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Generic Top Level Domain Name (gTLD) Decisions |
The
Procter & Gamble Company v. Stephen McGuckin
Claim
Number: FA0202000104946
PARTIES
Complainant is The Procter & Gamble Company,
Cincinnati, OH (“Complainant”) represented by Carla C. Calcagno, of Howrey,
Simon, Arnold & White, LLP.
Respondent is Stephen McGuckin,
Cookstown (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <procter-gamble.com>,
registered with Register.com.
PANEL
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.
John J. Upchurch as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
19, 2002; the Forum received
a hard copy of the Complaint on February 20, 2002.
On February 22, 2002, Register.com
confirmed by e-mail to the Forum that the domain name <procter-gamble.com> is registered with Register.com and that
Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com
registration agreement and has thereby agreed to resolve domain-name
disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On February 22, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of March 14, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via
e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@procter-gamble.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification,
the Forum transmitted to the parties a
Notification of Respondent Default.
On March 20, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed John
J. Upchurch as Panelist.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
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.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Respondent’s <procter-gamble.com> domain name is confusingly similar to
Complainant’s PROCTOR & GAMBLE mark.
Respondent has no
rights or legitimate interests in the disputed domain name.
Respondent registered
and used the disputed domain name in bad faith.
B. Respondent
No Response was
received.
FINDINGS
Since
1890, Complainant has continuously used the trade name PROCTER & GAMBLE in
connection with the development, manufacturing
and sale of consumer
products.
Complainant
owns several registrations for PROCTER & GAMBLE, including a Canadian
registration on April 29, 1948 (Reg. No. UCA30196),
a French registration on
May 10, 1955 (Reg. No. 1,577,035), and a registration for the mark in the
United Kingdom on February 2,
1999 (Reg. No. 300,137); among others.
Complainant
markets over 250 products to more than five billion consumers in 130
countries. In 2000, Complainant
generated a net total of over $40 billion in sales. Complainant has spent a substantial amount of money marketing
its PROCTER & GAMBLE mark.
Complainant
has created a formidable presence on the Internet through its <pg.com>,
<proctergamble.com>, and <procter-gamble.org>
domain names.
Respondent
registered the disputed domain name on March 14, 2000. On May 25, 2000, Complainant sent Respondent
a cease and desist letter informing Respondent that its domain name infringed
on Complainant’s
mark. On June 2, 2000
Respondent refused to transfer the domain name to Complainant but said that it
may be willing to sell it.
On
June 8, 2000 Complainant refused to purchase the disputed domain name, and
Respondent replied several days later that it would
create a website with
adult-content material and an on-line gambling forum. Complainant reiterated its decision not to buy the disputed
domain name.
On
September 23, 2001, Respondent sent Complainant an email stating “One more
month and I’m up and going; my name; my site; you had
your chance.” One month later Respondent’s domain name
merely contained an on-line advertisement for Respondent’s registrar.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a) of the
Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant
has rights; and
(2) the 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.
Identical
and/or Confusingly Similar
Complainant has established legal
rights to the PROCTER & GAMBLE mark due to its many registrations of the
mark.
Respondent’s <procter-gamble.com>
domain name is confusingly similar
to Complainant’s PROCTOR & GAMBLE mark because it includes Complainant’s
mark in its entirety,
merely substituting a hyphen for the “&” and adding
the generic top-level domain name “.com.”
See InfoSpace.com v.
Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain
name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.
The
addition of a hyphen and .com are not distinguishing features”); see also PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at
“www.pge.com” because the ampersand symbol is
not reproducible in a domain
name); see also Blue Sky Software
Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that
the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP
trademark,
and that the "addition of .com is not a distinguishing
difference").
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
There is no evidence that Respondent,
known as Stephen McGuckin, is commonly known by the disputed domain name or
PROCTER & GAMBLE
pursuant to Policy
¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain name
in question); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known
by the mark).
Respondent’s attempt to sell the disputed domain name to the
Complainant, followed by its subsequent lack of use other than to display
a
link to its registrar indicates Respondent registered the disputed domain name
for the primary purpose of selling it, which is
not a bona fide offering of
goods pursuant to Policy ¶ 4(c)(i). See
Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a domain name primarily
for the purpose
of marketing it to the owner of a corresponding trademark).
Respondent’s inability to develop the
website, to sell products or offer services, indicates that it does not have
rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (finding that failure to provide a product or service or develop the site
demonstrates that Respondents
have not established any rights or legitimate
interests in the domain name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent is presumed
to have had knowledge of Complainant’s distinctive and famous PROCTER
&GAMBLE mark when it registered the
disputed domain name. As a result, its registration and use of the
disputed domain name were in bad faith.
See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given
the world-wide prominence of the mark and thus Respondent
registered the domain name in bad faith).
Respondent’s failure
to link the disputed domain name to any active site indicates it is using the
disputed domain name in bad faith. See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in
bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
Respondent’s passive holding of the domain name satisfies the requirement of
¶
4(a)(iii) of the Policy).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN policy, the Panel
concludes that the requested relief shall be hereby
granted.
Accordingly,
it is Ordered that the domain name <procter-gamble.com>
be transferred from Respondent
to Complainant.
John
J. Upchurch, Panelist
Dated:
March 25, 2002
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