Morton Salt, Inc. v. Christian Olesen
Claim Number: FA1302001485321
Complainant is Morton Salt, Inc. (“Complainant”), represented by Andrew R.W. Hughes of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Christian Olesen (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mortonwatersoftener.org>, registered with GoDaddy.com, LLC.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2013; the National Arbitration Forum received payment on February 14, 2013.
On February 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mortonwatersoftener.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2013 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@mortonwatersoftener.org. Also on February 15, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Response whereby Respondent purports to transfer the domain name was received on February 15, 2013.
On February 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has been in business for over 160 years, and since 1960 has manufactured, distributed, and advertised water softening salts using its MORTON mark. See Complainant’s Exhibit C. Complainant has sold water softeners using the MORTON mark since 2002. See Complainant’s Exhibit D. Complainant has spent significant resources promoting its products under the MORTON mark, and as a result has developed goodwill in its mark in the United States and throughout the world. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MORTON mark (e.g., Reg. No. 916,019 registered July 6, 1971). See Complainant’s Exhibit E. Complainant uses the <morton.com> domain name and the <mortonsalt.com> domain name. See Complainant’s Exhibits F and G.
The <mortonwatersoftener.org> domain name is confusingly similar to Complainant’s MORTON mark.
Respondent does not have rights or legitimate interests in the <mortonwatersoftener.org> domain name, as Respondent is not commonly known by the domain name, and does not use the domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered the <mortonwatersoftener.org> domain name on April 13, 2012. See Complainant’s Exhibit B. The disputed domain name resolves to a website that describes Complainant’s product, and includes a diagram of what purports to be a MORTON water softener, but is not. The text of the website contains factual and grammatical errors, as well as pay-per-click advertisements for companies unaffiliated with Complainant. Respondent attempts to gather personal information from visitors to the website through the “Contact” link appearing on the page. See Complainant’s Exhibit H.
Respondent uses the <mortonwatersoftener.org> domain name to deceive customers and to provide unauthorized information on Complainant’s products. Respondent registered and uses the disputed domain name in bad faith by attempting to make a commercial gain by gathering personal information from website visitors, and attempts to pass itself off as Complainant’s website. By hosting pay-per-click links at the resolving website, Respondent makes a commercial gain for each website visitor that uses one of the links.
B. Respondent
Respondent claims that it uses the <mortonwatersoftener.org> domain name for nothing more than a “small fun project,” so that he could write about something he “had no clue about.” Respondent apologizes for its violation of trademark rights and consents to a transfer of the domain name as soon as possible.
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.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <mortonwatersoftener.org> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
The Panel acknowledges that Respondent has not contested the transfer of the disputed domain name, but rather has agreed to transfer the domain name in question to Complainant. Further, the Panel takes cognizance of the fact that the requests of the parties are identical, i.e. both parties request that the disputed domain name be transferred to Claimant. Indeed, Complainant has asked the Panel to issue a decision “that the Domain Name be transferred to Morton.” Respondent confirms that he has no interest in the domain name; that the registration of the said name was a “small fun project”. Respondent “apologizes for its violation of trademark rights and consents to a transfer of the domain name as soon as possible.”
Consequently, the Panel has decided to forego the traditional UDRP analysis and order an immediate transfer of the <mortonwatersoftener.org> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Accordingly, given the common request of the parties it is Ordered that the <mortonwatersoftener.org> domain name be TRANSFERRED from Respondent to Complainant
Calvin A. Hamilton, Panelist
Dated: February 26, 2013
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