Ecolab USA Inc. v. kristina matveeva
Claim Number: FA1208001459241
Complainant is Ecolab USA Inc. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is kristina matveeva (“Respondent”), Illinois USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecolabcleaning.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2012; the National Arbitration Forum received payment on August 22, 2012.
On August 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ecolabcleaning.com> 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 August 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2012 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@ecolabcleaning.com. Also on August 28, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ecolabcleaning.com> domain name is confusingly similar to Complainant’s ECOLAB mark.
2. Respondent does not have any rights or legitimate interests in the <ecolabcleaning.com> domain name.
3. Respondent registered or used the <ecolabcleaning.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant registered the ECOLAB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,497,432 registered July 26, 1988);
2. Respondent’s <ecolabcleaning.com> domain name is identical and confusingly similar to Complainant’s ECOLAB mark;
3. Respondent is not commonly known by the disputed domain name;
4. Respondent is not licensed or authorized to use Complainant’s ECOLAB mark in a domain name;
5. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; the name has been registered and used in bad faith.
6. Respondent resolved the disputed domain name to a website offering cleaning services and products for sale, which Complainant also offers, prior to receiving a cease and desist order from Complainant;
7. Respondent currently resolves the disputed domain name to a website offering links to third-party businesses that compete with Complainant’s own business offerings;
8. Respondent was aware of Complainant’s rights in the ECOLAB mark when it registered the disputed domain name.
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.
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.”).
Complainant claims that it registered the ECOLAB mark with the USPTO (e.g., Reg. No. 1,497,432 registered July 26, 1988). Complainant submits a trademark registration certificate issued by the USPTO to support its claims regarding Complainant’s registration of the ECOLAB mark. See Complainant Exhibit 1. The Panel notes that the documents provided identify Complainant as the owner of said registrations. Thus, the Panel concludes that Complainant established rights in the ECOLAB mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also claims that Respondent’s <ecolabcleaning.com> domain name is identical and confusingly similar to Complainant’s ECOLAB mark. The Panel notes that the disputed domain name includes the entire ECOLAB mark, while adding the descriptive term “cleaning” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent failed to sufficiently differentiate the disputed domain name from Complainant ECOLAB mark, and the Panel concludes that Respondent’s <ecolabcleaning.com> domain name is identical and confusingly similar to Complainant’s ECOLAB mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
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.”).
Although Complainant failed to claim that Respondent is not commonly known by the disputed domain name, the Panel may still address the issue based upon the facts alleged. The Panel notes that Respondent is not licensed or authorized to use Complainant’s ECOLAB mark in a domain name. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “kristina matveeva.” Thus, the Panel finds 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).
Complainant asserts that Respondent’s previous use of the disputed domain name did not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant states that Respondent resolved the disputed domain name to a website offering cleaning services and products for sale, which Complainant claims it also offers, prior to receiving a cease and desist order from Complainant. Therefore, the Panel finds that Respondent’s previous use of the disputed domain name does not constitute 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Complainant also asserts that Respondent’s current use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent resolves the disputed domain name to a website offering links to third-party businesses that compete with Complainant’s own business offerings. The Panel concludes that Respondent’s current use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent resolved the disputed domain name to a website offering cleaning services and products for sale, which Complainant alleges it also offers, prior to receiving a cease and desist order from Complainant. The Panel notes that Internet users seeking out Complainant on the Internet may have arrived at the resolving website and purchased items from Respondent rather than Complainant. The Panel finds that this use disrupts Complainant’s business, and the Panel concludes that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent currently resolves the disputed domain name to a website offering links to third-party businesses that compete with Complainant’s own business offerings. Complainant states that the links offered are commercial in nature. The Panel infers from this use that Respondent generates revenue each time an Internet users clicks on one of the links offered and is diverted to a third-party website. The Panel finds that Respondent is attempting to gain commercially by confusing Internet users into using the links offered at Respondent’s website, and the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant contends that Respondent should have been aware of Complainant’s rights in the ECOLAB mark when it registered the disputed domain name. Complainant states that Respondent should have been aware of Complainant’s ECOLAB mark because of the trademark registrations Complainant owns issued by the USPTO. Panels have not generally regarded constructive notice to be sufficient for a finding of bad faith. However, here the Panel finds that Respondent had actual knowledge of Complainant's mark and rights, and determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ecolabcleaning.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 2, 2012
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