National Arbitration Forum

 

DECISION

 

Orange Glo International, Inc. v Roswell International Ltd c/o oxy-clean.com

Claim Number: FA0503000440119

 

PARTIES

Complainant is Orange Glo International, Inc. (“Complainant”), represented by Salvador K. Karottki, of Goldberg, Kohn, Bell, Black, Rosenbloom and Moritz, Ltd., 55 East Monroe Street, Suite 3700, Chicago, IL 60603.  Respondent is Roswell International Ltd c/o oxy-clean.com (“Respondent”), represented by Angus Doyle, c/o 18 Riverside Steps, Bristol BS4 4RH, United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <oxy-clean.com>, registered with Wild West Domains, Inc.

 

PANEL

The undersigned Daniel B. Banks, Jr., Panelist, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2005.

 

On March 11, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <oxy-clean.com> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 6, 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@oxy-clean.com by e-mail.

 

A timely Response was received and determined to be complete on April 4, 2005.

 

An Additional Submission was timely received from Complainant on April 6, 2005 and was considered.

 

On April 7, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Orange Glo International, Inc. ("Complainant" or "Orange Glo") is a company that manufactures, distributes and sells household cleaning products, including a variety of cleaning products sold under the OXICLEAN trademark (the "Mark").  Orange Glo, and/or its predecessor, have used the Mark in commerce since at least as early as August 1992 and have registered the Mark on the Principal Register of the United States Patent and Trademark Office (U.S. Reg. No. 2,430,007) and with the Office For Harmonization in the Internal Market (CTM Reg. No. 001507805).  These registrations are in full force and effect. 

          

Orange Glo has expended considerable time, money and resources developing, promoting and advertising its OXICLEAN brand cleaning products through various media in interstate commerce, such that the Mark has met with widespread public approval.  Orange Glo has sold tens of millions of units of OXICLEAN brand cleaning products and has had sales of OXICLEAN brand products well in excess of $100 million.  The Mark has been widely broadcast to millions of viewers through infomercials, commercials, and direct-to-consumer broadcasts (such as those of the Home Shopping Network) aired across the United States and worldwide and has been featured in print ads placed worldwide.  As a result of the extensive sales, advertising and promotion of Orange Glo's OXICLEAN brand cleaning products, and as a result of Orange Glo's quality standards, the Mark has earned significant goodwill and commercial recognition.

Orange Glo also promotes and advertises its OXICLEAN brand cleaning products on its websites located at <oxiclean.com> and <greatcleaners.com>.  Orange Glo also owns the domain names <oxiclean.us>, <oxiclean.info>, and <oxyclean.info>, which redirect users to Orange Glo's <greatcleaners.com> site.

The Mark is a suggestive word-mark which is inherently distinctive and, therefore, strong.  That strength has been enhanced by Orange Glo's extensive advertising and promotion, as well as Orange Glo's widespread sales, of its OXICLEAN brand products.

1 – The disputed domain name is confusingly similar to Complainant’s Mark.

Respondent has registered the <oxy-clean.com> domain name ("Domain Name").  Respondent's second-level domain name, which consists solely of a misspelling of OXICLEAN with the addition of a hyphen, is confusingly similar to Orange Glo's Mark.

The confusion that necessarily exists between Respondent's Domain Name and Orange Glo's Mark is magnified by the fact that Respondent is using the Domain Name in order to promote the sale or offering of goods by third party companies that are competitive with Orange Glo's goods.  Specifically, Respondent's website, located at the disputed Domain Name, consists solely of links to third-party websites, some of which are competitors of Orange Glo.  For example, Respondent's website contains a link to <oxyboost.com>, which is a website operated by Natural Choices Home Safe Products L.L.C. ("Natural Choices"), one of Orange Glo's competitors.  Respondent's registration of the Domain Name is likely to cause confusion or mistake with respect to Orange Glo's registered Mark based upon the strength of Orange Glo's Mark and the nearly identical nature of Respondent's second-level Domain Name and Orange Glo's registered Mark.

 

           2 – Respondent has no rights or legitimate interests in the disputed domain name.

Respondent does not have any legitimate rights or interests in the domain name because neither Respondent nor any business operated by Respondent, nor any product offered by Respondent, has been commonly known by the Domain Name.  Also, Respondent should be considered to have no rights or legitimate interests in the domain name because its registration infringes Complainant’s federally-registered trademark. 

 

Respondent's use of the Domain Name is in connection with Sedo.com LLC's domain name parking service, which allows Respondent to "earn money from [its] domain name without needing to develop" its own site, according to the screen shot of Sedo.com's website, explaining the domain name parking program, attached hereto as Exhibit E.  According to Sedo.com's website, attached as Exhibit E, Respondent "parks" the disputed Domain Name with Sedo.com, which then provides targeted ad links, some of which link to Orange Glo's competitors, and Respondent earns "between $0.03 and $1.50" for every time an Internet user clicks on an ad.  In other words, the sole purpose behind Respondent's registration and operation of the disputed domain name is to make money from redirected Internet traffic.  Such use does not constitute a bona fide offering of goods or services. 

 

3 – The disputed domain name was registered and is being used in bad faith. 

 

On or about March 4, 2005, counsel for Orange Glo sent a letter to Respondent demanding transfer of the Domain Name.  As of the date of this filing, Respondent has refused, without justification, to take the requisite steps to transfer the Domain Name to Orange Glo.  Respondent's decision to willfully ignore and disregard Complainant's rights is evidence of bad faith registration and use.  Furthermore, Respondent was also on constructive notice of Orange Glo's Mark when it registered the disputed Domain Name, which is evidence of bad faith. 

 

Respondent's practice of using Orange Glo's Mark as its Domain Name, changing only one letter and adding a hyphen, which creates a misspelling of Orange Glo's Mark and its <oxiclean.com> domain name, is known as "typosquatting."  Typosquatting itself constitutes evidence of bad faith registration and use.  See Nat'l Ass'n of Prof'l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.").

 

Respondent's Domain Name should be considered to have been registered and used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party, namely Orange Glo, pursuant to Paragraph 2 of the Uniform Domain Name Dispute Resolution Policy.

 

Respondent is using the Domain Name in order to channel Internet users to third-party websites, some of which compete directly with Orange Glo, in order to earn per-click revenue.  Upon information and belief, Respondent has registered and is using the Domain Name in the manner alleged in order to profit from Orange Glo's Mark, to profit from consumer confusion regarding Orange Glo's Mark, and to disrupt Orange Glo's business.

 

Respondent is also offering to sell the disputed domain name according to the screen shot from Sedo.com’s website.  On information and belief, this constitutes bad faith registration of the domain name to sell, rent, or otherwise transfer the name for valuable consideration in excess of Respondent’s out-of-pocket expenses. 

 

B. Respondent 

Respondent agrees that there is similarity with several other actual identical (UDRP Paragraph 4(a)(i)) marks of the same name.

The following are direct quotes from the Response:

 

It has been claimed that the respondent’s use of the domain name on the respondent’s website solely links to third party websites, some of which are competitors of Orange Glo and as are indeed also Orange Glo, and/or its affiliates (ref. complainants Exhibit C.)   Upon submitting a domain name for inclusion into the SEDO program, SEDO themselves choose the most relevant keyword for any particular domain.  Upon being made aware of a potential confusion the domain was withdrawn from SEDO, in order to investigate the claims made by the Complainant.

 

Respondent’s registration of the domain name is unlikely to cause confusion to the complainants mark. Group Exhibit D. forwarded from SEDO shows that the traffic to the disputed domain is originating from Asia, the US and UK traffic are likely to be from the Complainant and the Respondent during the course of this UDRP.  We would therefore submit that any confusion is in no way related to the Complainants mark.  We would also like to submit that should any confusion arise in the future; [it] would be a direct cause of the complainant and/or its affiliates, upon information and belief the complainant and/or its affiliates are sponsoring the keyword “OXYCLEAN” through search engines like Google, whereas if someone was to make a search for the term “OxyClean”, the complainant or its affiliates would monopolize the search results.  This is further enhanced by the Complainants use of the actual term OXYCLEAN on there own website, please note Exhibit E. the use of the Term OXYCLEAN is in the title tag (tag is highlighted) of the complainants website, this Bad Faith method of Keyword Hijacking is used for the purpose of increasing search engine ranking for a specific keyword or key phrase or in this case a potential tactic to discredit the Respondent and therefore add weight to the Complainants frivolous claims.

 

The registration of Internet domain names is still built on the foundation of registrations on a first come first serve basis and there in is construed as legitimate rights.

 

The disputed domain name oxy-clean.com regardless of the complainants claims, does not infringe on the complainants trademark no more than the Complainants Trademark does not infringe on the Oxy Corporation Trademark Oxy-Clean registered in 1983.

 

The domain name is parked with SEDO®, with respect the term ‘parked’ is “To place or leave temporarily”.  The complainants claim that the sole purpose of registration and operation of the disputed domain name was to make money from redirected internet traffic, that comment is somewhat speculative, and shows ignorance and bad faith to the respondent and the internet.  Parking a domain, gives the owner the ability to gain from search engine recognition until such time as a complete website is launched, if the domain name was not parked, search engines would not place a domain in its index.  Of course there is an added bonus of a small revenue stream whilst the domain is in a parked position, these count towards out of pocket costs until such times as the domain name and operation costs can maintain themselves financially.

 

There was no intent to confuse against the complainants mark, and can therefore not be construed as a deliberate misspelling of the complainants mark or a registration in bad faith.

 

Respondent then asserts that Complainant has no exclusive rights in the domain name because the exact term OXY-CLEAN was in fact “born on 1983 by a Korean Corporation aptly now named Oxy…”.  Respondent also states that the exact term OXYCLEAN is a trademark for Engelhard Corporation, USA and for Beecham, Inc. USA.  There are also listed owners of the same or similar mark in the United Kingdom, Canada and the rest of the world.  Further, several others in the U.S. have this as a common law trademark.  Respondent then suggests that the term OXY CLEAN is in fact a generic term and cannot be considered as a bad faith registration against the Complainant.  Respondent says it there is no evidence that it had constructive notice of Complainant’s mark and ICANN policy does not require to carry out a trademark search in every county of the world for conflicting trademark rights.

 

C. Additional Submissions

Complainant timely filed an Additional Submission, which responds to Respondent’s arguments.  Basically, the Additional Submission says that Respondent’s listing of alleged third party registrations or uses of OXY CLEAN and the alleged genericness of OXY CLEAN are factually inaccurate and irrelevant to this proceeding.  First, if OXYCLEAN is being used by other entities as a trademark, it does not prove that it is a generic term.  It proves the opposite: OXYCLEAN is being used as a trademark and not as a generic word.  Second, one of Respondent’s examples of other usage is Engelhard Corporation.  That usage is pursuant to a settlement between Complainant and Engelhard.  Finally, such other third-party usage is irrelevant to this proceeding.  That is no aid to Respondent who must prove its rights and legitimate interests in the domain name.

 

Complainant then argues the confusing similarity between its mark and the disputed domain name, Respondent’s lack of a legitimate interest in the domain name and Respondent’s bad faith.  With respect to the telephone call with Complainant’s counsel, not only did Respondent fail to offer any legitimate interests in or reasonable basis for retaining the domain name, the Respondent threatened to transfer the domain name just so Orange Glo would not get it. 

 

Furthermore, Respondent was on constructive notice of Orange Glo’s mark due to its CTM Registration for the European Union, where Respondent is located.  Also, Respondent registered the domain name and then made a general offer to sell it. 

 

With respect to Respondent’s commercial activity and use of the Domain Name, Respondent admits that it is profiting off its website that lists links to Orange Glo's competitors, although it disagrees that any negative consequences should flow from this.  Respondent specifically states that parking its Domain Name with the SEDO service provides it with "an added bonus of a small revenue stream whilst the domain is in a parked position."  Id.  Consequently, the purpose behind Respondent's registration and operation of its Domain Name is to "make money from redirected Internet traffic," sending Internet users from its website to third party websites, some of which compete directly with Orange Glo. 

 

As to Respondent’s naked assertion of reverse domain name hijacking, Complainant says that it is without merit.  "To establish reverse domain hijacking, the respondent must show knowledge on the part of the complainant of the respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge."  Sydney Opera House Trust v. Trilynz Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000).  Accordingly, this case is not one involving reverse domain hijacking.

FINDINGS

1 – The disputed domain name is confusingly similar to Complainant’s mark.       

2 – Respondent has no right or legitimate interests in the domain name.

3 – The domain name was 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the OXICLEAN mark through registration of the mark in the United States with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,430,077 issued February 20, 2001) and in Europe with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 001507805 issued May 7, 2001) as well as through continuous use of the mark in commerce since 1992.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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.  The respondent has the burden of refuting this assumption); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Respondent’s <oxy-clean.com> domain name is confusingly similar to Complainant’s OXICLEAN mark as the domain name is phonetically identical to Complainant’s mark.  It simply replaces the letter “i” in Complainant’s mark with the letter “y” and inserts a hyphen.  The Panel finds that such minor alterations are not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant’s EASYJET mark and therefore that they are confusingly similar).

 

Furthermore, the Panel finds that the addition of the generic top-level domain “.com” is insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).    

 

Rights or Legitimate Interests

 

Respondent is neither commonly known by the <oxy-clean.com> domain name nor authorized to register domain names featuring Complainant’s OXICLEAN mark.  Thus, the Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Furthermore, Respondent is using the <oxy-clean.com> domain name to operate a website that features links to Complainant’s competitors.  Such competing use is not a use in connection with 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).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s appropriation of the complainant’s mark to market products that compete with the complainant’s goods does not constitute a bona fide offering of goods and services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that the respondent had no rights or legitimate interests in a domain name that used the complainant’s mark to redirect Internet users to a competitor’s website).

 

Registration and Use in Bad Faith

 

Respondent is using the confusingly similar domain name to operate a website that features links to Complainant’s competitors.  Such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Also, Respondent receives click-through fees for diverting Internet users to various websites, including those of Complainant’s competitors.  Since Respondent’s <oxy-clean.com> domain name is confusingly similar to Complainant’s OXICLEAN mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting websites.  Therefore, the Panel concludes that Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <oxy-clean.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Daniel B. Banks, Jr., Panelist
Dated: April 21, 2005