The Gillette Company, a wholly owned subsidiary of Procter & Gamble v. Domain Admin
Claim Number: FA0811001233256
Complainant is The Gillette Company, a wholly owned subsidiary of
Procter & Gamble (“Complainant”),
represented by Adam Newton of The Gillette Company, Ohio, USA. Respondent is Domain Admin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zooth.com>, registered with Network Solutions, 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 November 10, 2008; the National Arbitration Forum received a hard copy of the Complaint November 11, 2008.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 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 to sit 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. The domain name that Respondent registered, <zooth.com>, is identical to Complainant’s ZOOTH mark.
2. Respondent has no rights to or legitimate interests in the <zooth.com> domain name.
3. Respondent registered and used the <zooth.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gillette
Company, a wholly owned subsidiary of Procter & Gamble, registered the
ZOOTH mark (Reg. No. 1,833,357) with the United States Patent and Trademark
Office (“USPTO”) on
Respondent registered the <zooth.com> domain name August 18, 1996. The disputed domain name resolves to a website that features links to third-party websites that are compete with Complainant’s business and are unrelated to Complainant’s mark.
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.
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.
Complainant’s registration of the ZOOTH mark with the USPTO
establishes its rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
domain name incorporates the ZOOTH mark unaltered and in its entirety, adding
only the generic top-level domain (gTLD) “.com.” Since the addition of a gTLD is irrelevant to
analysis under Policy ¶ 4(a)(i), the Panel finds that the <zooth.com> domain name is identical
to Complainant’s ZOOTH mark. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii)
is on Complainant to prove that Respondent does not have any rights or
legitimate interests in the disputed domain name. Once Complainant makes this
prima facie case, the burden shifts
to Respondent to show that it does have rights to or legitimate interest
pursuant Policy ¶ 4(c). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <zooth.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the ZOOTH mark, and the WHOIS information identifies Respondent as “Domain Admin.”
Thus, Respondent has not established rights or legitimate interests in
the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain name, which is
identical to Complainant’s ZOOTH mark, to resolve to a website containing links
to third-party websites some of which are in competition with Complainant’s
business. The Panel finds that
Respondent is diverting Internet users who are seeking Complainant’s website to
Respondent’s own cite. This is not a bona fide goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent is using the <zooth.com>
domain name to resolve to a website that contains links for third-party
websites. Some of these links directly
compete with Complainant’s business. The
Panel finds that Respondent is using the <zooth.com>
domain name to divert Internet users to Complainant’s competitors. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO
The website that resolves from the <zooth.com> domain name displays
advertisements and links to sites completely unrelated to Complainant’s ZOOTH
mark. Since the disputed domain name is identical
to Complainant’s mark, Internet users are likely to become confused as to
Complainant’s affiliation or sponsorship of the resolving website. Respondent is seeking to profit from this
confusion by hosting pay-per-click advertising on the resolving website. The Panel finds this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN 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 <zooth.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 23, 2008.
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