GOJO Industries, Inc. v. Terri Cruise / GOJO Industries - Europe, Ltd
Claim Number: FA2006001899353
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Terri Cruise / GOJO Industries - Europe, Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purellsanitisers.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2020; the Forum received payment on June 8, 2020.
On June 9, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <purellsanitisers.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@purellsanitisers.com. Also on June 10, 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 July 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, GOJO Industries, is a manufacturer of hand-hygiene and skin-care products.
Complainant has rights in the PURELL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <purellsanitisers.com> domain name is confusingly similar to Complainant’s PURELL mark, as the domain name incorporates the mark in its entirety and simply adds the descriptive term “sanitisers” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <purellsanitisers.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use the PURELL mark in any manner. 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. Rather, Respondent attempted to pass itself off as Complainant and sell counterfeit versions of Complainant’s products. Currently, the disputed domain name resolves to an inactive page.
Respondent registered and is using the <purellsanitisers.com> domain name in bad faith. Respondent attempted to pass itself off as Complainant and sell counterfeit versions of Complainant’s products. Currently, the at-issue domain name resolves to an inactive webpage. Respondent engaged in opportunistic bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the PURELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in PURELL.
Respondent is not affiliated with Complainant and is not authorized to use the PURELL mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in PURELL.
Respondent has used the confusingly similar at-issue domain name to address a website that misappropriated Complainant’s trademark so as to pass itself off as being sponsored by, or associated with Complainant, to facilitate Respondent’s sale of counterfeit PURELL products. Respondent currently holds the at-issue domain name passively.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the PURELL mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Further, Respondent’s <purellsanitisers.com> domain name incorporates Complainant’s PURELL trademark followed by the descriptive term “sanitisers” with all followed by the generic top-level domain name “.com”. The differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i). In fact, the use of the term “sanitisers,” which is suggestive of Complainant’s PURELL products, only adds to the confusion between the domain name and Complainant’s embedded trademark. Therefore, the Panel concludes that Respondent’s <purellsanitisers.com> domain name is confusingly similar to Complainant’s PURELL trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Terrie Cruise – GOJO Industries – Europe, Ltd.” however the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <purellsanitisers.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <purellsanitisers.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Next, Respondent used the <purellsanitisers.com> domain name to pass itself off as Complainant so that it might offer counterfeit products for sale. In particular, Complainant shows that the at-issue domain name addressed a website that displayed Complainant’s trademark while offering fake PURELL products for sale. Respondent’s use of the domain name in this manner falsely implies that there is a relationship between Complainant and Respondent, where there is none. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Likewise, Respondent’s passive holding of the <purellsanitisers.com> domain name cuts against Respondent’s demonstrating rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
Respondent’s <purellsanitisers.com> domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s sale of counterfeit products on a website addressed by the <purellsanitisers.com> domain name amounts to an attempt to confuse, and thereby attract Internet users so that it might inappropriately compete with Complainant. Respondent’s use of the at-issue domain name to pass itself off as Complainant and sell counterfeit goods is disruptive of Complainant’s business and shows Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Next, Respondent currently fails to make an active use of the <purellsanitisers.com> domain name. Browsing to the domain name returns an error page indicating “[t]his site can’t be reached”. Respondent’s passive use of the at-issue domain name evidences Respondent’s bad faith registration and use of the <purellsanitisers.com> domain name per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also, The Toronto-Dominion Bank v. Yi Liu, FA1904001838897 (Forum May 15, 2019) (finding bad faith where respondent’s domain name addressed a blank page).
Furthermore, Respondent registered <purellsanitisers.com> knowing that Complainant had trademark rights in the PURELL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s trademark on a website once addressed by the <purellsanitisers.com> domain name, and from Respondent’s purported sale of counterfeit PURELL products on such website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <purellsanitisers.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent engages in opportunistic bad faith. In registering and using the at-issue domain name Respondent took advantage of the fact that the COVID-19 pandemic created a spike in demand for Complainant’s PURELL products. Respondent used the opportunity to pass itself off as Complainant and offer counterfeit versions of Complainant’s much in demand products to consumers. This timely misappropriation of Complainant trademark by Respondent further suggests Respondent bad faith under Policy ¶ 4(a)(iii). See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (“The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purellsanitisers.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 5, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page