Ecolab USA Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1408001577427
Complainant is Ecolab USA Inc. (“Complainant”), represented by Shelby Knutson Bruce of Fulbright & Jaworski LLP, Minnesota, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eco-lab.com>, registered with Internet.bs Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2014; the National Arbitration Forum received payment on August 28, 2014.
On September 3, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <eco-lab.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 September 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2014 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-lab.com. Also on September 9, 2014, 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 October 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant, Ecolab USA Inc. (“Ecolab”) owns the trademark and trade name ECOLAB. Ecolab commenced use of the ECOLAB mark and name at least as early as 1986 in connection with premium commercial cleaning products and services, chemicals, and pest extermination and control products and services. Since that time, Ecolab has maintained substantial and continuous use of the ECOLAB mark and name in commerce in the United States and worldwide. Over the years, Ecolab has expanded its use of the ECOLAB mark and presently offers numerous products and services in a variety of fields under the ECOLAB mark. These products and services have included, for example products and services for the following: premium commercial cleaning, sanitizing, food and water safety, pest elimination, infection prevention, coatings and sealers, chemical analysis, water treatment, medical goods, regulatory compliance, environmental testing and inspection and educational and equipment leasing services. Ecolab offers a wide variety of goods and services in a variety of industries, including, healthcare, energy, industrial, hospitality, and foodservice.
Ecolab is one of America’s largest companies and is listed on the Fortune 500. As a global leader in its industry, Ecolab has been included on Forbes’ World’s Most Innovative Companies list and has also been named one of America’s Greatest Brands. Ecolab has sold billions of dollars’ worth of goods and services under the ECOLAB Marks both throughout the United States and worldwide. Ecolab has more than one million customer locations and its revenues for 2013 were $13.2 billion.
In addition to Ecolab’s extensive common law rights in the ECOLAB trademark, Ecolab owns the following U.S. federal trademark registrations for its ECOLAB mark: ECOLAB (U.S. Registration Nos. 1,497,423; 1,525,025; 3,937,674; 3,937,694; 3,965,037; 3,973,187; 3,973,189; 3,976,921; 3,980,653; 3,980,654; 3,980,655; 4,001,281; 4,001,282; 4,005,070; 4,005,071; 4,005,072; 4,005,073; 4,005,074; 4,005,075; 4,008,535; 4,014,916; 4,014,917; 4,021,579; 4,043,937; 4,097,817; 4,112,564; 4,152,481; 4,129,321; and 4,228,523); ECOLAB & Design (U.S. Registration Nos. 1,524,340; 1,527,356; 1,538,458; 1,538,718; 1,538,857; and 1,539,982). These registrations are valid, subsisting and enforceable.
Ecolab also owns more than 450 registrations for the ECOLAB and ECOLAB & Design trademark worldwide, including without limitation Panama Registration Nos. 46842 and 46835 for the mark ECOLAB for goods in International Classes 03 and 05, which have been registered in Panama since December 1988 and January 1989 respectively. Moreover, Ecolab and its predecessor-in-interest Economics Laboratory own Bahamas Registration Nos. 12201, 12202, 12203 and 12204 for goods in International Classes 01, 02, 06, and 47 which have been registered in The Bahamas since March 30, 2006 The ECOLAB mark is famous.
FACTUAL AND LEGAL GROUNDS
This Amended Complaint is based on the following factual and legal grounds: ICANN Rule
3(b)(i).
[a.] The Domain Name eco-lab.com is confusingly similar to the ECOLAB Marks in which Ecolab has trademark rights worldwide.
[i] Ecolab has rights in its trademarks.
The ECOLAB Marks have been used in commerce in connection with cleaning and pesticide goods and services since at least as early as 1986. In addition, Ecolab has registered and uses the domain names “ecolab.com,” “ecolabhealthcare.com,” and “ecolabwew.com to market its products and services under the ECOLAB Marks. Ecolab registered the ecolab.com domain name on January 25, 1996. This website has been in continuous operation since its registration.
Ecolab has sold billions of dollars’ worth of products and services under the ECOLAB Marks both throughout the United States and worldwide. Ecolab has invested considerable effort, time and money in promoting its products under the ECOLAB Marks and in carefully controlling the public’s perception of the nature and quality of the products associated with those marks. As a result of Ecolab’s efforts, the ECOLAB Marks have become an extremely valuable and important asset, representing substantial goodwill. The ECOLAB Marks are distinctive, well- known and famous marks.
As noted above, Ecolab is the owner of at least 35 U.S. federal trademark registrations and more than 450 additional registrations worldwide for the ECOLAB Marks, including in Panama. It is well established under the Policy that a complainant’s registration of a mark with a federal authority establishes a prima facie case of the complainant’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (Nat. Arb. Forum Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
[ii] The domain name eco-lab.com is confusingly similar to the ECOLAB Marks.
ICANN panels have found that where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN). Furthermore, the addition of the hyphen to the ECOLAB trademark does nothing to reduce to the domain name’s confusing similarity. 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.”); Microsoft Corporation v. Charilaos Chrisochoou, D2004-0186 (WIPO May 10, 2004) (finding <microsoft-com.com> domain name confusingly similar to MICROSOFT trademark and noting that “[p]revious Panel decisions under the UDRP have concluded that the addition of a generic term and/or a hyphen is not sufficient to prevent confusing similarity when the domain name contains a well-known trademark.”). Moreover, the addition of a generic top-level domain, such as “.com” is irrelevant in determining similarity of a domain to a complainant’s trademark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain(gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case the eco-lab.com domain name is identical to and incorporates in its entirety the ECOLAB Marks. The domain name differs from the ECOLAB Marks only by the addition of a hyphen and the top-level domain, “.com”. These minor differences are insufficient to distinguish the eco-lab.com domain name from the ECOLAB Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name at Issue. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (Nat. Arb. Forum September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Moreover, Respondent must show it has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interests. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the eco-lab.com domain name.
[i] Respondent has no relationship with Ecolab.
Respondent has no relationship, affiliation, connection, endorsement or association with Ecolab. Respondent has never requested or received any authorization, permission or license from Ecolab to use the ECOLAB Marks in any way.
[ii] Respondent has never been commonly known by the domain name eco- lab.com, or by the ECOLAB Marks, and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by the subject domain name. Indeed, given Ecolab’s numerous U.S. and international trademark registrations for the ECOLAB Marks and its long standing and extensive worldwide use of the ECOLAB Marks in connection with commercial cleaning, pesticides and related services, Respondent could not have developed any rights in the ECOLAB Marks unless Ecolab licensed the ECOLAB Marks to Respondent or otherwise allowed Respondent to use them. Respondent has no relationship, association, affiliation or connection with or endorsement by Ecolab.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
The eco-lab.com domain name currently resolves to multiple different websites, none of which indicate that Respondent uses or has made preparations to use this domain name in connection with a bona fide offering of goods or services. Upon information and belief, the Respondent itself neither offers goods nor services.
One of the websites contains only sponsored, click-through advertisements redirecting Internet users to third party websites, including the websites of some of Ecolab’s competitors. Upon information and belief, Respondent receives compensation every time one of the links for these sponsored advertisements is clicked by an Internet user. ICANN panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6, 2000)(finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s use cannot be characterized as fair use. See id. (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”).
Further, Respondent’s eco-lab.com domain name sometimes redirects to a page that, on information and belief, displays a phony message indicating that the user should update his or her Java software. The links on this page do not point to Java’s website, but instead to “essentialcomponentupdate.com,” and appear to be part of a scheme to obtain personal information or install malicious software on the user’s computer.
Respondent’s use for commercial gain of a domain name that is identical to the ECOLAB Marks to direct Internet users interested in Ecolab’s goods and services to websites that offer identical goods and services in competition with Complainant is not a legitimate noncommercial or fair use of the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (NAF Feb. 27, 2001) (respondent's commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (NAF Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”) Furthermore, such use is not legitimate because it diverts Complainant’s customers and potential customers to Respondent’s website and to the websites of Complainant’s competitors. See Athanasios Sermbizis, D2000-0923 (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Ecolab’s trademarks is clearly confusing and deceptive to consumers. As such, Respondent’s website at the eco-lab.com domain name is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
In addition, when Complainant accessed the website at eco-lab.com, the website attempted to install spyware, malware or some other harmful program. Use of the ECOLAB Marks to attract Internet users to websites that are harmful or may annoy them in some way is presumably intended to jeopardize the goodwill Ecolab has created in its ECOLAB Marks. Use of the domain names in this manner is harmful to Ecolab because Internet users might assume that Ecolab has some affiliation with the harmful content. Moreover, such use is not in connection with a bona fide offering of goods or services or a legitimate fair use of the eco-lab.com domain names pursuant to Policy ¶¶4(c)(i) or (iii). In fact, such harmful activities are per se evidence of bad faith. See Blue Cross and Blue Shield Ass’n v. Kraus, D2004-0756 (WIPO Nov. 15, 2004) (finding that using a domain name that is confusingly similar to a complainant’s mark to lure consumers into a mousetrapping situation is of little or no benefit to anyone and is not a legitimate noncommercial use of the domain name, because it harms the complainant for no reason other than spite or malice); Leonard Cheshire Found. v. Darke, D2001-0131 (WIPO Apr. 12, 2001) (finding that an intent to damage a complainant is “equivalent to an intent to tarnish the trademark and service mark at issue” and precludes any claim of rights or legitimate interests under Policy ¶4(c)(iii)) and Google Inc. v. Sergey Gridasov, FA474816 (Nat. Arb. Forum July 5, 2005) (finding bad faith use where the domain name directed Internet users to a website attempting to install spyware and other harmful material on the computers of the Internet users).
Lastly, Respondent’s use of the eco-lab.com domain name dilutes the ECOLAB Marks. Respondent has diminished consumers’ capacity to associate the ECOLAB Marks with the quality products and services offered by Ecolab under the ECOLAB Marks by using the ECOLAB Marks in association with websites purporting to offer goods and services that are not associated with or related to Complainant’s goods and services. Respondent’s use creates the very real risk that the ECOLAB Marks are not only being associated with numerous products and services not related to Ecolab’s own goods and services, but also to goods and services over which Complainant has no quality control.
[c.] Respondent Registered and is Using the Domain Name in Bad Faith.
There are at least three pieces of evidence that show Respondent had knowledge of Ecolab’s trademark rights, yet proceeded to register and use the eco-lab.com domain name in bad faith: (1) Respondent uses Complainant’s trademarks in its domain name and to direct consumers to commercial websites offering goods and services in direct competition with Complainant; (2) Respondent has engaged in a pattern of registering other domain names incorporating registered marks of others, which were previously transferred under the UDRP; and (3) Respondent is deemed to have constructive knowledge of Ecolab’s trademark rights at the time Respondent registered and began using the eco-lab.com domain name in light of Ecolab’s numerous U.S. and international trademark applications and registrations for the ECOLAB Marks.
(1) Respondent is using the eco-lab.com domain name, which is identical to the ECOLAB Marks, to direct Internet users to websites offering goods and services of the exact nature offered by Complainant. Such use is concrete evidence of bad faith registration and use. See, e.g., Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business), and Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶4(b)(iii)).
Furthermore, it is clear that Respondent registered the disputed domain name with the ECOLAB Marks in mind in light of the obvious link between Ecolab and the content on these websites, as well as the blatant and unauthorized use of the ECOLAB Marks. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name”).
(2) Moreover, Respondent has previously registered domain names incorporating registered trademarks, which were subsequently transferred under the UDRP. See e.g., Homer TLC, Inc. v PPA Media Services / Ryan G Foo, FA1111001416637 (NAF Jan 13, 2012) (wwwhomedepotrebates.com); Tumblr, Inc. v. Ryan G Foo / PPA Media Services, FA1543451 (NAF March 24, 2014); Klein Tools, Inc. v. PPA Media Services / Ryan G Foo, FA 1497397 (NAF June 19, 2013); QVC, Inc. v. PPA Media Services / Ryan G Foo, FA1496727 (NAF June 24, 2013); AutoZone Parts, Inc. v. PPA Media Services / Ryan G Foo, FA 1497170 (NAF June 16, 2013). Respondent’s pattern of registering domain names incorporating well-known trademarks further demonstrates his bad faith. See Policy ¶4(b)(ii); Vera Bradley, Inc. v. PPA Media Services / Ryan G Foo, FA1308001516883 (NAF Oct. 16, 2013)(finding that Respondent “is a recalcitrant, serial cybersquatter” and that “Respondent’s multiple prior adverse UDRP decisions suggest[ed] bad faith registration and use in the instant proceeding under Policy ¶4(b)(ii)”); c.f. Countrywide Financial Corporation v. Texas International Property Associates, FA1075750 (NAF Nov. 2, 2007) (finding respondent’s pattern of registering domains incorporating well-known third party marks to be evidence of bad faith under the Policy); Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (NAF Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).”
(3) Respondent also is deemed to have constructive knowledge of Ecolab’s rights in the ECOLAB Marks pursuant to multiple federal U.S. trademark registrations and numerous worldwide trademark registrations and applications for the ECOLAB Marks. “There is a legal presumption of bad faith when [Respondent] reasonably should have been aware of Complainant’s trademarks, actually or constructively.” See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (Nat. Arb. Forum Jan., 2003) (“Respondent must be held to be on constructive notice of Complainant’s service mark . . . .”). Amazon.com, Inc. v. ECC, FA699632 (NAF June 19, 2006) (“Registration of a confusingly similar domain name despite . . . actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii).”).
Additionally, Respondent is using the eco-lab.com domain name to display or redirect to a revolving series of websites that are designed to misdirect consumers, and possibly obtain consumer information or install malicious software. Such use is bad faith under the Policy. See Microsoft Corp. v. ABK et al., FA1473573 (NAF Jan. 21, 2013) (finding bad faith where respondent’s website displayed “Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Juno Online Servs., Inc. v. Nelson, FA241972 (NAF Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); Hess Corp. v. GR, FA770909 (NAF Sept. 19, 2006) (finding bad faith registration and use where respondent fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Any use by Respondent of the ECOLAB Marks, even as a domain name, is an infringement of Ecolab’s long-held rights under trademark law. As the panelist in C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux pointedly noted, a potential domain name registrant
“would be well-advised to heed the oft-repeated admonition, such as that of Scott W. Pink, in his treatise, The Internet & E-Commerce Legal Handbook (2001), where at page 110, he states: ‘Once you have decided on the TLDs and ccTLDs, you will want to select the second level of the domain, the words that signify your unique address. In doing so, you should first conduct both a domain name search to make sure the particular domain is available as well as a trademark search to make sure your choice of a domain name does not potentially infringe on another person or entity’s trademark rights.” C-Line Products, Inc. v. Ralco Consulting c/o Robert Lebeaux, Claim No. FA187608 (NAF October 20, 2003) (Emphasis supplied).
Respondent knew of Ecolab’s rights in the ECOLAB Marks. Respondent’s registration and infringing use of the eco-lab.com domain name, despite having such knowledge, indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 to have rights in the trademark ECOLAB in accordance with Policy ¶4(a)(i). Complainant has used the ECOLAB mark since at least 1986 in connection with its commercial cleaning products and services, chemicals, and pest extermination and control products and services. Complainant owns various registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,497,423 registered July 26, 1988). Complainant also owns various trademark registrations in other countries, such as in Panama and the Bahamas. The present WHOIS record indicates Respondent resides in Chile. At this stage of the proceeding, Complainant need only provide evidence of SOME rights in the mark and does not need to prove Complainant’s rights are superior to Respondent’s rights. Complainant need not show a trademark registration in Respondent’s home country to prevail on this point. This evidence is sufficient to satisfy the requirements of Policy ¶4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant’s registrations for the ECOLAB mark sufficiently establish its rights in the mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <eco-lab.com> domain name is confusingly similar to Complainant’s ECOLAB mark. Respondent merely adds a hyphen to Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Adding a hyphen does not sufficiently distinguish Complainant’s mark from Respondent’s disputed domain name, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004). Similarly, adding a “.com” gTLD does not adequately distinguish Complainant’s mark from Respondents’ disputed domain name. Respondent’s <eco-lab.com> domain name is confusingly similar to Complainant’s ECOLAB mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Respondent has no relation or affiliation to the ECOLAB mark. Complainant has not authorized Respondent to use the mark in any way. The present WHOIS information for the disputed domain name lists “Ryan G Foo” as registrant, which does not suggest Respondent is commonly known by the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) the panel found the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence it was commonly known by the domain name. The present case is comparable. Respondent has not submitted a response, and therefore has not refuted Complainant’s contentions. In light of the available evidence in the record as well as Respondent’s failure to show otherwise, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s resolving website contains only sponsored, click-through advertisements redirecting Internet users to third-party websites, including Complainant’s competitors. Presumably Respondent generates click-through revenue from the linked parking page. Some of the links Respondent displays include, “EcoLab Cleaning Products,” “Wholesale Cleaning Products,” “Citrus King Degreaser,” and “Ecolab MSDS Online.” In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) the panel reasoned, “[t]he disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”. This Panel agrees. Respondent is not using the disputed domain name for 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).
Complainant also claims Respondent’s disputed domain name sometimes resolves to a website displaying a phony message the user should update his Java software (but does not direct the users to Java’s home site). The circumstantial evidence suggests Respondent is attempting to collect personal information from Internet users and/or download harmful malware onto users’ computers. The Panel in Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) found a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”). Respondent’s use does not indicate legitimate rights or interests in the disputed domain name.
Finally, Respondent originally registered the disputed domain name using a privacy service. This means Respondent’s name was not publicly linked with the disputed domain name. The only name that was linked to the disputed domain name was the nominee’s name (and the nominee doesn’t really use the domain). Respondent’s name was not publicly revealed until this proceeding was brought. This means Respondent could not have acquired any rights to the disputed domain name because Respondent was not linked to the disputed domain name in the public’s eye.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <eco-lab.com> domain name in bad faith because Respondent has a pattern of bad faith registrations. Respondent previously had UDRP cases found adversely against it. Complainant cited cases where previous panels found evidence of Respondent’s bad faith. See Homer TLC, Inc. v. PPA Media Services / Ryan G Foo, FA1111001416637 (Nat. Arb. Forum Jan. 13, 2012); Tumblr, Inc. v. Ryan G Foo / PPA Media Services, FA 1543451 (Nat. Arb. Forum March 24, 2014); Klein Tools, Inc. v. PPA Media Services / Ryan G Foo,
FA 1497397 (Nat. Arb. Forum June 19, 2013); QVC, Inc. v. PPA Media Services / Ryan G Foo, FA 1496727 (Nat. Arb. Forum June 24, 2013); and AutoZone Parts, Inc. v. PPA Media Services / Ryan G Foo, FA 1497170 (Nat. Arb. Forum June 16, 2013). This Panel is not convinced. Each case must be determined on its own merits. Policy ¶4(b)(ii) requires Complainant must be prevented from reflecting its mark in a domain name. That is not the case here because Complainant owns <eco-lab.com>.
Complainant claims Respondent’s use of the disputed domain name to resolve to a website offering competing goods and services disrupts Complainant’s business. Complainant’s potential customers are diverted from its web site and domain name. This is adequate proof of bad faith pursuant to Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)).
Complainant claims Respondent uses the disputed domain name to attract and mislead Internet users and seeks to profit from the resulting confusion. Respondent likely gains click-through revenue from the parking pages containing links. Generating click-through income from a parked page is sufficient to find bad faith use and registration under Policy ¶4(b)(iv). Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) stated, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” Respondent’s use of the disputed domain name demonstrates bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent’s use of the disputed domain name is at least periodically intended to mislead Internet users and either obtain consumer information or install malicious software on the user’s computer. This is clearly bad faith registration and use of a domain name. In Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) the panel found a domain name attracting Internet users to a resolving website which attempts to download malicious software onto computers to steal personal information “indicates bad faith registration and use according to Policy ¶4(a)(iii).” This Panel would agree, although this Panel would not require a competitive relationship. There is no bona fide reason to insert malware on another person’s computer or steal their personal data. This fits under the general penumbra of Policy ¶4(b).
Complainant claims Respondent had actual knowledge of Complainant’s mark when Respondent created the disputed domain name. Respondent uses the disputed domain name to include links to Complainant’s owns products as well as Complainant’s competitors. Based upon this evidence, it seems reasonable to infer Respondent had actual knowledge of Complainant’s ECOLAB mark given the use of the mark on the landing page, and the commercial recognition Complainant’s mark has attained. This also seems to be sufficient evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Finally, Respondent registered the disputed domain name using a privacy service. This raised the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut this presumption. That alone constitutes sufficient grounds to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <eco-lab.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, October 9, 2014
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