Rohm and Haas Company v. DW Services c/o
Desmond Whitt
Claim Number: FA0210000128707
PARTIES
Complainant is Rohm and Haas Company, Philadelphia, PA (“Complainant”)
represented by James J. Johnston, of Dechert. Respondent is DW Services c/o Desmond Whitt, Pleasanton, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <rohmhaas.us>, registered with Enom.
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.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on October 24, 2002;
the Forum received a hard copy of the Complaint on October 28, 2002.
On October 29, 2002, Enom confirmed by
e-mail to the Forum that the domain name <rohmhaas.us>
is registered with Enom and that the Respondent is the current registrant of
the name. Enom has verified that
Respondent is bound by the Enom registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with the
U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 30, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of November 19, 2002 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent in
compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy
(the “Rules”).
A timely Response was received and
determined to be complete on November 19, 2002.
Complainant filed a timely Additional
Submission on November 25, 2002.
On December 5,
2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The
Complaint is based on Complainant’s registration and use in commerce of the
U.S. federal trademark ROHM AND HAAS (Reg. No. 990,595).
2.
Since 1909,
Complainant began manufacturing and marketing chemicals used in the leather and
tanning industry under the name ROHM & HAAS. Use of the ROHM AND HAAS
trademark has been ongoing since then, expanding from leather chemicals to
include, over the years, electrical chemicals, polymers for paints, acrylic
products, fungicides and pesticides.
The mark is now in use in connection with a broad range of chemical
products used in paints and coatings, electronics, household products,
detergents, personal care products, water treatment products, adhesives, and
plastics. Complainant was issued a
federal registration of the trademark ROHM AND HAAS on August 13, 1974.
3.
Complainant,
Rohm and Haas Company, is one of the world’s largest manufacturers of specialty
chemicals used in construction, electronic devices, packaging, transportation,
food and pharmaceuticals. Rohm and Haas
Company is a publicly-traded corporation with more than 17,000 employees
worldwide, and more than $6 billion annual sales. Complainant is headquartered in Philadelphia, Pennsylvania (USA),
and operates nearly 140 research and manufacturing locations in 27 countries.
4.
Complainant
has registered and operates its principal website at <rohmhaas.com>, and
holds registrations to <rohmhaas.net>, <rohmhaas.org>,
<rohmhaas.info >, and <rohmhaas.biz>.
5.
The
disputed domain name is virtually identical and confusingly similar to
Complainant’s registered trademark and trade name ROHM AND HAAS – the sole
distinction being that the disputed domain name does not include the word
“and.”
6.
Respondent
has no rights or legitimate interests in the disputed domain name. Respondent is not know by the terms ROHM or
HAAS, or by any combination of the two terms, and is not and has never been
affiliated with the Rohm and Haas Company.
Respondent has not used the disputed domain name in connection with a
bona fide offering of goods or services nor is Respondent making a legitimate
non-commercial or fair use of the disputed domain name.
7.
Complainant
believes that Respondent registered the disputed domain name with the intent to
sell the registration to Complainant.
Respondent has no connection to the Rohm and Haas Company, has no right
to use the disputed domain name, has expressed no rationale for its acquisition
of the disputed domain name, and can make no legitimate use, commercial or
non-commercial, of the disputed domain name.
Respondent has no rights in or to the ROHM AND HAAS mark or the names
“Rohm” and “Haas.” Browsers who visit
the domain name in the “.us” domain will believe that the website is operated
by or on behalf of, or otherwise affiliated with Complainant.
8.
Complainant
believes that Respondent registered the disputed domain name to prevent
Complainant from reflecting Complainant’s trademark in a corresponding domain
name. This is because that disputed
domain name is virtually identical to Complainant’s uncontestable registration
of ROHM AND HAAS, and is identical, but for the domain extension, to
Complainant’s principal domain, <rohmhaas.com>, and Complainant’s other
registrations of ROHMHAAS in the top level domains.
9.
Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
its website by creating a likelihood of confusion with Complainant’s mark as to
the source, sponsorship, affiliation or endorsement of his website or of a
product or service on its website. This
is because the website resolving at the domain name is a pre-packaged and
static web page consisting of commercial links through <oingo.com>, a
domain name service affiliated with Applied Semantics’ Naming Solutions
business. Naming Solutions’ Domain Park
service is a commercial service in which registrants and domain name registrars
may derive income based on browser “hits” to parked domain names. In simple terms, Domain Park monetizes web
traffic by returning to subscribers income based on page hits and, thus, the
disputed domain name is being used for commercial gain.
B. Respondent
1.
Respondent
is a private citizen who purchased the following domain names: <dwservices.us>, <whitt.us>, and
<rohmhaas.us>.
2.
Respondent
also made a purchase of a family genealogy software package at about the same
time as the purchase of the domain names.
The intent was and is to pursue the origins of family names. Since Respondent is not in the business of
making a profit from the use of these names, it is perfectly reasonable that
little or no work has been done on them to date.
3.
Respondent
has never approached Complainant for the purpose of selling the disputed domain
name registration.
4.
The web
page from Enom suggests the use of last names as domain names. While Respondent has not offered goods and
services, it is a legitimate use of the name.
5.
There is no
evidence that Respondent registered the domain name to prevent Complainant from
reflecting its trademark in a domain name address in the “.us” domain, to
divert browsers to its site for commercial gain, or to ransom the registration
to Complainant.
6.
The
disputed domain name is not identical to the trademark.
7.
Respondent
purchased and is the rightful owner of the disputed domain name.
8.
There is no
evidence to support the allegation that Respondent registered the disputed
domain name to prevent Complainant from reflecting Complainant’s trademark in a
corresponding domain name.
9.
The
allegation that the disputed domain name is being used for commercial gain has
no merit. Respondent has no knowledge
of how Domain Park programs might be used for commercial gain and there is no
evidence to support this contention.
10.
Respondent
registered the domain name of <rohmhaas.us> as well as
<whitt.us> to research family genealogies. Money was transacted for the uses of those domains. At the end of that transaction, the use of
those domain names became the property of Respondent. In addition to those domain names, software was purchased for the
purpose of establishing family trees and publishing/sharing that information on
the Internet. Respondent has purchased
and maintained a high-speed Internet connection via AT&T broadband for the
same purpose. Digital cameras,
scanners, family photos have been procured for the same purpose.
11.
Respondent
has not approached Complainant in any way for valuable consideration of any
kind. In fact, Complainant demanded the
transfer of the disputed domain name without any consideration of out-of-pocket
costs.
12.
There is no
evidence that Respondent has registered the disputed domain name in order to
prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name.
13.
There is no
evidence that Respondent has registered the disputed domain name primarily for
the purpose of disrupting the business of a competitor.
14.
There is no
evidence that by using the disputed domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s
website or other online 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 location.
15.
Complainant
has engaged in reverse domain name hijacking.
C. Additional Submission by Complainant
1.
The
Response was not served properly. usTLD
Dispute Resolution Policy Supplemental Rule 5(c) requires the Response to be
sent to the Forum by electronic mail and either by facsimile or regular
mail. Respondent did not provide a copy
of the Response by electronic mail, but apparently submitted a faxed copy of
the Response to the Forum.
2.
Respondent
has failed to establish a legitimate interest in the disputed domain name. Respondent states that it acquired the
disputed domain name “to pursue the origin of family names,” an absurd
contention made all the more remarkable by the fact that Respondent claims to
have registered only three domain names in the “.us” domain: DWSERVICES, which consists of Respondent’s
initials and the word “services”; WHITT, which consists of Respondent’s
surname; and ROHMHAAS, which is not related to genealogy, and in fact is not a
name at all, but instead consists of the two principal elements of
Complainant’s incontestable trademark ROHM AND HAAS (the “Mark”). The rational clearly is after the fact.
3.
Respondent’s
bad faith may be imputed from the circumstances of the registration of the
disputed domain name, and from the clearly post
hoc concoction of its Response.
4.
Respondent
does not deny that it registered the disputed domain name with the intent of
selling the registration to Complainant, only that it has not to date offered
to sell the disputed domain name to Complainant. Respondent should not be permitted to benefit from coyly gaming
the system in this way. It is well
established that simply parking a domain can be, in and of itself, evidence of
bad faith.
5.
The
disputed domain name was registered with the intent to block Complainant from
reflecting its trademark in the domain name or to divert Internet traffic for
commercial gain by creating the likelihood of confusion with Complainant’s
mark. The Complaint is replete with
evidence to that effect, including clear evidence that the disputed domain name
is being used for commercial gain.
6.
Without
basis or support, Respondent alleges that Complainant has engaged in reverse
domain hijacking by filing the Complaint and demanding the transfer of the
disputed domain name. Respondent’s audacious claim of bad faith use of the
Policy by Complainant is without merit, and complete ignores Complainant’s
measured response to Respondent’s act of cyberpiracy, and the substantial bases
upon which the Complaint and this Additional Submission are based.
FINDINGS AND CONCLUSIONS
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.”
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
or is being used in bad faith.
Given the similarity between the Uniform
Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel
will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
There is no question but that the disputed
domain name and Complainant’s mark are virtually identical and the disputed
domain name is confusingly similar to the mark. The deletion of the word “and” between the names “Rohm” and
“Haas” in the disputed domain name does not change this finding and
conclusion. See, e.g., Cream
Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of Complainant’s mark, ‘Cream
Pie’ does not prevent the likelihood of confusion caused by the use of the remaining
identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”).
Here, the disputed domain name is similar
in sound, appearance, and connotation to Complainant’s mark.
Rights or Legitimate Interests
Respondent defends his registration of
the disputed domain name by asserting that he intends to use it “to research
family genealogies.”
The difficulty, however, is that this is
a mere assertion without proof. There
is no explanation, as, for example, that Rohm and Haas were Respondent’s
maternal ancestors. If there were proof
that the disputed domain name was to be used as an e-mail address, or that the
intended use was a transformative, nominative, or descriptive use of the mark,
the result could well be different. See Brookfield Communications, Inc.
v. West Coast Entm’t Corp., 174 F.3d 1036, 1065-1066 (9th
Cir. 1999) (under the Lanham Act there may be fair use of a competitor’s mark).
It is difficult to determine credibility
only from a written record.
The Panel finds and concludes, however,
that Respondent has no legitimate interest or rights to the domain name in
issue, because, as has been seen, he was not truthful about his motivation and,
thus, has acted in bad faith. It is
reasonable to infer, accordingly, that his real motivation was to trade on
Complainant’s famous and distinctive mark and not for a legitimate or fair use.
Registration and Use in Bad Faith
In light of Respondent’s lack of
credibility, the Panel has concluded that Respondent’s real motivation in
registering the domain name in issue was intentionally to attract, for
commercial gain, Internet users to its website, or other online location, by
creating a likelihood of confusion with Complainant’s well-established mark as
to the source, sponsorship, affiliation and endorsement of Respondent’s
website. See Luck’s
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum
Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and
registration by linking the domain name to a website that offers services
similar to Complainant’s services, intentionally attempting to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s marks); see also, Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the Complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
Policy paragraph 4(b) sets forth certain
circumstances, without limitation, that shall be evidence of registration and
use of a domain name in bad faith.
Policy ¶ 4(b)(iv) provides:
by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
website or other online location, by creating a likelihood of confusion with
the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of your website or location or of a product or service on your
website or location.
The words “source, sponsorship,
affiliation, or endorsement” are particularly apt here. Inevitably, the Panel believes that
consumers would conclude that the domain name in issue was endorsed and
sponsored by Complainant.
In addition to the demonstration of bad
faith by the application of Policy ¶ 4(b)(iv), there is a legal presumption of
bad faith, when Respondent was clearly aware, actually or constructively, of
Complainant’s famous and distinctive trademark. See Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names).
It is found and concluded that Respondent
registered and is using the domain name in issue in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
Respondent could made any active use of the disputed domain names without
creating a false impression of association with the Complainant”).
DECISION
Based on the above findings and
conclusions, and pursuant to Policy ¶ 4(i), it is decided that the domain name <rohmhaas.us>
registered by Respondent, DW Services, shall be, and the same is, TRANSFERRED
to Complainant, Rohm and Haas Company.
In the light of the Panel’s decision
herein, it is not necessary to consider Complainant’s procedural
objection. Furthermore, the charge of
reverse name hijacking obviously is not warranted.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: December 16, 2002
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