Colgate-Palmolive Company v. Akiyoshi Karato
Claim Number: FA0207000117033
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.
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 (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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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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