DECISION

The Procter & Gamble Company v. Wingspan, Inc.

Claim Number: FA0202000104944

PARTIES

Complainant is The Procter & Gamble Company, Cincinnatti, OH (“Complainant”) represented by Carla C. Calcagno, of Howrey Simon Arnold & White, LLP.  Respondent is Wingspan, Inc., Chester, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eprocterandgamble.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits 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 21, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <eprocterandgamble.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 13, 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@eprocterandgamble.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 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations in this proceeding:

1. The disputed domain name <eprocterandgamble.com> is identical or confusingly similar to Complainant’s famous PROCTER & GAMBLE mark.

2. The disputed domain name is not the name of Respondent, nor can it can be considered Respondent’s business or common tradename.  Further, Complainant visited the website connected with the disputed domain name and the website consisted simply of an offer to sell the disputed domain name.  Such use is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use of <procterandgamble.com>.

3. Respondent is attempting to sell the disputed domain name, which is considered an act of bad faith under Policy ¶ 4(b)(i).  Respondent has a history of registering other parties’ famous marks using the prefix “e.”  Such actions are evidence of bad faith outlined in Policy ¶ 4(b)(ii).  Finally, Respondent has not answered Complainant’s cease and desist requests and therefore, Respondent’s failure to respond to Complainant’s request provides strong support for a determination of bad faith registration and use.  

B. Respondent did not file a Response in this proceeding.

FINDINGS

Since 1890, Complainant has used its PROCTER & GAMBLE mark in connection with the development, manufacturing and sale of consumer products.  Complainant owns all rights in the PROCTER & GAMBLE mark and has obtained trademark registrations in several countries worldwide.  The PROCTER & GAMBLE mark is unique and distinctive and has no meaning outside its use as a trademark identifying Complainant as a source of goods and services.  Complainant sells more than 250 products to more than five billion consumers in 130 countries.  In the year 2000, Complainant and its subsidiaries generated total net sales of over $40 billion dollars.

Respondent registered the disputed domain name on February 16, 1999.  On its domain name registration, Respondent lists that the disputed domain name is “FOR SALE.”  On November 29, 2001, Complainant visited the website connected with the disputed domain name and found an offer to sell the domain name.  Respondent has a history of registering domain names that incorporate famous marks with the “e” prefix.  Examples include: <eaarp.com>, <egeneralelectric.com>, <emcdonalds.com>, <estarbucks.com>, <etimewarner.com>, <emotorola.com>, <esharperimage.com>, <ewinstonsalem.com>, <edeltaairlines.com>, <ebarnesandnoble.com>, <edowchemical.com>, <enewyorktimes.com>, <ekmart.com>, <ewalgreens.com>, <eunitedairlines.com>, <edupont.com>, and <etowerrecords.com>.

On May 25, 2000, Complainant sent Respondent a cease and desist letter but Respondent.  has not answered Complainant’s request.

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 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.

Identical to and/or Confusingly Similar

Complainant has established its rights to PROCTER & GAMBLE by registering the mark with various countries worldwide.  Complainant has also established its rights to PROCTER & GAMBLE by using the mark in commerce for more than 100 years and by establishing the mark as one of the most famous marks in the world of business.

The disputed domain name <eprocterandgamble.com> is confusingly similar and nearly identical to Complainant’s famous mark.  First, the ampersand symbol (&) cannot be reproduced in a domain, therefore, the Panel holds that Respondent’s use of “and” rather than “&” does not diminish the confusing similarity between the disputed domain name and Complainant’s mark.  See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL).

Second, Respondent incorporates Complainant’s famous mark in its entirety and simply uses the letter “e” as a prefix.  When the letter “e” is used as a prefix, the word becomes associated with “e-business” in Internet parlance.  Thus, the use of “e” as a prefix does not diminish the confusing similarity between the mark and the disputed name.  See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding that the domain name <efitnesswholesale.com> is confusingly similar to Complainant’s mark, FITNESS WHOLESALE); see also Int’l Data Group, Inc. v. Maruyama & Co., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerland.com> is confusingly similar to Complainant’s mark, COMPUTERLAND); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent’s domain name <eebay.com> is confusingly similar to the Complainant’s registered EBAY trademark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent has not filed a Response in this matter.  Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <eprocterandgamble.com>.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent has registered a confusingly similar domain name and, based on the evidence presented, Respondent’s only use of the disputed domain name permits the finding that it intended from the outset to sell the disputed domain name.  Respondent’s actions cannot be considered a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

                 

Respondent has not been and is not currently known as <eprocterandgamble.com>.  Furthermore, it would be difficult to find another entity in the world that could legitimately be referred to as PROCTER & GAMBLE other than Complainant.  Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii).  See 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); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent has listed on its registration form that the disputed domain name is “FOR SALE.”  Further, Respondent has posted a notice on the website connected with the disputed domain name that the domain name is for sale.  Finally, the disputed domain name is confusingly similar to Complainant’s famous PROCTER & GAMBLE mark.  Therefore, the Panel can make an inference that Respondent has been using the disputed domain name with the intent to sell it to Complainant.  This is not a noncommercial or fair use of <eprocterandgamble.com> pursuant to Policy ¶ 4(c)(iii).  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).    

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent listed the disputed domain name for sale both on its website and on its domain registration form.  These actions by Respondent are evidence of bad faith registration as outlined in Policy ¶ 4(b)(i).  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WhoIs registration information contained words showing the domain name was for sale.).

Respondent has registered other domain names using the prefix “e” and incorporating the famous trademarks of other companies.  Such a pattern of conduct is evidence of bad faith as outlined in Policy ¶ 4(b)(ii).  See Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com> and intended to prevent holders from using their marks in corresponding domain names); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).

It is well recognized that the examples outlined in paragraph four are not exclusive and thus, the Panel may look outside of these factors.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).  Therefore, the Panel can consider Respondent’s lack of an answer to Complainant’s cease and desist request almost two years ago, as a strong indication that Respondent has registered and used <eprocterandgamble.com> in bad faith.  See Cellular Group v. Wingspan, Inc., D2000-1290 (WIPO Dec. 9, 2000) (finding Respondent ignored Complainant’s request to transfer ownership of the disputed domain name and that, therefore, there is an inference of bad faith registration and use); see also Encyclopaedia Britannica, Inc. v. Zuccarini & Cupcake Patrol, D2000-0330 (WIPO June 7, 2000) (finding that Respondent’s failure “to respond to Complainant’s efforts to make contact provide strong support for a determination of  ‘bad faith’ registration and use”).

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 be hereby granted.

Accordingly, it is Ordered that the domain name <eprocterandgamble.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: March 28, 2002.

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