national arbitration forum

 

DECISION

 

The Procter & Gamble Company v. Richard Jones

Claim Number: FA0906001266787

 

PARTIES

Complainant is The Procter & Gamble Company (“Complainant”), represented by Patricia B. Hogan, of Keating Muething & Klekamp PLL, Ohio, USA.  Respondent is Richard Jones (“Respondent”), France. 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scopemouthwash.com>, registered with Enom, Inc.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2009.

 

On June 5, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <scopemouthwash.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2009 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@scopemouthwash.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <scopemouthwash.com> domain name is confusingly similar to Complainant’s SCOPE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <scopemouthwash.com> domain name.

 

3.      Respondent registered and used the <scopemouthwash.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Procter & Gamble Company, is one of the largest and most highly regarded manufacturers and sellers of consumer goods worldwide, marketing nearly three hundred high-quality products to more than five billion consumers worldwide.  Complainant is the owner of numerous registrations of the SCOPE mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 786,932 issued March 16, 1965).  Complainant also has registered its SCOPE mark with other governmental trademark authorities throughout the world including France (Reg. No. 1,375,279 issued January 18, 1967).  Complainant uses its SCOPE mark in connection with its oral care portfolio of products that includes the billion-dollar brands Oral-B and Crest.  In connection with its use of the SCOPE mark, Complainant operates a website at the <scope-mouthwash.com> domain name. 

 

Respondent registered the <scopemouthwash.com> domain name on November 10, 2004.  The disputed domain name is being used to resolve to a website containing click-through links which further resolve to websites of Complainant’s competitors and various other third-party websites.  Some of the links included on the resolving website are “SCOPE Mouthwash,” “SCOPE Coupons,” and “SCOPE Moutjwash Coupon” [sic]. 

 

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 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 draw such inferences it 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 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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i) based on the registration of its SCOPE mark with the USPTO and other governmental trademark authorities throughout the world, including France.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).

 

Respondent’s <scopemouthwash.com> domain name incorporates Complainant’s SCOPE mark in its entirety with the addition of the descriptive term “mouthwash” and the generic top-level domain (“gTLD”) “.com.”  The term “mouthwash” is descriptive of Complainant’s business, as Complainant manufactures and sells oral care products including mouthwash.  The Panel finds that the addition of a descriptive word relating to Complainant’s business fails to alleviate the confusing similarity between Complainant’s SCOPE mark and Respondent’s <scopemouthwash.com> domain name.  Additionally, the affixation of a gTLD is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis.  See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  Thus, the Panel concludes that Respondent’s <scopemouthwash.com> domain name is confusingly similar to Complainant’s SCOPE mark under Policy ¶ 4(a)(i).

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant presents a prima facie case outlining these allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has presented a sufficient prima facie case to support its allegations and that 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 will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent’s <scopemouthwash.com> domain name resolves to a website featuring click-through links which divert Internet users to websites of Complainant’s competitors and other third-party websites.  The Panel presumes that Respondent is generating revenue from such use.  Thus, the Panel concludes that Respondent use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). 

 

Furthermore, Complainant contends that Respondent is not commonly known by the disputed domain name.  The WHOIS information lists the registrant as “Richard Jones.”  This information suggests that Respondent is not commonly known by the <scopemouthwash.com> domain name and there is no evidence in the record to the contrary.  The Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). 

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent is using a domain name, which is confusingly similar to Complainant’s SCOPE mark, to attract Internet users to a website containing links, some of which resolve to websites of Complainant’s competitors.  The Panel concludes that appropriating Complainant’s SCOPE mark to divert Internet users is likely disrupting Complainant’s business and that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to complainant’s competitors, as well as diverting Internet users to several other domain names).

Complainant further contends that Respondent’s registration and use of the confusingly similar disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv) because Respondent intentionally attempts to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its SCOPE mark.  Additionally, the domain name and resolving website contains click-through links which further resolve to Complainant’s competitors and other third-party websites.  The Panel presumes that Respondent is profiting from such use.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).  Therefore, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). 

 

Complainant has satisfied Policy ¶ 4(a)(iii).    

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <scopemouthwash.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  July 22, 2009

 

 

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