Rohm and Haas Company v. DW Services c/o Desmond Whitt
Claim Number: FA0210000128707
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.
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.
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.
Complainant requests that the domain name be transferred from Respondent to 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.
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”).
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
Dated: December 16, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page