Ecolab USA Inc. v. Domain Administrator
Claim Number: FA2004001892900
Complainant is Ecolab USA Inc. (“Complainant”), represented by Elizabeth M. Stafki, United States. Respondent is Domain Administrator (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <insideecolab.com>, registered with Above.com Pty Ltd.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2020; the Forum received payment on April 20, 2020.
On April 20, 2020, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <insideecolab.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@insideecolab.com. Also on April 22, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Ecolab USA Inc., is the global leader in water, hygiene, and energy technologies and services that protect people and vital resources. Complainant has rights in the trademark ECOLAB based upon its use in commerce since 1986 and its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 1989. The web address Ecolab www.inside.ecolab.com is used by Complainant for an internal company portal site. Respondent’s <insideecolab.com> domain name, registered on January 9, 2013, is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s ECOLAB mark and adds the generic term “inside” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <insideecolab.com> domain name. Respondent is not licensed or authorized to use Complainant’s ECOLAB mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a website containing pay-per-click advertisements.
Respondent registered and uses the <insideecolabl.com> domain name in bad faith. Respondent is attempting to attract Internet users to its website which resolves to pay-per-click advertisements. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ECOLAB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the ECOLAB mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides copies of its USPTO registration certificates for the ECOLAB mark. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <insideecolab.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the ECOLAB mark, only adding the generic term “inside” and the “.com” gTLD to the mark. The addition of a generic word and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s ECOLAB mark per Policy ¶ 4(a)(i)”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <insideecolab.com> domain name because Respondent is not authorized to use Complainant’s ECOLAB mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record for the <insideecolab.com> domain name notes “Domain Administrator” as the registrant and no information in the record suggests that Complainant authorized Respondent to use the ECOLAB mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <insideecolab.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website containing pay-per-click advertisements. Use of a domain name that is confusingly similar to a complainant’s trademark, to resolve to a website containing pay-per-click advertisements, generally does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Here, Complainant has provided screenshots of Respondent’s web page which displays a commercial parking page that includes sponsored links to, among other goods and services, “Job Listings,” “Albertsons Job Application,” “Ecolab Products,” and “Ecolab Cleaning Supplies.” Respondent has provided no Response or made any other submission in this case to explain its actions. The Panel thus agrees with Complainant that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ECOLAB mark when registering the <insideecolab.com> domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be shown to be bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it”). Actual knowledge of a mark can be established by showing the fame and notoriety of the mark. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the fame of the ECOLAB mark, Respondent’s use of the mark in its entirety, and the content of Respondent’s website. Complainant submits into evidence numerous pages from its own website but no other indicia of fame such as advertisements and advertising expenditures, unsolicited news articles, awards, and brand rankings. Nevertheless, it has submitted just enough information for this Panel to conclude that the reputation of its mark is such such that Respondent should have known of it and Respondent has not participated in this case to refute the assertion. Further, the <insideecolab.com> domain name closely tracks Complainant’s own www.inside.ecolab.com URL used for its internal company portal and Respondent’s pay-per-click website contains links to both Complainant and others in its industry. Upon a preponderance of the evidence presented, the Panel finds that Respondent had actual knowledge of Complainant’s ECOLAB mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent has registered and uses the <insideecolab.com> domain name in bad faith. Specifically, Complainant alleges Respondent uses the disputed domain name to misdirect users to a commercial website that hosts advertisements and links to third-party sites. Using a confusingly similar domain name to commercially benefit via pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA 1543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). As previously mentioned, Complainant has provided screenshots of Respondent’s website which features advertisements and links to both Complainant’s own site as well as to third-party websites, many of them in Complainant’s industry. Such links are most often monetized whereby a few pennies in forwarding or affiliate fees are generated each time a user clicks on one of the links. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insideecolab.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 15, 2020
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