DECISION
The Procter
& Gamble Company v. Proctor Clinic
Claim Number:
FA0202000104945
PARTIES
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.
PANEL
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.
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 <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
postmaster@proctorandgamble.com and postmaster@proctorgamble.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.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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).
DECISION
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page