Ecolab, Inc. v. Hank
Claim Number: FA0801001140961
Complainant is Ecolab, Inc. (“Complainant”), represented by William
Schultz of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ecowash.com>, registered with Onlinenic, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 29, 2008; the National Arbitration Forum received a hard copy of the Complaint January 30, 2008.
On January 30, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <ecowash.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, Inc. registration agreement and thereby has 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 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2008, 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@ecowash.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <ecowash.com> domain name is confusingly similar to Complainant’s 1-877-ECOWASH mark.
2. Respondent has no rights to or legitimate interests in the <ecowash.com> domain name.
3. Respondent registered and used the <ecowash.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ecolab, Inc., produces and markets a line of cleaning, sanitizing, pest elimination, maintenance and repair products and services for international hospitality, institutional and industrial businesses. As part of its business, Complainant has marketed information services featuring cleaning products and equipment for carwash facilities under its 1-877-ECOWASH mark. Complainant has continuously marketed these services under its 1-877-ECOWASH mark since at least May 18, 1998. Complainant has spent significant resources marketing its 1-877-ECOWASH mark and thus has developed substantial goodwill and customer loyalty in the 1-877-ECOWASH mark. Complainant registered its 1-877-ECOWASH mark with the United States Patent and Trademark Office on September 27, 2005 (Reg. No. 3,001,035).
Respondent registered the <ecowash.com> domain name November 19, 2000. Respondent’s disputed domain name resolves to a website, which contains links to products and services, including carwash products and services which directly compete with Complainant.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Under Policy ¶ 4(a)(i), Complainant
is not required to have a trademark registration in order to establish rights
in its mark. Since Complainant
registered its 1-877-ECOWASH with the USPTO after Respondent registered the
disputed domain name, the Panel finds Complainant may still prevail if it is able
to establish common law rights in its 1-877-ECOWASH mark that predate
Respondent’s registration of the disputed domain name. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist);
see also
Complainant has established that it continuously used its 1-877-ECOWASH mark to market its information service featuring cleaning products and equipment for carwash facilities since May 18, 1998. Complainant has further set out that it invested significant resources in order to market its 1-877-ECOWASH mark and that as a result Complainant has built substantial customer loyalty in its mark. Therefore, the Panel finds that Complainant has established common law rights in its 1-877-ECOWASH mark dating back to at least May 18, 1998. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights to or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these allegations,
the burden shifts to Respondent to establish that it does have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds that Complainant made a sufficient prima
facie showing to support its allegations.
Respondent failed to submit a response to these proceedings. Therefore, the Panel may assume Respondent
does not have rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). However, the Panel inspects the record to
determine whether the proof suggests Respondent has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Respondent’s <ecowash.com> domain name resolves to a website that displays links to goods and services, some of which seek to compete directly with Complainant’s business. Respondent presumably receives click-through fees for displaying these links. The Panel finds this diversionary use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Also, the WHOIS information
indicates Respondent’s name is “Hank.”
The record indicates Complainant has never authorized Respondent to use
its 1-877-ECOWASH mark. Therefore, the
Panel finds that Respondent is not commonly known by the <ecowash.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
The
Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that
displays links to carwash products and services, some of which seek to compete directly
with Complainant’s business. The Panel
finds that Respondent’s use constitutes disruption and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller,
D2000-0297 (WIPO
Respondent presumably receives click-through fees for
displaying links to Complainant’s competitors on the website resolving from the
confusingly similar <ecowash.com>
domain name. Thus, the Panel finds that Respondent
is attempting to profit from the goodwill and customer loyalty associated with
Complainant’s mark, which is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iv).
See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also
Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
The Panel finds that Complainant 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 <ecowash.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 21, 2008.
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