The Procter & Gamble Company v. Nathan Richardson / MonoFoil USA
Claim Number: FA1703001719890
Complainant is The Procter & Gamble Company (“Complainant”), represented by Susan M. Kayser of Jones Day, District of Columbia, USA. Respondent is Nathan Richardson / MonoFoil USA (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <furbreze.com>, <furbreze.info>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2017; the Forum received payment on March 2, 2017.
On March 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <furbreze.com>, <furbreze.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 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@furbreze.com, postmaster@furbreze.info. Also on March 6, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, The Procter & Gamble Company, operates in the consumer goods industry. In furtherance of its business, Complainant has registered the FEBREZE mark with the patent and trademark offices of more than 40 countries, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,107,914, registered Oct. 17, 1997). See Compl., at Attached Ex. B. Respondent’s <furbreze.com> and <furbreze.info> domain names are confusingly similar to the FEBREZE mark because they both comprise almost the entirety of Complainant’s registered FEBREZE Mark, switching out the letter “e” for the letters “u” and “r”. Furthermore, the addition of the “.com” generic top level domain (“gTLD”) along with the second generic “.info” gTLD does not preclude confusing similarity.
Respondent has no rights or legitimate interests in either the <furbreze.com> or the <furbreze.info> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the FEBREZE mark in any manner. Respondent infringed Complainant’s FEBREZE Marks by selling “Furbreze” branded pet deodorizers through the <furbreze.com> domain name. After receiving a cease and desist letter from Complainant, Respondent refused to surrender the domain name <furbreze.com>. The <furbreze.com> domain name redirects to <applyguard.com> which sells “Apply Guard” branded deodorizers. See Attached Ex. H. Respondent is using the disputed domain name for commercial gain and diversionary use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). The other disputed domain name <furbreze.info>, resolves to a parked webpage. The failure actively to use a domain name, or failure to show demonstrable preparations to use a domain name does not give Respondent rights under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and used the domain names <furbreze.com> and <furbreze.info> in bad faith. Respondent registered the disputed domain names with full knowledge of Complainant’s prior use of, rights in and goodwill associated with the FEBREZE marks. Complainant’s use of the mark FEBREZE began prior to the registration of the <furbreze.com> and <furbreze.info> disputed domain names. The slight alteration of Complainant’s mark with the deletion of the letter “e” replaced by the letters “u” and “r”, combined with prior notice of trademark infringement, evinces actual knowledge of Complainant’s rights in the FEBREZE mark and indicates bad faith pursuant to Policy ¶ 4(a)(iii). Respondent’s demand that Complainant make an offer for the infringing domain name <furbreze.com> after receipt of Complainant’s cease and desist letter, along with the parked domain <furbreze.info> are additional indicators of bad faith under Policy ¶ 4(b)(i). The registration of multiple domains is another sign of bad faith registration as outlined by Policy ¶ 4(b)(ii). Competing use for commercial gain is bad faith registration under Policy ¶¶ 4(b)(iii) and (iv). Respondent’s website www.furbreze.com redirects to Respondent’s applyguard.com which sells competing deodorizing products. See Compl., at Attached Annex H. Such a competing use is understood to be an example of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating in the consumer goods industry.
2. Complainant has established its registered trademark rights in the FEBREZE mark by its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,107,914, registered Oct. 17, 1997) and with the patent and trademark offices of more than 40 countries.
3. Respondent registered the <furbreze.com> and <furbreze.info> domain names on November 3, 2016.
4. The <furbreze.com> domain name redirects to the website at www.applyguard.com which sells competing products and the domain name <furbreze.info> resolves to a parked webpage, neither of which gives Respondent a right or legitimate interest in the respective domain name and both domain names have been registered and 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 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(f), 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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant, The Procter & Gamble Company, operates in the consumer goods industry. Complainant submits that In furtherance of its business, it has registered the FEBREZE mark with the patent and trademark offices of more than 40 countries, including the USPTO (e.g., Reg. No. 2,107,914, registered Oct. 17, 1997). See Compl., at Attached Annex B. The general consensus among UDRP panelists is that registrations with governmental agencies are sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Therefore, the Panel deems Complainant’s evidence of a USPTO registration for the FEBREZE mark to be sufficient in establishing rights under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s FEBREZE mark. Complainant argues that Respondent’s <furbreze.com> and <furbreze.info> domain names are confusingly similar to the FEBREZE mark. Both disputed domain names comprise almost the entirety of Complainant’s registered FEBREZE Mark, switching out the letter “e” for the letters “u” and “r”. These changes do not distinguish the domain names from the trademark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Furthermore, the addition of the “.com” gTLD in the first domain name along with the “.info” gTLD in the second domain name does not preclude a finding of confusing similarity. The affixation of a gTLD to a disputed domain name does not serve adequately to distinguish the domain name from the mark. Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (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.”). Thus the Panel finds that Respondent’s <furbreze.com> and <furbreze.info> domain names are confusingly similar to the FEBREZE mark under a Policy ¶ 4(a)(i) confusing similarity analysis.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FEBREZE mark and to
use it in its domain names, making only minor spelling alterations;
(b) Respondent registered the disputed domain names on November 3, 2016;
(c) The <furbreze.com> domain name redirects to the website at www.applyguard.com which sells competing products and the domain name <furbreze.info> resolves to a parked webpage;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in either the <furbreze.com> or the <furbreze.info> domain name. In support of this submission, Complainant submits Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the FEBREZE mark in any manner. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Nathan Richardson .” See Compl., at Attached Ex. J; see also Compl., at Attached Ex. K. In addition, failure to establish authorization approval for a respondent to use a complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel therefore finds that Respondent is not commonly known by the disputed domain name;
(f) Complainant argues that Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name <furbreze.info> in connection with a bona fide offering of goods or services. Panels have found that displaying links to third-party websites on a webpage resolving from a confusingly similar domain name and receiving profit from Internet user confusion is 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). Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Respondent’s <furbreze.info> domain name resolves to a website displaying advertisements for and hyperlinks to third-party websites unrelated to Complainant’s goods. See Attached Ex. I. The Panel draws the inference that Respondent may gain profit through click-through referral fees when Internet users, seeking Complainant’s goods, click on a displayed link in a misleading assumption that the link is related to Complainant;
(g) Additionally, Complainant claims that Respondent infringed Complainant’s FEBREZE Marks by selling “Furbreze” branded pet deodorizers through the <furbreze.com> domain name. Use of disputed domain names for commercial gain and diversionary use displays a lack of rights or legitimate interests as it is not a bona fide offering of goods or services. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Respondent sells pet deodorizers which compete directly with Complainant’s line of FEBREZE pet deodorizers. Complainant notes that following a cease and desist letter to Respondent, Respondent rebranded its competing products from “Furbreze” to “Apply Guard”. See Compl., at Attached Ex. G. The website at the disputed domain name <furbreze.com> was updated and currently redirects to <applyguard.com> which sells competing products . See Attached Ex. H .Panels have found that using a domain name to redirect to a website which contains competing products is not a bona fide offering or a legitimate noncommercial use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore the Panel finds that the use of the disputed domain name for commercial gain and diversionary use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s demand that Complainant make an offer for the <furbreze.com> domain name is bad faith. Panels have found that an offer for sale constitutes bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Here Complainant submits that Respondent requested compensation for the disputed domain name <furbreze.com> after Complainant’s good faith in allowing Respondent additional time to comply with Complainant’s cease and desist letter. See Compl., at Attached Ex. L. Complainant also alleges bad faith and lack of rights stemming from Respondent’s offer to sell Complainant it’s “trademark” “FURBREZE” for “due compensation. See Compl., p. 13. Therefore, the Panel finds bad faith under Policy ¶ 4(b)(i).
Secondly, the registration of multiple domain names is another sign of bad faith registration as outlined by Policy ¶ 4(b)(ii). See Albertson's, Inc. v. Bennett, FA 117013 (Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). Here, Respondent registered both the <furbreze.com> and <furbreze.info> domain names. Therefore the Panel finds that Respondent engaged in bad faith pursuant to Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business as a competitor in pet deodorizers. Panels have found that the sale of competing products is a business disruption and thus constitutes evidence of bad faith. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Here Respondent’s initial “Furbreze” product, now “Apply Guard”, is clearly a competing product to Complainant’s pet deodorizers. Respondent’s website <furbreze.com> redirects to Respondent’s www.applyguard.com which sells competing deodorizing products. See Compl., at Attached Ex. H. The Panel finds that such a competing use is an example of bad faith registration under Policy ¶ 4(b)(iii).
Fourthly, Respondent’s parked domain name <furbreze.info> shows additional indicators of bad faith under Policy ¶ 4(b)(iv) . Panels have found bad faith when a respondent’s use of disputed domain names features unrelated third-party hyperlinks which may net commercial gain to the registrant. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, Complainant submits that Respondent presumably receives click-through fees from the links displayed on the website www.furbreze.info, which results in a financial benefit for Respondent and the Panel so finds. Such a use may lead the Panel to find bad faith registration as the Panel finds in the present case.
Fifthly, Complainant submits Respondent has registered and used the domain names <furbreze.com> and <furbreze.info> in bad faith. Complainant submits Respondent registered the disputed domain names with full knowledge of Complainant’s prior use of, rights in and goodwill associated with the FEBREZE marks. Actual knowledge of the Complainant’s rights in a mark has been found by panels to exemplify bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant’s use of the mark FEBREZE began prior to the registration of the <furbreze.com> and <furbreze.info> disputed domain names. Complainant submits that Respondent was aware of the FEBREZE mark and uses two pieces of evidence to support its claim: Respondent’s original “Furbreze” product which competes directly with air deodorizers sold by Complainant, and the naming of this product which was done by the slight alteration of Complainant’s mark. Therefore, the Panel finds Respondent’s actual knowledge of the FEBREZE mark establishes bad faith conduct by Respondent under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the FEBREZE mark and in view of the conduct that Respondent engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <furbreze.com> and <furbreze.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: April 11, 2017
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