The Procter & Gamble Company v. Proctor Clinic
Claim Number: FA0202000104945
Complainant is The Procter & Gamble Company, Cincinnati, OH (“Complainant”) represented by Carla C. Calcagno, of Howrey Simon Arnold & White LLP. Respondent is Proctor Clinic, Houston, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <proctorandgamble.com> and <proctorgamble.com>, registered with Network Solutions, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
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 <proctorandgamble.com> and <proctorgamble.com> are registered with Network Solutions, Inc. and that the 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on March 8, 2002.
The Complainant’s additional response was received on March 13, 2002, and was considered timely.
The Respondent’s additional response was received on March 14, 2002, and was considered timely.
On March 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant contends that the domain names at issue are identical or confusingly similar to the mark in whish the Complainant has superior rights; that the Respondent lacks any rights or legitimate interests in the domain names at issue; and that the Respondent acted in bad faith by registering the domain names.
The Respondent contends that the Complainant meets none of the requirements for transfer or cancellation of the domain names at issue; that a registered trade mark or service mark is required for UDRP action; that the Respondent has rights and legitimate interests in the domain names; and that the Complainant’s actions constitute reverse domain name highjacking.
C. Additional Submissions
The additional submissions presented by each party provide rebuttal arguments to each of their contentions as set forth above.
The Complainant is a multi-national company engaged in the development, manufacture and sale of consumer goods throughout the world. Since 1890 the Complainant has continuously used the trade name Procter & Gamble in connection with the manufacture and sale of its products.
The Complainant owns all rights in and to the trade name, and has obtained trademark registrations for the tradename Procter & Gamble in at least 13 countries.
The Complainant’s mark is unique and distinctive and has no meaning outside its use to identify Complainant as a source of goods and services.
The Respondent was searching for domain names which included his proper name.
The Respondent admits to originally purchasing the domain names at issue for amusement value and as a gesture of protest.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The domain names at issue are confusingly similar to a mark which the Complainant has superior rights. The difference between Complainant’s mark and the domain names at issue do not change the confusing similarity between the terms. 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); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <www.pge.com> because the ampersand symbol is not reproducible in a domain name).
The domain names at issue differ in spelling only by the use of an ‘o’ rather than an ‘e’ in PROCTER, and this spelling difference makes the domain name confusingly similar to Complainant’s mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).
Rights or Legitimate Interests
The Respondent fails to provide any evidence that the domain names at issue are being used in connection with a bona fide offering of goods or services. It appears that the Respondent is using the domain names at issue to lure Internet traffic to commercial links. See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
Further, the Respondent is not commonly known by the domain names at issue, and has not used the domain names in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Registration and Use in Bad Faith
The Respondent registered and used the domain names at issue in bad faith as it appears from the evidence presented that the domain names are being used to intentionally attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain) see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services).
Finally, The Respondent should have been aware of the Complainant’ famous mark, and admits to registering the domain names at issue for amusement value and as a gesture of protest. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
As all three elements required by the ICANN Policy Paragraph 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names <proctorandgamble.com> and <proctorgamble.com> be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf, (Ret.) Panelist
Dated: April 8, 2002
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