GOJO Industries, Inc. v. Khan
Claim Number: FA1806001793892
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Khan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purelltouchable.com>, registered with Megazone Corp., dba HOSTING.KR.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2018; the Forum received payment on June 26, 2018.
On June 28, 2018, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <purelltouchable.com> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 July 9, 2018, the Forum served the Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 30, 2018 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@purelltouchable.com. Also on July 9, 2018, the Korean 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 August 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 manufacturer of hand-hygiene and skin-care products. Complainant uses the PURELL TOUCHABLE mark in connection with its products and services. Complainant claims rights in the PURELL TOUCHABLE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,042,988, registered on Sep. 13, 2016). See Amend. Compl. Annex E. Respondent’s <purelltouchable.com> domain name is confusingly similar to Complainant’s PURELL TOUCHABLE mark as Respondent incorporates the mark in its entirety, less the space, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <purelltouchable.com> domain name Respondent is not permitted or licensed to use Complainant’s PURELL TOUCHABLE mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name. Further, Respondent attempted to sell the disputed domain name to Complainant.
Respondent registered and uses the <purelltouchable.com> domain name in bad faith. Respondent attempted to sell the disputed domain name to Complainant. In addition, Respondent failed to respond to a cease-and-desist letter from Complainant. See Amend. Compl. Annex S. Finally, Respondent fails to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was created on May 16, 2018
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
The Panel finds that the disputed domain name, <purelltouchable.com>, is confusingly similar to Complainant’s mark, PURELL TOUCHABLE. Complainant has adequately pled its rights and interests in and to that trademark. Respondent arrives at the disputed domain name by removing a space and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Respondent is apparently not using the disputed domain name to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name, and has attempted to sell the disputed domain name to Complainant.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered and is using the disputed domain name in bad faith by attempting to sell it Complainant. Attempting to sell a disputed domain name for an amount in excess of out-of-pocket expenses can evince bad faith registration and use per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant offers a screenshot of Respondent’s offer to sell the disputed domain name for $1,000. See Amend. Compl. Annex U. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
Further, Complainant argues that Respondent’s bad faith is evident through its failure to make an active use of the disputed domain name. Failure to make an active use a disputed domain name may be evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Complainant offers screenshots of the resolving webpage for the disputed domain name, and argues they show Respondent is not actively using the disputed domain name. See Amend. Compl. Annex T. Therefore, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, given the fact that Respondent adopted Complainant’s mark in total and registered that as the disputed domain name—and the totality of the circumstances—the Panel finds that Respondent had actual knowledge of Complainant’s rights in and to the trademark PURELL TOUCHABLE.
As such, the Panel finds the Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purelltouchable.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: August 2, 2018
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