Ecolab USA Inc. v. Jody Boehnert
Claim Number: FA1105001386857
Complainant is Ecolab USA Inc. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is Jody Boehnert (“Respondent”), represented by Rowland Buehrlen of Beck Greener, Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eco-labs.org>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2011; the National Arbitration Forum received payment on May 3, 2011.
On May 3, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <eco-labs.org> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@eco-labs.org. Also on May 3, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 23, 2011.
Complainant’s timely Additional Submission was received on May 27, 2011. Therefore, the Forum finds the submission to be in compliance with Forum Supplemental Rule 7.
On the June 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the domain name is virtually identical to Complainant’s ECOLAB trademark. Complainant owns registrations for the ECOLAB mark with the United States Patent and Trademark Office (“USPTO”), the United Kingdom Intellectual Property Office (“UKIPO”) as well as the Office for Harmonization in the Internal Market (“OHIM”). For instance, Complainant is the owner of the US registration of the trademark ECOLAB n°1,497,423 registered on July 26, 1988 in international classes 7 and 37.
Complainant further alleges that Respondent has no rights with respect to the disputed domain name because he has not engaged in any bona fide use of the domain name. In particular, Respondent is not licensed or authorized to register or use domain names which incorporate the ECOLAB mark.
Lastly, according to Complainant, there can be no question that the domain name was registered and is being used in bad faith, in particular since Respondent should have been aware of the trademark ECOLAB when the disputed domain name was filed. Indeed, the numerous prior registrations in the U.S. and the U.K. as well as the Community trademark registrations provided constructive notice to any third party of Complainant’s right in the designation. Further, Respondent’s conduct constitutes bad faith use because her website is in the same field as that of Complainant.
B. Respondent
According to Respondent, the disputed domain name is neither identical nor confusingly similar to the trademark ECOLAB.
In addition, the prefix “eco” means ecological and the suffix “lab” or “labs” is a known abbreviation for laboratory. In addition, there is no similarity between the downloadable publications and research publications featured on the disputed website and any of the goods designated by Complainant’s trademarks.
Regarding the claim that Respondent has no rights or legitimate interest with respect to the disputed domain name, Respondent argues among other things that the .org extension corresponds to a non commercial organization, which is in line with the projects pursued by Respondent via the disputed domain name. The projects pursued by Respondent, in particular the promotion of ecological awareness and literacy does not compete with Complainant’s cleaning, sanitation pest control goods and services.
Finally, regarding the claim of bad faith registration and use, Respondent argues in particular that she was not aware of the trademark ECOLAB when she adopted the sign ECO-LABS in 2006. She became aware of the domain name <ecolab.com> run by Complainant after the registration of the disputed domain name and she decided that Complainant was not in the field of ecological educational publication services. Therefore, the ecological educational publication services provided on the disputed website is not bad faith use of the domain name.
Lastly, Respondent argues that the Complaint was brought in bad faith. Indeed, the Complaint was made in reckless disregard for the possibility that the disputed domain name was registered in good faith. This is a reverse domain name hijacking case.
C. Additional Submission by Complainant
In its additional submission, Complainant argues among other things that Respondent uses the domain name <eco-labs.org> to advertise an ecological literacy project and to provide information about sustainability, which is identical information to that provided by Complainant under the ECOLAB trademark and highly related to goods provided by Complainant. This use of the disputed domain name constitutes trademark infringement.
Complainant owns numerous registrations for the trademark ECOLAB.
The disputed domain name was registered on February 21, 2007 by Respondent.
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 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.
Complainant submits evidence of its various trademark registrations for the ECOLAB mark with the USPTO (e.g., Reg. No. 1,497,423 issued July 26, 1988), the UKIPO and the OHIM. The Panel finds that Complainant’s trademark registrations are sufficient evidence of Complainant’s rights in the ECOLAB mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also See Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently establishes the complainant’s rights in the mark under the policy).
Complainant asserts that Respondent’s <eco-labs.org> domain name is “virtually identical” to Complainant’s own ECOLAB mark. Complainant contends that the only minor difference between the disputed domain name and Complainant’s mark is that Respondent has included a hyphen. The Panel also notes that the disputed domain name also contains the addition of the letter “s” and the generic top-level domain (“gTLD”) “.org.” The Panel finds that these additions are insufficient to distinguish the disputed domain name from Complainant’s mark, therefore rendering the <eco-labs.org> domain name confusingly similar to Complainant’s ECOLAB mark under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
As Respondent correctly asserts, the disputed domain name contains the element “eco”, which is a common abbreviation of “ecological” and the element “labs”, which is the abbreviation for laboratories.
Even if Respondent’s activity is not easy to apprehend, it seems that she has been using the domain name in relation to ecological literacy supporting activities with the objective of promoting a fully sustainable society. According to the website itself and to the response, ecology is one of the core subjects of Respondent and the word “laboratory” reveals the experimental and educational nature of her activity. As a consequence, it seems that the disputed domain name reflects her activity.
In addition, Complainant’s activity is presented on the company’s website <ecolab.com>: “Ecolab is the global leader in cleaning, sanitizing, food safety and infection prevention products and services”. According to this description and to the evidence provided by Complainant itself, it appears that this large company has a commercial activity aiming at selling goods and services to numerous clients. The Panel is therefore not convinced that Complainant’s activity is to advertise an ecological literacy project and to provide information relative to sustainability. Complainant is only likely to deal with ecology and sustainability matters when conducting its activity, as many large companies do these days. On the contrary, Respondent does not seem to conduct any commercial activity via her website.
Furthermore, when a complainant’s trademark is composed of common, generic, or descriptive terms, it cannot claim to have an exclusive monopoly on the terms on the Internet. Indeed, the purpose of the Policy is not to adjudicate between parties who have some legitimate interest in using a particular domain name, but only to correct cases of obvious cybersquatting; See Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier., FA 0911001295573 (Nat. Arb. Forum January 20, 2010).
According to the “InterNIC FAQs on the .org Transition” (See the Internic website: “http://www.internic.net/faqs/org-transition.html”), “the .org was originally intended as a "miscellaneous" TLD for organizations that weren't commercial entities, educational institutions, network providers, or governmental agencies. In recent years registration in .org has become open and unrestricted”. Even if .org domain names are not restricted to organizations, the Panel notes that Respondent chose the .org extension to reflect the educational aspect of the domain name and its dedicated website. It confirms that the project behind the domain name has been thought through and that it is not a scheme to engage in cybersquatting activities. Indeed, there is no proof that Respondent has attempted to sell the disputed domain name to Complainant or to anyone else, that Respondent has regularly engaged in acquiring domain names consisting of the marks of third parties, or that Respondent has used the disputed domain name for anything other than a legitimate activity; See American Appraisal Associates Inc. v. R Hagar, Kinja LLC., D2006-1556 (WIPO January 29, 2007).
Lastly, the Panel notes that the disputed domain was registered on February 21, 2007. Complainant argues in the Complaint that a cease and desist letter and follow up letters were sent to Respondent so as to resolve the matter. The Panel ignores when these letters were sent. Nevertheless, it is a certainty that Complainant waited more than four years to initiate this proceeding. While not itself a decisive factor, this lengthy and unexplained delay is further reason for the Panel to believe that Respondent had not been seen as a serious threat by Complainant for more than four years. This element is in favor of finding that Respondent does not lack a legitimate interest.
As a conclusion, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that she registered the disputed domain name for the legitimate purpose of promoting her mission and denies that she registered the disputed domain name primarily for the purposes of commercial gain. Respondent also asserts that the disputed domain name contains the element “eco”, which is a common abbreviation of “ecological” and the element “labs”, which is the abbreviation for laboratories.
The Panel deems that bad faith cannot be inferred simply because of the coincidental common semantic content between the disputed domain name and the trademark ECOLAB. Therefore, the Panel concludes that Complainant has not demonstrated bad faith registration under Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
In relation to the claim based on constructive notice raised by Complainant by which Respondent had legal, if not actual, notice of Complainant’s mark as from its registration prior to registration of the disputed domain name, the Panel notes that the concept of constructive notice has been raised in argument by complainants in previous cases under the Policy. It usually raises a number of controversial issues, namely: is there a concept of constructive notice under the Policy and if the concept exists, in what circumstances does it apply?
In addition, the Panel believes that this concept may be different in the United-States, the country where Complainant is localized and in United Kingdom, where Respondent is localized. If the Panel were to decide to apply this concept, it would have to determine if US law and/or English law should be applied and for what reasons. This goes far beyond the purpose of the Policy. In addition, previous Panels have decided that the concept of constructive notice should not apply under the Policy. See VEDA GmbH v. Future Media Architects, Inc. / com fma, FA1009001347931, (Nat. Arb. Forum Nov 8, 2010), see also Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). As a consequence, the Panel refuses to consider whether Respondent was provided with constructive notice of Complainant’s trademark ECOLAB.
Regarding bad faith use, Respondent submits in particular evidence from the 2009 Annual Report indicating that Respondent is entirely funded from donations and grants with the exception of a small income from ticket and magazine sales. The Panel also notes that Respondent has presented arguments and evidence indicating that the content displayed on the resolving website relates specifically to ecological literacy and does not compete with Complainant’s offerings under its ECOLAB mark.
The Panel deems that there is no likelihood of confusion between the disputed website and the websites run by Complainant, such as <ecolab.com>. In addition, Respondent’s website is not being used for the purposes of generating profit or commercial gain, See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business); see also Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) could not be established).
Lastly, even if the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking by Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the <eco-labs.org> domain name has to REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: June 17, 2011
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