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Generic Top Level Domain Name (gTLD) Decisions |
Ecolab, Inc. v. ITage
Claim
Number: FA0410000358036
Complainant is Ecolab, Inc. (“Complainant”), represented
by Gregory Golla, of Merchant & Gould P.C.,
3200 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402-2215. Respondent is ITage (“Respondent”), Dolgoji Yesul 21 Gil 15, Songbuk-gu, Seoul
136-152, SOUTH KOREA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ecolab.net>, registered with Tucows
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
The
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
29, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 1, 2004.
On
November 1, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <ecolab.net> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc. has
verified that Respondent
is bound by the Tucows 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
November 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 29, 2004 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@ecolab.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 7, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed The
Honorable Paul A. Dorf (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <ecolab.net>
domain name is identical to Complainant’s ECOLAB mark.
2. Respondent does not have any rights or
legitimate interests in the <ecolab.net> domain name.
3. Respondent registered and used the <ecolab.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
leading global developer and marketer of premium cleaning, sanitizing, pest
elimination, maintenance and repair products
and services for the international
hospitality, institutional and industrial markets. Complainant has been using the ECOLAB mark in connection with its
business since 1986.
Complainant has
registered several trademarks for its ECOLAB mark with the United States Patent
and Trademark Office (“USPTO”), including
Reg. Nos. 1,539,982 (issued May 23,
1989), 1,538,857 (issued May 16, 1989) and 1,538,548 (issued May 9, 1989). Many of Complainant’s trademark
registrations for its ECOLAB mark have achieved incontestable status.
Complainant’s
ECOLAB mark is famous throughout the world.
Complainant operates directly in nearly 70 countries and reaches
customers in more than 100 other countries though distributors, licensees
and
export operations. Additionally,
Complainant has invested substantial time, money and effort in creating,
marketing and maintaining its website located
at the <ecolab.com> domain
name.
Respondent
registered the <ecolab.net> domain name on April 10, 2002. Respondent’s domain name resolves to a website
stating that the domain name registration is for sale.
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 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.
Complainant
established that it has rights to and legitimate interests in the ECOLAB mark
through registration with the USPTO. See Men’s Wearhouse, Inc. v.
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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.
Respondent has the burden of
refuting this assumption).
The domain name
that Respondent registered, <ecolab.net>, is identical to
Complainant’s ECOLAB mark because the domain name incorporates Complainant’s
mark in its entirety and only deviates
with the addition of the generic
top-level domain “.net.” The mere addition of a generic top-level domain does
not negate the fact
that the domain name is identical Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See 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); see
also Little Six, Inc. v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to Complainant’s famous NIKE
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding
that the failure to respond to a complaint allows a panel to make reasonable
inferences
in favor of a complainant and accept the complainant’s allegations
as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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 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).
Respondent is
using the <ecolab.net> domain name to divert Internet traffic to a
website that offers the domain name registration for sale. Respondent’s use of
a domain
name confusingly similar to Complainant’s ECOLAB mark to redirect
Internet users to Respondent’s website that offers the domain name
registration
for sale is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). 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); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA
95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate
interests where Respondent registered the domain name
with the intention of
selling its rights)
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ecolab.net> domain name directs Internet users to a
website indicating that the domain name registration is for sale. The Panel
concludes that
Respondent’s general offer of the disputed domain name
registration for sale establishes that the domain name was registered and
used
in bad faith under Policy ¶ 4(b)(i). See Bank of
Am. Corp. v. Northwest Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also
Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where
Respondent offered the domain names for sale); see also World Wrestling Fed’n Entmt., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the
domain name in bad faith because he offered to sell the domain name
for
valuable consideration in excess of any out-of-pocket costs).
Respondent’s
registration of a domain name, incorporating Complainant’s well-known
registered mark in its entirety, deviating only
with the addition of a generic
third-level domain, suggests that Respondent knew of Complainant’s rights in
the ECOLAB mark. Thus,
the Panel finds that Respondent likely chose the <ecolab.net>
domain name based on the distinctive and well-known qualities of Complainant’s
mark. Additionally, the fact that
Respondent offered to sell the domain name registration is further evidence of
Respondent’s actual or
constructive knowledge of Complainant’s rights in the
ECOLAB mark. 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with
Complainant and its products that the
use of the domain names by Respondent,
who has no connection with Complainant, suggests opportunistic bad faith); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic bad
faith’”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ecolab.net> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
December 17, 2004
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