Ecolab USA Inc. v. seo pich na
Claim Number: FA1105001387091
Complainant is Ecolab USA Inc. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is seo pich na (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iecolab.com>, registered with Yesnic Co., Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2011; the National Arbitration Forum received payment on May 4, 2011. The Complaint was submitted in both Korean and English.
On May 6, 2011, Yesnic Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <iecolab.com> domain name is registered with Yesnic Co., Ltd. and that Respondent is the current registrant of the name. Yesnic Co., Ltd. has verified that Respondent is bound by the Yesnic Co., Ltd. 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 13, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of June 2, 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@iecolab.com. Also on May 13, 2011, the Korean language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <iecolab.com> domain name is confusingly similar to Complainant’s ECOLAB mark.
2. Respondent does not have any rights or legitimate interests in the <iecolab.com> domain name.
3. Respondent registered and used the <iecolab.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ecolab USA Inc., is a global developer and marketer for cleaning, sanitizing, pest elimination, maintenance, and repair products. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ECOLAB (e.g., Reg. No. 1,539,982 issued May 23, 1989).
Respondent, seo pich na, registered the <iecolab.com> domain name on December 16, 2004. The disputed domain name resolves to a website featuring advertisements for products that compete with Complainant’s business.
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.
Complainant states that it has established rights in the ECOLAB mark based on its registration with the USPTO. The Panel finds that Complainant has established rights in its ECOLAB mark under Policy ¶ 4(a)(i) through its trademark registrations with a federal trademark authority(e.g., Reg. No. 1,525,025 issued February 21, 1989). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <iecolab.com> domain name is confusingly similar to Complainant’s ECOLAB mark. Complainant argues that the domain name merely adds an extra letter “i” to its mark, as well as the required generic top-level domain (“gTLD”) “.com,” and that such additions are insufficient in rendering the domain name distinct from Complainant’s mark. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant is required to make a prima facie showing in support of its allegation that Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has met its burden, Respondent then acquires the burden of showing it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant has met its burden and because Respondent failed to respond to these proceedings, the Panel may assume Respondent lacks rights or legitimate interests in the disputed domain name. However, the Panel will proceed to examine the record for evidence that Respondent has rights in the domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Complainant asserts that the WHOIS information identifies the registrant of the disputed domain name as “seo pich na,” which Complainant has shown is not similar to the <iecolab.com> domain name. Complainant also asserts that it has not authorized Respondent to use the ECOLAB mark. The Panel, after examining the record, is unable to find any evidence that would support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges that Respondent uses the disputed domain name to post advertisements to the products of Complainant’s competitors. Respondent presumably receives payment for these advertisements posted on the website resolving from the disputed domain name. The Panel finds that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s use of the disputed domain name and resolving website disrupts its business. Internet users intending to find and purchase Complainant’s products may purchase similar products from Complainant’s competitors due to the advertisements posted on the resolving website. The Panel finds this use to be disruptive to Complainant’s business which is evidence that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Lastly, Complainant contends that Internet users are likely to be confused as to Complainant’s sponsorship of, and affiliation with, the advertisements posted on the website resolving from the disputed domain name. Complainant alleges that Respondent benefits from this confusion through the receipt of referral and advertisement fees. The Panel finds that Respondent’s presumed commercial benefit from its use of the disputed domain name is evidence that it has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iecolab.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 13, 2011
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