DECISION

The Gillette Company v. Oscar Haynes

Claim Number: FA0304000155904

PARTIES

Complainant is The Gillette Company, Boston, MA (“Complainant”) represented by Michelle Brownlee. Respondent is Oscar Haynes, Washington, DC (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <duracellprocell.com> registered with Go Daddy Software.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 28, 2003; the Forum received a hard copy of the Complaint on May 1, 2003.

On April 29, 2003, Go Daddy Software confirmed by e-mail to the Forum that the domain name <duracellprocell.com> is registered with Go Daddy Software and that the Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 May 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2003 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@duracellprocell.com by e-mail.

A timely Response was received and determined to be complete on May 21, 2003.

On May 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.        Complainant makes the following assertions:

1. Respondent’s domain name <duracellprocell.com> is confusingly similar to Complainant’s DURACELL and PROCELL marks.

2. Respondent does not have any rights or legitimate interests in the domain name.

3.  Respondent registered and used the domain name in bad faith.

B.         Respondent

Respondent does not dispute that Complainant has rights in the DURACELL and the PROCELL marks.  While the words Duracell and Procell are trademarks owned by the Gillette Corporation, the word “duracellprocell” is not.  However, Respondent contends there is no confusing similarity between Respondent’s <duracellprocell.com> domain name and Complainant’s marks because Respondent has included a disclaimer on its website that renounces any affiliation with Complainant. 

Respondent contends that it never attempted to sell the disputed domain name registration to Complainant. Respondent asserts that Complainant initiated contact with Respondent and Respondent was simply willing to listen to an offer.

There is a disclaimer stating that fact on Respondent’s domain home page, and Respondent’s business name is in letters as prominent as Complainant’s, and Respondent’s name is positioned at the top of the page.  There is very limited use of Complainant’s logo on Respondent’s website.  The logo only appears on the product itself, in a picture of the product. 

Respondent has had a bona fide offering of goods and services directly related to Duracell Procell batteries on Respondent’s website since it’s purchase.  The name of Respondent’s business is “CapTech”, not Respondents’ domain name.  Licensed and authorized Duracell distributors sell Duracell Procell batteries to Respondent for resale by Respondent with full knowledge of Respondent’s intent to resell. 

FINDINGS

1. Complainant owns U.S. Registration Nos. 838,685 and 793,273 for DURACELL and 1,620,895 for PROCELL for various battery products.  Gillette has been using the DURACELL mark since at least as early as May, 1964, and has been using the PROCELL mark since at least as early as March, 1987. 

2. Gillette, or its affiliated company, N.V. Duracell Batteries, S.A., also owns registrations for the DURACELL and PROCELL trademarks in numerous other jurisdictions, including the European Community, Canada, Hong Kong, Mexico and Australia. 

3. Complainant sells batteries that are branded DURACELL PROCELL. 

 

4. Respondent registered the domain name on June 28, 2001.  Respondent’s web site with the word DURACELL printed in large letters has the words "Industrial Batteries" printed in small letters right under DURACELL.  The web site offers DURACELL PROCELL batteries made by Complainant for sale.

5. Respondent's website also has links to websites of other battery manufacturers, such as Energizer and Sanyo. 

6. Respondent is not a licensee or authorized distributor of Complainant's products.

7. Upon discovery of the web site, Complainant's counsel wrote Respondent a letter on March 26, 2003, stating that Respondent's use of the domain name was a violation of the ICANN Policy. 

8. On April 18, 2003, Respondent responded by email, arguing that he was not using Duracell or Procell as a domain name, but rather duracellprocell, a word that Complainant does not use as a trademark or domain name.  He also asked Complainant to make an offer to buy the domain name.  He stated:  "I do not intend to give the word I made up to you, but as I said earlier, I am willing to sell it to you or to any other entity that may wish to purchase it.  Thank you for enlightening me to the prospect of the sale of my domain name." 

9. On April 18, 2003, Complainant's counsel responded in an email message, offering to pay Respondent $100 to transfer the domain name within the next seven days.  Complainant's counsel has received no response to the April 18 email message.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(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 produced evidence of trademark registrations with the United States Patent and Trademark Office (USPTO) for the PROCELL mark (Reg. No. 1,620,895 registered on November 6, 1990) and the DURACELL mark (Reg. No. 793,273 registered on July 27, 1965) related to various battery products.  Complainant has established its rights in the marks through registration with the USPTO and continuous use in commerce. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <duracellprocell.com> domain name is confusingly similar to Complainant’s marks because the disputed domain name appropriates both of Complainant’s marks in their entirety and simply adds the generic top-level domain (gTLD) to the end of the marks.  The domain name’s combination of Complainant’s marks does not sufficiently differentiate the domain name from the marks for the purposes of Policy ¶ 4(a)(i). See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Thus, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent’s use of the <duracellprocell.com> domain name does not represent a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent is using the disputed domain name to sell Complainant’s goods despite the fact that Respondent is not affiliated with or authorized by Complainant. See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

An unauthorized distributor's use of a trademark in a domain name to sell products branded under that trademark is not a legitimate interest.  See Tacitica International, Inc. v. YouCanSave.com, Inc., D2002-0018 (WIPO April 12, 2002) ("the use of the Domain Name and the web site create confusion as to whether or not Respondent is authorized or licensed by the Complainant."); see also Cunard Line Ltd. v. Champion Travel, Inc., FA92053 (March 8, 2000) (finding no legitimate interest to cunardcruise.com where respondent intended to use for a web site selling cruises provided by Complainant).

Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which is evidence of bad faith registration and use with regard to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 4, 2003

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