users with the intention of commercial gain, the company said, as well as misleading consumers and tarnishing Unilever’s trademarks.
In addition Unilever noted that Net Admin owns other domain names which feature well-known trademarks including elizabethardenspa.com and gamesnokia.net, providing evidence that Net Admin has no legitimate interest in the names.
Net Admin did not respond to the allegations or take part in the proceedings.
The panel at WIPO said there is “clear merit” in Unilever’s arguments. It found that the pgtips.com domain name is, for all intents and purposes, “the same” as the ‘PG Tips’ marks.
By misleading consumers of Unilever through a pay-per-click site, the panel said, Net Admin’s conduct in relation to the domain name is “not legitimate” and pgtips.com was registered for the purpose of commercial gain by misleading consumers.
The panel therefore ordered the domain name pgtips.com to be transferred to Unilever. Clive Elliot QC, the sole panellist, delivered the decision on April 30.
This story was first published on TBO.
