GOJO Industries, Inc. v. Theresa Chavez
Claim Number: FA2101001928548
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Theresa Chavez (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purellsale.com>, registered with NameSilo, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2021; the Forum received payment on January 15, 2021.
On January 17, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <purellsale.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 January 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2021 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@purellsale.com. Also on January 19, 2021, 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 February 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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(s) be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a long-recognized manufacturer of hand-hygiene and skin-care products. Complainant has rights in the PURELL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,696,754, registered June 23, 1992).
2. Respondent’s <purellsale.com>[i] is identical or confusingly similar to Complainant’s PURELL mark as it merely adds the generic term “sale” and the gTLD extension “.com” to Complainant’s mark.
3. Respondent lacks rights or legitimate interests in the <purellsale.com> domain name. Respondent is not commonly known by the domain name nor has Respondent been authorized by Complainant to use the PURELL mark.
4. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses the domain name to pass off as Complainant and sell Complainant’s products without authorization or counterfeit versions of Complainant’s products.
5. Respondent registered and uses the <purellsale.com> domain name in bad faith. Respondent uses the domain name to pass off as Complainant and sell Complainant’s products without authorization or counterfeit versions of Complainant’s products.
6. Respondent also engaged in opportunistic bad faith.
7. Furthermore, Respondent had actual knowledge of Complainant’s rights to the PURELL mark prior to registering the domain name based on Respondent’s use of Complainant’s mark.
8. Finally, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PURELL mark. Respondent’s domain name is confusingly similar to Complainant’s PURELL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <purellsale.com> domain name and that Respondent registered and uses the domain name 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 has rights in the PURELL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,696,754, registered June 23, 1992). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Complainant has demonstrated rights in the PURELL mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <purellsale.com> is identical or confusingly similar to Complainant’s PURELL mark as it merely adds the generic term “sale” and the gTLD extension “.com.” The addition of a generic term and a gTLD fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel holds that the <purellsale.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <purellsale.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <purellsale.com> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the PURELL mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <purellsale.com> domain name lists the registrants as “Theresa Chavez,” and there is no other evidence in the record to suggest that Respondent is authorized to use the PURELL mark. Therefore, Respondent is not commonly known by the <purellsale.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <purellsale.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to pass off as Complainant and sell Complainant’s products without authorization, or counterfeit versions of Complainant’s products. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). The resolving website for the <purellsale.com> domain prominently displays Complainant’s PURELL trademark and actual PURELL design logo, and apparently offering for sale PURELL branded products. Therefore, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <purellsale.com> domain name in bad faith as Respondent uses the domain name to pass off as Complainant and sell Complainant’s products without authorization or sell counterfeit versions of Complainant’s products. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and 4(b)(iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Complainant has provided evidence that the Respondent’s resolving website prominently displays Complainant’s PURELL trademark and actual PURELL design logo, and appears to offer PURELL branded products for sale. Therefore, the Panel holds that Respondent registered and uses the <purellsale.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Next, Complainant contends Respondent registered and uses the <purellsale.com> domain name in bad faith as Respondent engaged in opportunistic bad faith. Opportunistic bad faith can evidence bad faith registration and use per 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.”). Here, Complainant highlights that Respondent registered the domain name in the midst of the COVID-19 pandemic, a time when Complainant’s PURELL hand sanitizers and related germ-killing products are in extreme demand and have become an essential product in the lives of millions worldwide. See Compl. Annexes NN and OO. Complainant argues that Respondent is attempting to capitalize on the world’s immediate need for Complainant’s PURELL products and consumers’ current vulnerabilities with the domain, and as such, Respondent’s registration of the disputed domain is a clear example of opportunistic bad faith. If the Panel agrees, the Panel may find Respondent registered and uses the <purellsale.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends Respondent registered the <purellsale.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the PURELL mark prior to registering the domain name based on Respondent’s use of Complainant’s mark in the domain name. The use of a mark without authorization in the domain name of a respondent can demonstrate actual knowledge of a complainant’s rights and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The record shows that Respondent uses the full PURELL trademark, a coined word with no meaning other than in connection with Complainant’s PURELL products, in the <purellsale.com> domain name; moreover the domain’s resolving website both prominently features the PURELL trademark, and displays Complainant’s PURELL products for sale. Thus, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the mark and registered the <purellsale.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purellsale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 22, 2021
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