Colgate-Palmolive Company v. Akiyoshi
Karato
Claim Number: FA0207000117033
PARTIES
Complainant
is Colgate-Palmolive Co., New York,
NY, USA (“Complainant”). Respondent is
Akiyoshi Karato, Takamatus, Kagawa, JAPAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mennen.com>,
registered with Gandi.
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 July 25, 2002; the Forum received a hard copy of the
Complaint on July 25, 2002.
On
July 29, 2002, Gandi confirmed by e-mail to the Forum that the domain name <mennen.com> is registered with Gandi
and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound
by the Gandi 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
July 31, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 20,
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@mennen.com by e-mail.
Having
received no formal 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
September 10, 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
formal Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
1. The domain name registered by Respondent,
<mennen.com>, is identical to Complainant’s registered MENNEN
mark.
2. Respondent does not have any rights or
legitimate interests in the <mennen.com> domain name.
3. Respondent registered and uses the <mennen.com>
domain name in bad faith.
B. Respondent failed to submit a formal
Response in this proceeding.
FINDINGS
Complainant, Colgate-Palmolive Company,
acquired the MENNEN mark from the Mennen Company in 1992. The MENNEN mark had
established worldwide recognition prior to Complainant’s acquisition. The
Mennen Company was founded in 1878, and transferred its rights in the MENNEN
mark to Complainant upon negotiation of a business arrangement.
Complainant is the owner of more than 160
trademark registrations and applications for the MENNEN mark, standing alone,
and as many as 370 trademark registrations and applications for the MENNEN mark
as part of a design or composite mark. More specifically, Complainant holds the
following registration numbers: Argentina Reg. No. 1,425,546; Ecuador Reg. No.
1691-96; Panama Reg. No. 7,278; and, U.S. Patent and Trademark Office Reg. No.
584,053.
Complainant’s MENNEN mark is used to
identify a well-known line of personal care products, namely: antiperspirants
and deodorants; shampoos, hair conditioners and baby body wash and soap, among
others. From the time of acquisition of the mark, Complainant and its licensed
affiliates have generated extensive revenues and expenditures from the sale of
MENNEN products. Complainant has accumulated in excess of $2 billion in sales.
In the past five years, Complainant has expended resources in advertising that
approach the $355 million mark.
Respondent registered the <mennen.com>
domain name May 25, 2001. Respondent has not articulated a purpose for the
website apart from the present use, which advertises the domain name
registration for sale. Respondent’s attached website also provides a link that,
when accessed, relays information regarding Respondent’s asking price for the domain
name registration.
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 formal 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 shall
draw such inferences as 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 rights in the
MENNEN mark through acquisition of the Mennen Company in 1992, which held
previous rights in the mark. Complainant has also successfully sought
registration of the mark in numerous countries and has expended significant
resources in developing the goodwill associated with the MENNEN mark.
The domain name registered by Respondent,
<mennen.com>, is identical to Complainant’s MENNEN mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety,
failing to deviate in spelling or form. Because generic top-level domains, such
as “.com,” are required of domain name registrants, they are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1146 (9th
Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . .
assume, as a rule of thumb, that the domain name of a particular company will
be the company name [or trademark] followed by ‘.com’”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
By failing to submit a formal Response,
Respondent did not contest Complainant’s assertions. Because Complainant’s
contentions are unopposed, all reasonable inferences will be resolved in favor
of Complainant. See Vertical
Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true).
Furthermore, by not submitting a formal
Response, Respondent failed to present any set of circumstances that would
demonstrate it has rights or legitimate interests in the subject domain name.
Following Complainant’s prima facie case, Respondent has an obligation
to contest Complainant’s averments, or establish rights independent of
Complainant’s allegations. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests in respect of the domain, the burden shifts to Respondent
to provide credible evidence that substantiates its claim of rights and
legitimate interests in the domain name).
Complainant has provided the Panel with
unrefuted evidence that Respondent registered <mennen.com> with
the intention to sell its rights in the domain name to Complainant, or another
interested party. Respondent has made no use of the domain name other than to
advertise its sale. Respondent’s lack of use, taken in conjunction with its
failure to respond, implies that Respondent lacks rights or legitimate
interests in the subject domain name. Respondent’s use of the domain name is
not in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use).
No evidence before this Panel suggests
that Respondent is commonly known by the <mennen.com> domain name
or the “MENNEN” second-level domain. Respondent is not a licensee of
Complainant and he is not otherwise authorized to use Complainant’s mark. The
fame associated with Complainant’s mark, and the fact that it was established
more than a century ago creates a presumption that Respondent cannot establish
rights or legitimate interests in the domain name under 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 Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Circumstances indicate that Respondent
registered the domain name primarily for the purpose of selling or transferring
its rights in <mennen.com> to Complainant. Respondent advertises
his intentions on the website attached to the subject domain name, which
states, inter alia, “This domain name is for sale <US$ 850>.”
Respondent’s attempt to opportunistically benefit from the registration of an
infringing domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(i). Respondent’s lack of interest in the domain name, outside of
profiting from selling its rights, is evidenced by the fact that Respondent has
not developed the website over the past year. See Pocatello Idaho Auditorium
Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner"); see
also Universal City Studios, Inc. v.
Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where
Respondent made no use of the domain names except to offer them to sale to
Complainant); see also Educ.
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).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <mennen.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 24, 2002.
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