The Gillette Company v. Lawyers Online
Ltd.
Claim Number: FA0503000434007
PARTIES
Complainant
is The Gillette Company (“Complainant”),
Prudential Tower Building, Boston, MA 02199.
Respondent is Lawyers Online Ltd.
(“Respondent”), Herefore House, 3 Offa Street, Hereford, Herefordshire HR1
2LL, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mach3power.com>,
registered with Tucows, Inc.
PANEL
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.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 7, 2005.
On
March 3, 2005, Tucows, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <mach3power.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
March 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 28,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@mach3power.com by e-mail.
A
timely Response was received and determined to be complete on March 24, 2005.
On April 5, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
alleges, among other things, that:
Complainant
owns US and European Community registrations, among others, for the trademark
MACH3 in connection with shaving razors and blades. It also owns common law trademark rights for the M3 POWER mark,
and has applications pending for the registration of that mark worldwide.
Since
its introduction in 1998, Complainant has sold more than 360 million MACH3
razors and more than 6 billion of its replacement blades worldwide.
In
January, 2004, Complainant announced its intention to begin selling a
battery-powered vibrating razor called M3 POWER, which was introduced into the
retail market in May of that year.
Since
its introduction in May of 2004, Complainant has sold more than 12 million M3
POWER razors and more than 65 million of its replacement blades worldwide.
The
MACH3 family of razors and blades are the leading brand of razors sold in North
America and Europe.
Between
2000 and 2004, Complainant spent more than 643 million dollars worldwide to
advertise the MACH3 family of shaving products, of which more than 90 million
dollars was spent to advertise the M3 POWER product alone.
Respondent
registered the disputed domain name on or about May 13, 2004. That domain name resolves to a web site
featuring both Complainant’s MACH3 family of products and the competing “King
of Shaves” brand of shaving products.
The
subject domain name is confusingly similar to both Complainant’s MACH3 mark and
its M3 POWER mark.
The
web site to which the disputed domain name resolves does not disclaim an
affiliation with Complainant.
Respondent
is not commonly known by the subject domain name.
Respondent
is not a licensee or authorized distributor of Complainant.
Respondent’s
use of the disputed domain name to attract traffic to its site cannot be
construed to be a bona fide use, because Respondent uses the domain name to
sell products that compete with Complainant’s.
Respondent
cannot claim to be making a legitimate non-commercial or fair use of the
subject domain name.
By
diverting traffic to the King of Shaves site, Respondent is disrupting Complainant’s
business and depriving it of commerce.
B.
Respondent
Respondent
alleges, among other things, that:
Respondent
registered the disputed domain name on behalf of one of its customers,
“Knowledge and Marketing Inc., Ltd.”
Respondent’s
customer is a distributor of Complainant’s products.
The
term “mach3 power” is not registered as a trademark in the UK and was therefore
thought to be suitable for use as a domain name for Respondent’s customer.
Because
the web site associated with the disputed domain name sells Complainant’s
products, Complainant receives benefit from Respondent’s customer’s use of that
name and, therefore, can claim no harm from it.
The
instant complaint is a thinly veiled attempt by Complainant to obtain the
subject domain name at little or no cost.
FINDINGS
On the basis of the allegations, evidence
and arguments presented, the Panel hereby finds as follows:
1. the domain name registered by Respondent is
confusingly similar to trademarks in
which Complainant has rights;
2. Respondent has no rights or legitimate
interests in respect of the domain name; and
3. the same domain name has been registered and
is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
Complainant has rights in the MACH3 mark and in the M3 POWER
mark. Respondent does not deny this.
Complainant’s rights in the MACH3 mark arise from use and from its
registration of that mark with the relevant US and European authorities as well
as with others worldwide. Its rights in
the mark M3 POWER arise under the common law from its use of the mark, as
evidenced by the mark’s substantial market presence and the wealth of resources
that Complainant has devoted to marketing efforts on its behalf.
Respondent does not deny that the disputed
domain name is confusingly similar to both Complainant’s MACH3 and M3 POWER
marks. Respondent could not credibly do
so. This is because there are at least
two reasons why confusing similarity of the domain name with Complainant’s
marks must be found.
The first of these reasons is that
Respondent’s joinder of two of Complainant’s marks to form a domain name,
standing alone, creates confusing similarity.
Nintendo of America Inc. v.
Pokemon, D2000-1230 (WIPO Nov. 23, 2000).
The second is that, even if it were
somehow possible to conclude that Complainant’s use of the mark M3 POWER, the
mark being of comparatively recent origin and as yet unregistered, had not
conferred common law rights on Complainant, the addition of a putatively
descriptive term like “power,” to a famous registered mark like “mach3,” would
still create confusing similarity. See
Toyota Motor Sales USA v. Rafi Hamid, D2001-0032 (WIPO Mar. 28, 2001).
Accordingly, the Panel finds that
Complainant has rights in the MACH3 and M3 POWER marks, and that the subject
domain name is confusingly similar to each of those marks.
An examination of the question whether
Respondent has any rights to or legitimate interests in the disputed domain
name proceeds generally under ¶ 4(c) of the Policy.
In
this connection, Respondent argues implicitly that its, or its customer’s use
of the domain name to solicit business which benefits Complainant, through the
sale of Complainant’s products at the associated web site, operates as a “bona
fide” offering of goods or services, thus conferring upon Respondent rights to
or interests in the domain name as contemplated by ¶ 4(c)(i) of the Policy.
This claim is spurious. Respondent here
uses the disputed domain name to attract customers to a web site at which are
sold products that compete with Complainant.
This is an infringement on Complainant’s marks without regard to any
incidental economic benefit that may be conferred upon Complainant. Such a use is not a “bona fide” offering of
goods or services. See Chanel, Inc. v. Cologne Zone, D2000-1809
(WIPO Feb. 22, 2001). The reason is
simple:
“[A] use which intentionally trades on
the fame of another cannot constitute a ‘bona fide’ offering of goods or
service…. To conclude otherwise would mean that a Respondent could rely on
intentional infringement to demonstrate a legitimate interest, an
interpretation which is obviously contrary to the intent of the Policy.” Madonna Ciccione v. Parisi, D2000-0847
(WIPO Oct. 12, 2000).
As to Policy ¶ 4(c)(ii), Respondent does not argue that it
is commonly known by the
subject domain name. Therefore, no more need be said on that
subject.
Respondent does, however, argue, in
effect, that it has rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(iii) as a “fair use” of Complainant’s mark, because
Respondent’s customer, for whom Respondent registered the name, is a
distributor of Complainant’s goods and Complainant benefits from the sales of
its products on the associated web site.
Respondent cannot prevail on this issue,
because, in the circumstances here presented, its use of Complainant’s marks
could only be justified as fair use if Respondent were to do nothing to suggest
sponsorship or endorsement of the associated web site by the trademark
holder. Here the use of both of
Complainant’s marks, and only of Complainant’s marks, in the subject domain
name, without disclaimer of affiliation, creates unavoidable confusion by
implying that either Respondent or its customer is licensed or otherwise
authorized by Complainant to use the marks in the associated web site. This is not fair use within the meaning of ¶
4(c)(iii) of the Policy. See Tacitica Int’l, Inc. v. YouCanSave.com, Inc.,
D2002-0018 (WIPO Apr. 12, 2002).
No other evidence favorable to Respondent
appearing in the record, the Panel concludes that Respondent has no rights to
or legitimate interests in the disputed domain name.
The Panel must still address the question
whether it may fairly be concluded that Respondent has registered and is using
the disputed domain name in bad faith as contemplated in Policy ¶ 4(a)(iii).
It would be enough to justify an
affirmative response to this question that Complainant has proven that the
domain name in issue is confusingly similar to its MACH3 mark, and that that
mark has for years been entered on the public registry of the United States
Patent and Trademark Office and of the competent authorities of the European
Community and other jurisdictions, so that Respondent had at least constructive
knowledge of the existence of that mark at the time he registered the subject
domain name. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000).
In addition, however, there is evidence
that Respondent uses the disputed domain name to attract business to a web site
that offers the products of Complainant’s competitors. This amounts to a species of “bait and switch”
marketing which bespeaks bad faith. See
Chanel, supra.
For these reasons, and because it is
inconceivable that Respondent could make any use of this domain name without
creating a false impression of association with Complainant, the Panel
determines that Respondent has registered and is using the subject domain name
in bad faith. See Sony Cabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000); see also Avery Dennison Corp. v. Wilkerson, FA 99593 (Nat. Arb. Forum Oct.
22, 2001).
Reverse
Domain Name Hijacking
Respondent has, without expressly using
the term, accused Complainant of attempted “reverse domain name hijacking” in
filing its complaint in this proceeding.
“Reverse domain name hijacking” is an effort aimed at using the Policy
in bad faith to deprive a domain name holder of a name to which it is
entitled. Suffice to say that, the
complaint having been upheld, Respondent cannot hope to succeed on this
argument. See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Dejan Macesic, D2000-1698 (WIPO Jan. 25, 2001).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly,
it is Ordered that the <mach3power.com> domain name be TRANSFERRED
forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 18, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page