GOJO Industries, Inc. v. Isaac Goldstein
Claim Number: FA1904001837045
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purellsanitizer.com>, registered with DropCatch.com 403 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2019; the Forum received payment on April 2, 2019.
On April 2, 2019, DropCatch.com 403 LLC confirmed by e-mail to the Forum that the <purellsanitizer.com> domain name is registered with DropCatch.com 403 LLC and that Respondent is the current registrant of the name. DropCatch.com 403 LLC has verified that Respondent is bound by the DropCatch.com 403 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 April 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2019 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@purellsanitizer.com. Also on April 5, 2019, 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 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a long recognized manufacturer of hand-hygiene and skin-care products. Complainant has rights in the PURELL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,696,754, registered Jun. 23, 1992). Respondent’s <purellsanitizer.com> domain name is confusingly similar to Complainant’s PURELL mark as Respondent incorporates the mark in its entirety, while adding descriptive term “sanitizer” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <purellsanitizer.com> domain name. Respondent is not authorized to use Complainant’s PURELL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to display an unrelated website link that requests users to install an electronic program, which is presumably malware. As of March 14, 2019, the disputed domain name resolves to an inactive website. Further, Respondent has attempted to sell the disputed domain name to Complainant.
Respondent registered and uses the <purellsanitizer.com> domain name in bad faith. Respondent attempts to sell the disputed domain name to Complainant and to the general public. Further, Respondent had actual knowledge of Complainant’s rights in the PURELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is GOJO Industries, Inc. (“Complainant”), of Akron, Ohio, USA. Complainant is the owner of numerous domestic and international registrations for the mark PURELL and variations thereof, constituting the family of PURELL marks, which have been registered and used in connection with soap, dispensers, sanitizers, disinfectants, sterilizers and other related goods. Complaint has continuously used its PURELL mark in connection with its hand sanitizer product since at least as early as 1991.
Respondent is Isaac Goldstein (“Respondent”), of Hong Kong, China. Respondent’s registrar’s address is unlisted. The Panel notes that the <purellsanitizer.com> domain name was registered on or about December 20, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the PURELL mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,696,754, registered Jun. 23, 1992). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the PURELL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <purellsanitizer.com> domain name is confusingly similar to the PURELL mark, as the name incorporates the mark in its entirety while adding the descriptive term “sanitizer” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel here finds that the <purellsanitizer.com> domain name is confusingly similar to the PURELL mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <purellsanitizer.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PURELL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the disputed domain name as “Isaac Goldstein”. No information on record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel here finds that under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <purellsanitizer.com> domain name.
Complainant further argues that Respondent’s use of the <purellsanitizer.com> domain name to infect users’ computers with malware indicates it does not have rights or legitimate interests in the name. Use of a disputed domain name to distribute malware does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which prompts users to click a “security check” link, that purportedly contains malware. The Panel here finds that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts Respondent’s inactive holding of the <purellsanitizer.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not currently resolve to an active webpage. The Panel finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts Respondent’s attempts to offer the <purellsanitizer.com> domain name for sale further indicates it does not have rights or legitimate interests in the name. A respondent’s offer to sell a domain name to the general public or to a complainant directly can indicate the respondent lacks rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots indicating the domain name in dispute resolves to a website that purports to offer the name for sale. The Panel here finds Respondent lacks rights and legitimate interests in the <purellsanitizer.com> domain name per Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends Respondent’s only purpose in registering the <purellsanitizer.com> domain name was to gain commercially from the sale of the same, thus indicating its registration and use in bad faith. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, thus supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registration of the PURELL mark, and Respondent’s current (non)use of the domain name, as well as Respondent’s offer to sell the domain name, it is evident Respondent’s purpose for registering and using the domain name was, and is, to sell the name for a profit. The Panel here finds Respondent registered and used the <purellsanitizer.com> domain name in bad faith per Policy ¶ 4(b)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <purellsanitizer.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 13, 2019
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