The Procter & Gamble Company v. Stephen McGuckin
Claim Number: FA0202000104946
Complainant is The Procter & Gamble Company, Cincinnati, OH (“Complainant”) represented by Carla C. Calcagno, of Howrey, Simon, Arnold & White, LLP. Respondent is Stephen McGuckin, Cookstown (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <procter-gamble.com>, registered with Register.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.
John J. Upchurch 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 22, 2002, Register.com confirmed by e-mail to the Forum that the domain name <procter-gamble.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 14, 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 email@example.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 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent’s <procter-gamble.com> domain name is confusingly similar to Complainant’s PROCTOR & GAMBLE mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
No Response was received.
Since 1890, Complainant has continuously used the trade name PROCTER & GAMBLE in connection with the development, manufacturing and sale of consumer products.
Complainant owns several registrations for PROCTER & GAMBLE, including a Canadian registration on April 29, 1948 (Reg. No. UCA30196), a French registration on May 10, 1955 (Reg. No. 1,577,035), and a registration for the mark in the United Kingdom on February 2, 1999 (Reg. No. 300,137); among others.
Complainant markets over 250 products to more than five billion consumers in 130 countries. In 2000, Complainant generated a net total of over $40 billion in sales. Complainant has spent a substantial amount of money marketing its PROCTER & GAMBLE mark.
Complainant has created a formidable presence on the Internet through its <pg.com>, <proctergamble.com>, and <procter-gamble.org> domain names.
Respondent registered the disputed domain name on March 14, 2000. On May 25, 2000, Complainant sent Respondent a cease and desist letter informing Respondent that its domain name infringed on Complainant’s mark. On June 2, 2000 Respondent refused to transfer the domain name to Complainant but said that it may be willing to sell it.
On June 8, 2000 Complainant refused to purchase the disputed domain name, and Respondent replied several days later that it would create a website with adult-content material and an on-line gambling forum. Complainant reiterated its decision not to buy the disputed domain name.
On September 23, 2001, Respondent sent Complainant an email stating “One more month and I’m up and going; my name; my site; you had your chance.” One month later Respondent’s domain name merely contained an on-line advertisement for Respondent’s registrar.
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 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; and
(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
Complainant has established legal rights to the PROCTER & GAMBLE mark due to its many registrations of the mark.
Respondent’s <procter-gamble.com> domain name is confusingly similar to Complainant’s PROCTOR & GAMBLE mark because it includes Complainant’s mark in its entirety, merely substituting a hyphen for the “&” and adding the generic top-level domain name “.com.” See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); 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); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
There is no evidence that Respondent, known as Stephen McGuckin, is commonly known by the disputed domain name or PROCTER & GAMBLE pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also 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).
Respondent’s attempt to sell the disputed domain name to the Complainant, followed by its subsequent lack of use other than to display a link to its registrar indicates Respondent registered the disputed domain name for the primary purpose of selling it, which is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i). 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).
Respondent’s inability to develop the website, to sell products or offer services, indicates that it does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is presumed to have had knowledge of Complainant’s distinctive and famous PROCTER &GAMBLE mark when it registered the disputed domain name. As a result, its registration and use of the disputed domain name were in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent’s failure to link the disputed domain name to any active site indicates it is using the disputed domain name in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <procter-gamble.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 25, 2002