The Gillette Company v. RFK Associates
Claim Number: FA0506000492867
PARTIES
Complainant
is The Gillette Company (“Complainant”),
represented by Michelle Brownlee, Prudential Tower Building, Boston,
MA 02199. Respondent is RFK Associates (“Respondent”), 236
Chestnut St., Needham, MA 02492.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <duracellbatteries.com>,
registered with Wild West Domains, Inc.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 10, 2005.
On
June 8, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <duracellbatteries.com>
is registered with Wild West Domains, Inc. and that 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
June 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 11,
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@duracellbatteries.com by e-mail.
A
timely Response was received and determined to be complete on July 8, 2005.
A
timely additional submission was received from Complainant and determined to be
complete on July 13, 2005.
A
timely additional submission was received from Respondent on July 18, 2005
On July 15, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
owns U.S. Registration Nos. 838,685 and 783,273 for DURACELL for various
battery products. Complainant has used
the DURACELL mark since at least as early as May 1964. The DURACELL mark has become famous globally
because of its extensive use through the world.
Respondent
registered the <duracellbatteries.com> domain name on or about
December 16, 1999. The web site offers
for sale battery products made by Complainant and other battery manufacturers,
such as Energizer, Complainant’s major competitor.
Upon
discovery of Respondent’s use of the domain name in connection with an offer to
sell batteries to an Australian distributor, Complainant contacted Respondent
via email and requested that Respondent transfer the domain name to
Complainant. Respondent sent a letter
to Complainant offering to discuss a purchase of the domain name.
B.
Respondent
Respondent
has been selling DURACELL batteries for over forty years. Respondent sells to dealers and not to the
general public. Respondent has an account number with Complainant and is
authorized to sell DURACELL batteries.
Respondent has been a battery distributor for over forty years selling
DURACELL, Eveready and at one time Kodak batteries. Respondent has had the <duracellbatteries.com> and
<eveready-batteries.com> domain names for more than six years. After receiving Complainant’s initial
correspondence, Respondent added a disclaimer, which clearly was not necessary
in as much as every link will bring one to the home page at
<rfkassociates.com>.
DURACELL
left the <duracellbatteries.com> domain name out there for someone
to grab. Respondent felt that it was
certainly qualified to own it since Respondent had been distributing DURACELL
products for approximately thirty-nine years at that time. Respondent purchased it in good faith and
has been using it in good faith to both purchase and sell DURACELL
batteries. Respondent’s web site has
been out there for six years. If
Respondent were a real threat to them why haven’t they have taken action
sooner?
C.
Additional Submissions
Complainant’s
Additional Submission.
Complainant
argues that even though Complainant has sold products to Respondent and offered
some promotional discounts and reimbursements to Respondent, that Respondent
selling Complainant’s products is not tantamount to a license to use
Complainant’s famous trademark to drive traffic to Respondent’s web site that
sells products competitive with Complainant’s products.
Respondent’s
Additional Submission.
Respondent
agrees that it never applied to DURACELL for permission to use the domain name,
but the fact remains that Respondent had it out there in the Internet for six
years. Both of our DURACELL salesmen
over several years were not only aware of its use, but they also contributed
monies to cover the cost of hosting the site for several years. Unfortunately for us, our invoices to
DURACELL do not spell out how much money was given us for mailings and how much
for the actual hosting. After six years
is there not a statute of limitations that may have run out?
FINDINGS
1. Complainant owns the DURACELL trademark
and owned it prior to the registration of the domain name at issue in this
case.
2. Complainant is a manufacturer and seller
of DURACELL batteries.
3. Respondent is a purchaser of DURACELL
batteries from Complainant. Respondent
resells the batteries to its customers.
4. Respondent registered the <duracellbatteries.com>
domain name on December 16, 1999.
5. Respondent did not seek the permission of
Complainant to use the DURACELL trademark as a domain name, nor was Respondent
authorized by Complainant to use the trademark.
6. Respondent not only sells DURACELL
batteries by use of the domain name, <duracellbatteries.com>,
Respondent also sells batteries manufactured and sold by Complainant’s
competitors.
7. The Panel takes notice that Eveready and
Energizer is the same product.
8. The domain name, <duracellbatteries.com>,
is confusingly similar to Complainant’s trademark, DURACELL.
9. Respondent had no rights to or legitimate
interests in the domain name, <duracellbatteries.com>.
10. The domain name, <duracellbatteries.com>,
was registered and used in bad faith.
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.
Complainant has established rights in the
DURACELL mark through registration of the mark with the United States Patent
and Trademark Office (Reg. Nos. 793,273 issued July 27, 1965, renewed July 27,
1985; 838,685 issued November 14, 1967, renewed November 14, 1987) and through
continuous use of the mark in international commerce since at least as early as
1964. See Vivendi Universal Games v.
XBNetVentures, Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(holding that the complainant’s federal trademark registrations establish the
complainant’s rights in the mark). See
also U.S. Office of Pers. Mgmt. v. MS Tech, FA 198898 (Nat Arb.
Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICAAN panel is not empowered to nor should it disturb that determination.”).
Respondent makes no attempt to challenge
Complainant’s mark.
Respondent’s <duracellbatteries.com>
is confusingly similar to Complainant’s DURACELL mark pursuant to Policy,
Paragraph 4(a)(i), as the additions of the term “batteries,” which describes
Complainant’s products, and the generic top-level domain “.com” are
insufficient to distinguish Respondent’s domain name from Complainant’s
mark. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
and a generic term that has an obvious relationship to the complainant’s
business). See also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ’.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus the Policy is satisfied). See also
Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent’s domain name <marriott-hotel.com>
is confusingly similar to the complainant’s MARRIOTT mark).
Complainant has satisfied the
requirements of Policy, Paragraph 4(a)(i).
There have been a number of domain name
dispute decisions which have considered the situation where a customer of the
manufacturer purchases goods from the manufacturer for resale and uses the
manufacturer’s trademark in a domain name set up for the purpose of reselling
the goods of the manufacturer and other goods not purchased from the manufacturer. The most recent such case is Nextel
Commc’ns, Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005). In the Nextel case it was found that
when the respondent sold not only complainant’s products, but also other
products which compete with complainant, such use is not a bona fide
offering of goods or services pursuant to Policy, Paragraph 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy, Paragraph 4(c)(iii).
Respondent in this case admits, and the
documents presented show, that Respondent offers for sale at <duracellbatteries.com>
not only DURACELL batteries, but contains links to “Eveready Batteries
Wholesale,” “CellBoost Batteries Wholesale” and “Reading Glasses
Wholesale.” Complainant contends that
Eveready is its biggest competitor.
Offering both a complainant’s products
and those of complainant’s competitors is not a bona fide offering of
goods or services when done without the authorization of the complainant. See
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002). See also Nat’l Collegiate Athletic Ass’n
v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used
to sell the complainant’s products without the complainant’s authority, as well
as others’ goods is not bona fide use).
See also Nikon, Inc. v. Technilab. Inc., D2000-1774 (WIPO
Feb. 26, 2001) (holding that the use of Nikon-related domain names to sell
Nikon and competitive cameras is not a legitimate use). See also Whirlpool
Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Nat.
Arb. Forum May 22, 2002) (finding that sale of complainant’s services along
with products of complainant’s competitors is not a bona fide offering
of goods).
Respondent is not commonly known by the
disputed domain name, but rather by the name “RFK Associates.” Respondent has not been licensed or
authorized to register domain names featuring Complainant’s DURACELL mark. Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy, Paragraph
4(c)(ii). See Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov.
17, 2003) (“Given the WHOIS contact information for the disputed domain, one
can infer that Respondent, Onlyne Corporate Services11, is not commonly know by
the name ‘welsfargo’ in any derivation.”)
See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000).
When Complainant makes a showing of
apparent lack of rights and legitimate interest in the domain name in
Respondent, the burden shift to Respondent to show rights and legitimate
interests. See Clerical Med. Inv. Group v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000).
Respondent has presented no evidence to carry this burden.
Complainant has satisfied the
requirements of Policy, Paragraph 4 (a)(ii).
Respondent registered the <duracellbatteries.com>
domain name with actual and constructive knowledge of Complainant’s rights
in the DURACELL mark due to Complainant’s registration of the mark with the USPTO. Respondent has been a reseller of
Complainant’s products for many years.
Actual knowledge of a complainant’s rights in the mark, inferred from
the fact that the respondent was a distributor of the complainant, along with
the respondent being on notice of its own lack of rights evidenced that the
domain name was registered in bad faith. See Associated Materials, Inc. v.
Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003).
The fact that Respondent is a reseller of
Complainant’s products does not prevent a finding of bad faith in registering
and use of the domain name. See
Proctor & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 29, 2002)
(finding that the disputed domain name was registered and used in bad faith
where the respondent, a distributor of the complainant’s products who as not a
licensee of the complainant, used the complainant’s mark in its domain
name). See also Stanley Logistics,
Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002) (finding
that the respondent, through the use of the complainant’s mark to redirect
Internet users to a website selling the complainant’s product, placed itself
without the complainant’s consent in a preferred position with respect to other
distributors, which caused consumer confusion and evidenced bad faith
registration and use of the domain name).
Furthermore, Respondent is taking
advantage of the confusing similarity between the domain name and Complainant’s
mark to attract Internet users to its commercial web site, where both Complainant’s
products and the goods of Complainant’s competitors are offered for sale. In another domain dispute case involving
this same Complainant it was found to be bad faith registration and use for a
respondent to register <duracellprocell.com> which was confusingly
similar to the DURACELL mark since respondent intentionally attempted to
attract Internet users to respondent’s web site for commercial gain by creating
a likelihood of confusion with complainant’s mark as to the source,
sponsorship, affiliation or endorsement of respondent’s web site which was
evidence of bad faith registration and use with regard to Policy, Paragraph
4(b)(iv). See Gillette Co. v. Haynes, FA 155904 (Nat. Arb. Forum
June 4, 2003). See also Utensilerie Assc. S.p.A v. C & M, D2003-0159
(WIPO Apr. 22, 2003) (finding bad faith where “The contents of the website,
offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”); see also Fanuc Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000).
Complainant satisfies the requirements of
Policy, Paragraph 4 (a)(iii).
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 <duracellbatteries.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr. Panelist
Dated: July 28, 2005
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