The
Procter & Gamble Company v. Wingspan, Inc.
Claim
Number: FA0202000104944
PARTIES
Complainant is The Procter & Gamble Company,
Cincinnatti, OH (“Complainant”) represented by Carla C. Calcagno, of Howrey
Simon Arnold & White, LLP.
Respondent is Wingspan, Inc.,
Chester, NJ (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <eprocterandgamble.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and that to the best
of her knowledge she has no known conflict in serving as Panelist in this
proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
19, 2002; the Forum received a hard copy of the Complaint on February 20, 2002.
On February 21, 2002, Network
Solutions, Inc. confirmed by e-mail to the Forum that the domain name <eprocterandgamble.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 February 21, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 13, 2002 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@eprocterandgamble.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On March 22, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
makes the following allegations in this proceeding:
1. The disputed domain
name <eprocterandgamble.com> is identical or confusingly similar to
Complainant’s famous PROCTER & GAMBLE mark.
2. The disputed domain name is not the name of Respondent, nor can it can
be considered Respondent’s business or common tradename. Further, Complainant visited the website
connected with the disputed domain name and the website consisted simply of an
offer to sell the disputed domain name.
Such use is not a bona fide offering of goods or services and it is not
a legitimate noncommercial or fair use of <procterandgamble.com>.
3. Respondent is
attempting to sell the disputed domain name, which is considered an act of bad
faith under Policy ¶ 4(b)(i).
Respondent has a history of registering other parties’ famous marks
using the prefix “e.” Such actions are
evidence of bad faith outlined in Policy ¶ 4(b)(ii). Finally, Respondent has not answered Complainant’s cease and
desist requests and therefore, Respondent’s failure to respond to Complainant’s
request provides strong support for a determination of bad faith registration
and use.
B. Respondent
did not file a Response in this proceeding.
FINDINGS
Since
1890, Complainant has used its PROCTER & GAMBLE mark in connection with the
development, manufacturing and sale of consumer products. Complainant owns all rights in the PROCTER
& GAMBLE mark and has obtained trademark registrations in several countries
worldwide. The PROCTER & GAMBLE
mark is unique and distinctive and has no meaning outside its use as a
trademark identifying Complainant as a source of goods and services. Complainant sells more than 250 products to
more than five billion consumers in 130 countries. In the year 2000, Complainant and its subsidiaries generated
total net sales of over $40 billion dollars.
Respondent
registered the disputed domain name on February 16, 1999. On its domain name registration, Respondent
lists that the disputed domain name is “FOR SALE.” On November 29, 2001, Complainant visited the website connected
with the disputed domain name and found an offer to sell the domain name. Respondent has a history of registering
domain names that incorporate famous marks with the “e” prefix. Examples include: <eaarp.com>,
<egeneralelectric.com>, <emcdonalds.com>, <estarbucks.com>,
<etimewarner.com>, <emotorola.com>, <esharperimage.com>,
<ewinstonsalem.com>, <edeltaairlines.com>,
<ebarnesandnoble.com>, <edowchemical.com>,
<enewyorktimes.com>, <ekmart.com>, <ewalgreens.com>,
<eunitedairlines.com>, <edupont.com>, and <etowerrecords.com>.
On
May 25, 2000, Complainant sent Respondent a cease and desist letter but
Respondent. has not answered
Complainant’s request.
DISCUSSION
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 the 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
has established its rights to PROCTER & GAMBLE by registering the mark with
various countries worldwide.
Complainant has also established its rights to PROCTER & GAMBLE by
using the mark in commerce for more than 100 years and by establishing the mark
as one of the most famous marks in the world of business.
The
disputed domain name <eprocterandgamble.com>
is confusingly similar and nearly identical to Complainant’s famous mark. First, the ampersand symbol (&) cannot
be reproduced in a domain, therefore, the Panel holds that Respondent’s use of
“and” rather than “&” does not diminish the confusing similarity between
the disputed domain name and Complainant’s mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that
the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT
& LATO mark, because the ampersand symbol (&) is not reproducible in a
URL).
Second,
Respondent incorporates Complainant’s famous mark in its entirety and simply
uses the letter “e” as a prefix. When
the letter “e” is used as a prefix, the word becomes associated with
“e-business” in Internet parlance.
Thus, the use of “e” as a prefix does not diminish the confusing
similarity between the mark and the disputed name. See Canadian Tire
Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that
the domain names <ecanadiantire.com> and <e-canadiantire.com> are
confusingly similar to Canadian Tire’s trademarks); see also Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) (finding that the domain name
<efitnesswholesale.com> is confusingly similar to Complainant’s mark,
FITNESS WHOLESALE); see also Int’l
Data Group, Inc. v. Maruyama & Co.,
D2000-0420 (WIPO June 26, 2000) (finding that the domain name
<ecomputerland.com> is confusingly similar to Complainant’s mark,
COMPUTERLAND); see also EBAY,
Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (WIPO Dec. 15, 2000)
(finding that Respondent’s domain name <eebay.com> is confusingly similar
to the Complainant’s registered EBAY trademark).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has not filed a Response in this matter.
Therefore, the Panel may presume
that Respondent has no rights or legitimate interests in <eprocterandgamble.com>. 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).
Respondent
has registered a confusingly similar domain name and, based on the evidence
presented, Respondent’s only use of the disputed domain name permits the
finding that it intended from the outset to sell the disputed domain name. Respondent’s actions cannot be considered a
bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).
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).
Respondent
has not been and is not currently known as <eprocterandgamble.com>. Furthermore, it would be difficult to find
another entity in the world that could legitimately be referred to as PROCTER
& GAMBLE other than Complainant. Therefore, Respondent has failed to satisfy
Policy ¶ 4(c)(ii). See 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); see also Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark).
Respondent
has listed on its registration form that the disputed domain name is “FOR
SALE.” Further, Respondent has posted a
notice on the website connected with the disputed domain name that the domain
name is for sale. Finally, the disputed
domain name is confusingly similar to Complainant’s famous PROCTER & GAMBLE
mark. Therefore, the Panel can make an
inference that Respondent has been using the disputed domain name with the
intent to sell it to Complainant. This is
not a noncommercial or fair use of <eprocterandgamble.com> pursuant to Policy ¶ 4(c)(iii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6,
2000) (finding that rights or legitimate interests do not exist when one holds
a domain name primarily for the purpose of marketing it to the owner of a
corresponding trademark).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
listed the disputed domain name for sale both on its website and on its domain
registration form. These actions by
Respondent are evidence of bad faith registration as outlined in Policy ¶
4(b)(i). See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16,
2000) (finding that a general offer of sale combined with no legitimate use of
the domain name constitutes registration and use in bad faith); see also Parfums Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WhoIs
registration information contained words showing the domain name was for
sale.).
Respondent
has registered other domain names using the prefix “e” and incorporating the
famous trademarks of other companies.
Such a pattern of conduct is evidence of bad faith as outlined in Policy
¶ 4(b)(ii). See Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a
pattern of conduct where the Respondent registered numerous domain names with
the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>,
<saab2000.net>, etc.); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names that infringe upon others’ famous and
registered trademarks); see also General Elec. Co. v. Forddirect.com, Inc.,
D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a
pattern of conduct, by registering over fifty domain names such as
<amazondirect.com> and <lycosdirect.com> and intended to prevent
holders from using their marks in corresponding domain names); see also
Encyclopaedia Britannica Inc. v.
Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the
Respondent engaged in the practice of registering domain names containing the
trademarks of others).
It
is well recognized that the examples outlined in paragraph four are not
exclusive and thus, the Panel may look outside of these factors. See
Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that
the criteria specified in 4(b) of the Policy is not an exhaustive list of bad
faith evidence); see also CBS
Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(“[T]he Policy expressly recognizes that other circumstances can be evidence
that a domain name was registered and is being used in bad faith”). Therefore, the Panel can consider
Respondent’s lack of an answer to Complainant’s cease and desist request almost
two years ago, as a strong indication that Respondent has registered and used <eprocterandgamble.com> in bad faith. See Cellular
Group v. Wingspan, Inc., D2000-1290 (WIPO Dec. 9, 2000) (finding Respondent
ignored Complainant’s request to transfer ownership of the disputed domain name
and that, therefore, there is an inference of bad faith registration and use); see also Encyclopaedia Britannica, Inc. v. Zuccarini & Cupcake Patrol,
D2000-0330 (WIPO June 7, 2000) (finding that Respondent’s failure “to respond
to Complainant’s efforts to make contact provide strong support for a
determination of ‘bad faith’
registration and use”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief be hereby granted.
Accordingly,
it is Ordered that the domain name <eprocterandgamble.com>
be transferred from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated:
March 28, 2002.
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