Ecolab Inc. v. Alexander Tabibi
Claim Number: FA0804001181839
Complainant is Ecolab Inc. (“Complainant”), represented by Edward
R. Courtney, Ecolab Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ecolabproducts.com>, <eco-labsafetysupply.com>, and <ecolabsupplies.com> (the “Domain Names”), registered with Godaddy.com, Inc.
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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2008.
On May 1, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Names – <ecolabproducts.com>, <eco-labsafetysupply.com>, and <ecolabsupplies.com> – are registered with Godaddy.com, Inc. and that Respondent is the current registrant. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 May 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 21, 2008. On May 23, 2008, Complainant submitted an Additional Submission that was determined to be timely. On May 27, 2008, Respondent submitted an Additional Submission that was determined to be timely.
On May 29, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
The parties’ contentions are summarized below.
Complainant, Ecolab, Inc., states that it was founded in 1923 and is the leading global developer and marketer of premium cleaning, sanitizing, pest elimination, maintenance and repair products and services for a variety of markets, including but not limited to the agricultural, commercial, food service, healthcare, hospitality, institutional, industrial and vehicle care markets. Ecolab’s annual worldwide sales were more than $5.4 billion in 2007.
Complainant adopted the name Ecolab Inc. in 1986, and has been using its name and the corresponding ECOLAB mark for practically all of the various goods and services it offers since that time. Virtually all of Complainant’s products and services bear the well-known and famous ECOLAB house mark. In addition, Complainant has submitted evidence to show that it registered numerous trademarks for ECOLAB with the United States Patent and Trademark Office (“USPTO”), including Registration Nos. 1,539,982 (issued May 23, 1989), 1,538,857 (issued May 16, 1989) and 1,538,548 (issued May 9, 1989). Complainant asserts that many of its trademark registrations for ECOLAB have achieved incontestable status and that its mark is famous throughout the world. Complainant operates directly in nearly 70 countries and reaches customers in more than 100 other countries though distributors, licensees and export operations. Additionally, Complainant has invested substantial time, money and effort in creating, marketing and maintaining its corporate website located under the <ecolab.com> domain name. Complainant states the ECOLAB mark is distinctive and widely recognized in the commercial, institutional and industrial markets in which Complainant primarily operates. As a result, consumers recognize the mark ECOLAB as a source indicator of Complainant’s products and services.
Complainant contends that the Domain Names <ecolabproducts.com>, <eco-labsafetysupply.com> and <ecolabsupplies.com> are virtually identical and confusingly similar to: (1) Complainant’s ECOLAB mark; (2) the corporate identity of Complainant; and (3) the corporate web address of Complainant at <ecolab.com>. The only difference between the Domain Names and Complainant’s ECOLAB mark is that Respondent has added generic descriptors to the ECOLAB mark. Complainant contends that the inclusion of generic terms or descriptive terms in the Domain Names does not change the fact that the ECOLAB mark, and the Domain Names <ecolabproducts.com>, <eco-labsafetysupply.com> and <ecolabsupplies.com>, convey the same commercial impression to consumers. Thus, consumers are likely to be confused into believing that the websites associated with the Domain Names are sponsored by or affiliated with Complainant. The products and services offered under the ECOLAB mark, and through its own website at <ecolab.com>, are competitive products to those companies identified in the links associated with the website of Respondent. Respondent is using the Domain Names to provide links to competitive companies offering identical products and services as Complainant under its ECOLAB mark. Therefore, Respondent has registered Domain Names that are confusingly similar to Complainant’s registered marks.
Complainant contends that Respondent has no statutory or common law trademark rights in the “Ecolab” or “Eco-Lab” designations. Respondent is not licensed or authorized to register or use domain names that incorporate the ECOLAB mark. Moreover, Respondent has no other legal right or legitimate interest in the term “Ecolab” or “Eco-Lab” or in the disputed Domain Names. Instead, Respondent has appropriated the inherently distinctive ECOLAB mark of Complainant with a clear intent to trade off the reputation and goodwill of the mark.
Complainant urges that Respondent has registered and is using the Domain Names in bad faith and there is no credible evidence to show that they were registered for a legitimate purpose. Rather, the evidence shows that Respondent registered the Domain Names primarily for the purpose of commercial gain. Respondent is using the Domain Names to misdirect consumers to Complainant’s competitors by placing click-through links to companies offering competing products in the cleaning and sanitizing industry. The ultimate goal is to confuse consumers in believing that these links will redirect them to the products and services offered by Complainant. In return, Complainant asserts that Respondent receives revenue for each click or sale made through these links. The use of these types of unethical practices supports the inference that the Domain Names were registered and are being used in bad faith.
Complainant argues that Respondent has shown that it is not making a legitimate, noncommercial use of the Domain Names, but instead intentionally attracts Internet users to the website of Respondent, for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The websites associated with the Domain Names have misappropriated Complainant’s rights to the ECOLAB mark and have created confusion in the marketplace as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Respondent has no legitimate reason for using the “Ecolab” or “Eco-Lab” designation, and his website contains various links to commercial entities that offer the same, or substantially the same, goods and services as Complainant. Respondent offers no goods or services on its websites besides the use of the commercial links. Respondent’s use is not a bona fide use, it is not a fair use, and it is a commercial use that infringes upon the protected rights of Complainant’s well-known ECOLAB mark.
Finally, Complainant contends that Respondent should have been aware of the various trademark registrations associated with Complainant’s ECOLAB mark. Complainant owns numerous federal registrations for the ECOLAB mark, which provides constructive notice to any third-party of Complainant’s rights in the designation. Additionally, the fact that Respondent’s websites includes pass-through links to direct competitors of Complainant is further evidence that Respondent registered the Domain Names with knowledge of Complainant’s prior rights in that ECOLAB mark. Bad faith intent may also be inferred from Respondent’s registration of Domain Names that incorporate Complainant’s trademark in its entirety, deviating only with the addition of a generic descriptor to the ECOLAB mark. The inference suggests that Respondent knew of Complainant’s rights in the ECOLAB mark and knew that cleaning and sanitizing products and services are sold under the ECOLAB mark.
Respondent’s main argument is that it was not responsible for linking its Domain Names to third party sellers of related products, as alleged by Complainant. Respondent asserts that he did not add, nor did he have any knowledge of the third party links, nor did he trade off Complainant’s marks as alleged by Complainant. The Domain Names should therefore remain with Respondent and there has been no bad faith usage.
In this regard, Respondent states that it registered the Domain Names recently (in February 2008) and did not become aware of the third party linking until receiving the Complaint. Upon receiving it, Respondent allegedly called GoDaddy and was told by GoDaddy’s customer service representative that when a Domain Name is “parked” with GoDaddy, GoDaddy adds links on their own initiative without seeking authorization from the Registrant. Respondent states that he neither authorized, nor benefits financially from, GoDaddy’s third party linking. In this regard, Respondent refers to Complainant’s Exhibits nos. 17, 18, and 19, which provide copies of the websites connected to the Domain Names and show in the upper left hand corner the statement that “this page is parked free, courtesy of GoDaddy.com.” Respondent states that GoDaddy’s representative further stated that GoDaddy would not remove the links and the only way to do so would be to: 1) design a web page, 2) switch to non-GoDaddy servers, or 3) change the primary server to all zeros, in which case an error message would show when navigating to the page. Respondent claims he immediately began to design his own page, and that a copy of that page is at <green.org>, to which all three Domain Names now link.
Respondent’s second argument is that any confusion between the Domain Names and Complainant’s trademarks is merely theoretical and therefore they should not be transferred to Complainant on this basis. Respondent asserts it is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent further claims that it has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent further contends that, assuming arguendo it has been making commercial use of the Domain Names, they are still not confusingly similar to Complainant’s marks. Referring to the "sound, sight and meaning" test to determine if there is a likelihood of confusion, Respondent argues that consumer confusion between the Domain Names and Complainant’s ECOLAB marks is unlikely. The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether there are differences in appearance and sound and clear distinctions in connotation and commercial impression of each mark, such that confusion is unlikely. While Complainant indicates that there is a likelihood of confusion because the Domain Names share the term ECOLAB, Respondent disagrees. In evaluating the similarity of the Domain Names, Respondent urges they should be regarded as whole: it is improper under trademark law to find that a portion of a composite mark has no trademark significance and then to make a direct comparison between only that part which remains. Courts have held that marks tend to be perceived by the consumer in their entireties, and all components must be given appropriate weight. Therefore, the test for likelihood of confusion requires consideration of the similarity or dissimilarity of the Domain Names in their entireties as to appearance, sound, connotation and commercial impression. Under this analysis, Respondent’s Domain Names are sufficiently different in appearance, sound, connotation and commercial impression from Complainant’s marks such that consumer confusion is unlikely even if the Domain Names were being used commercially, which they are not.
C. Additional Submissions
Complainant: In its Additional Submission, Complainant contends that Respondent’s argument that there is no likelihood of confusion because Respondent added generic terms to Complainant’s marks is misguided and wrong. The addition of generic terms does not lessen confusion, but may instead increase the likelihood that consumers will be confused. Respondent’s Domain Names are identical to Complainant’s trademarks because the addition of the generic terms “products,” “safetysupply” and “supplies” does not serve to differentiate the marks. Instead, Ecolab’s business under its ECOLAB name and mark involve the manufacture and sale of “products,” “safety supply” products, and “supplies,” thereby heightening the likelihood of confusion. Respondent’s Domain Names thus directly equate to Complainant’s ECOLAB marks. In addition, the ICANN rules do not require a traditional likelihood of confusion test. Rather the test is whether the domain names are either identical or confusingly similar to a complainant’s mark.
Complainant further contends that Respondent did not have legitimate rights to the Domain Names at the time when Complainant filed the Complaint. Instead, Respondent admitted that the Domain Names were parked with GoDaddy.com when the Complaint was filed on April 29, 2008, and were linked to GoDaddy’s parking system with content including links to Complainant’s competitors. Because Respondent admits he had taken no actions with the Domain Names at the time of the filing, Respondent did not have a legitimate use of the Domain Names. Additionally, once he received the Complaint, he forwarded the Domain Names to another website—further evidence of no legitimate rights and evidence of bad faith. Simply using a domain name that forwards to another website invites a higher level of scrutiny. Respondent has no legitimate right to use the Domain Names containing Complainant’s marks to forward to an unrelated website, <green.org>. The website has nothing to do with Ecolab, and Complainant has not authorized or licensed Respondent to use the Domain Names in this manner. Moreover, the diversion of traffic is evidence of bad faith: Complainant’s ECOLAB mark is the predominate characteristic of the Domain Names, and Respondent continues to use Complainant’s goodwill associated with its trademarks to divert traffic from Complainant and generate traffic for his causes. That is evidence of bad faith.
Respondent: Respondent seeks to distinguish several of the decisions referred to by Complainant, emphasizing that in these cases there was a finding of commercial gain to the particular respondent. Throughout Complainant’s cited references, the respondents were using the domain names for commercial gain adverse to the complainant. Unlike the decisions cited by Complainant, however, Respondent in this case claims he has not used the Domain Names to promote a business venture. Complainant has not shown that Respondent has intentionally attempted to attract for commercial gain Internet users to his site by creating a likelihood of confusion with Complainant’s mark. The Complainant has offered absolutely no evidence of commercial gain, other than any gain to GoDaddy, obtained without Respondent’s knowledge. Complainant has also failed to establish that Respondent does not have a legitimate interest or that he registered and used the Domain Names in bad faith. The Domain Names should therefore remain with Respondent.
Complainant, Ecolab, Inc., is a developer and marketer of cleaning, sanitizing, pest elimination, maintenance and repair products and services for a variety of markets, including agricultural, commercial, food service, healthcare, hospitality, institutional, industrial and vehicle care markets. Complainant has used the name Ecolab Inc. and the mark ECOLAB since 1986 to promote its various goods and services. Complainant has registered numerous ECOLAB trademarks with the USPTO, including Registration Nos. 1,539,982 (issued May 23, 1989), 1,538,857 (issued May 16, 1989) and 1,538,548 (issued May 9, 1989).
Respondent registered the Domain Names <ecolabproducts.com> and <ecolabsupplies.com> on February 13, 2008, and <eco-labsafetysupply.com> on February 19, 2008. The Domain Names were acquired through GoDaddy.com, Inc.
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.
The Panel finds that Complainant has registered numerous
ECOLAB trademarks in the
The Panel observes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has asserted that Respondent has no rights or legitimate interests in the Domain Names. Complainant contends that it has not licensed or authorized Respondent to use the ECOLAB marks. The WHOIS information indicates that the registrant is “Alexander Tabibi,” and does not suggest that Respondent or any business connected with him is commonly known by the Domain Names. Importantly, in the face of these allegations, Respondent has not given any reason at all as to why he sought to register the three particular Domain Names at issue in this case, each of which contains Complainant’s ECOLAB mark in its entirety. The Panel therefore finds that Respondent is not commonly known by the disputed Domain Names under Policy ¶ 4(c)(ii).
As discussed above, Complainant also contends that the websites connected to the Domain Names link to sites with products in competition with Complainant’s business. Complainant contends that this use is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under the Policy. The Panelist observes that the former web pages connected to the Domain Names, which were submitted in evidence, confirm that they were connected to landing pages with links to competing sites. In response to this issue, Respondent contends that he did not control the content of these web pages and that, once notified, he “immediately began to design his own page” and a “copy of that page (www.green.org) to which all three Domain Names now link is attached as Exhibit 1.”
The Panelist finds Respondent’s contentions
unconvincing on two grounds. First, although
Respondent argues that he did not control the content posted to the parked
websites that resolved from the Domain Names, Respondent is nonetheless ultimately
responsible for the content of his websites.
See Baylor Univ.
v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007)
(“Respondent has established that it does not receive any of the revenues from
the click-through fees from the links displayed on the websites that resolve
from sites associated with the domain names at issue … [However], Respondent
has allowed the domains to be used to attract, for commercial gain, Internet
users who may be confused as to Complainant’s affiliation with those
sites. To a majority of the Panel, this
is sufficient evidence of Respondent’s bad faith registration and use pursuant
to Policy ¶ 4(b)(iv).”); see also St. Farm Mutual Auto. Insr.
Second, although Respondent claims to have “design[ed] his own page,” the WHOIS information for the domain name <green.org> refers to the registrant as “PetsUnited, LLC.” There is no apparent connection between the Respondent and this registrant. Instead, as contended by the Complainant, Respondent appears to have merely forwarded the Domain Names to an unrelated third-party site. Respondent in its Additional Submission did not contest or deny this view. The Panel thus finds that Respondent’s use of the Domain Names, both at the time the Complaint was filed and thereafter, does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel determines that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant contends that Respondent’s use of the Domain Names to link Internet users to commercial websites in competition with Complainant evidences Respondent’s registration and use in bad faith. Complainant asserts that Respondent was receiving revenue by misdirecting current and potential customers to Complainant’s competitors. Respondent, however, indicated that he was not responsible for the content of the former web pages and did not receive any revenues, which were instead flowing to GoDaddy.com. He has since moved the web pages to which the Domain Names resolve to the site at <green.org>. Respondent thus asserts that he has not acted in bad faith because he has not used the websites for commercial gain and has not commercially benefitted from the Domain Names.
Although Respondent has argued that he did not have control over the links displayed on the parked websites that resolved from the Domain Names and was not receiving click-through fees, the Panel, as discussed above, finds that Respondent was and is responsible for the content displayed on the websites that resolved from the Domain Names. Furthermore, the Domain Names contain Complainant’s distinctive ECOLAB trademark in its entirety along with generic descriptors closely related to Complainant’s business. Respondent has never given any explanation whatsoever as to why he chose the particular three Domain Names in dispute in this case, and what purpose he intended for them that might have been non-infringing and unrelated to Complainant’s business. The choice of the Domain Names, each comprised of Complainant’s ECOLAB trademark and related generic terms which reinforce the commercial context and field of use in which Complainant already uses its marks, suggests that Respondent had actual knowledge of Complainant and its trademarks at the time he registered the Domain Names. Indeed, Complainant contended that Respondent was or should have been aware of Complainant’s ECOLAB trademarks, but in the face of this contention Respondent never denied such knowledge.
In view of all of the circumstances of this case, the Panel concludes that Respondent registered and has used the Domain Names in bad faith under the Policy. The Panel finds that Respondent’s use at the time the Complaint was filed was capable of creating confusion as to Complainant’s source or sponsorship of the websites that resolve from the Domain Names, and therefore is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). The Panel also finds that Respondent’s former use was capable of disrupting Complainant’s business and evidences registration and use in bad faith under Policy ¶ 4(b)(iii). Finally, the Panelist considers that evidence of bad faith includes actual knowledge of a well-established mark at the time of registration. As noted above, the Domain Names in this case are themselves suggestive that Respondent was aware of the Complainant’s ECOLAB trademark when he chose to register them. Respondent has not denied this claim, nor has he given any reason at all for why he chose these particular Domain Names and how he might have sought to use them for a legitimate purpose.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ecolabproducts.com>, <eco-labsafetysupply.com>, and <ecolabsupplies.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: June 16, 2008
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