GOJO Industries, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1908001857544
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purellsingle.com>, registered with Dynadot, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2019; the Forum received payment on August 15, 2019.
On August 16, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <purellsingle.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@purellsingle.com. Also on August 19, 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 September 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures hand-hygiene and skin-care products. Respondent’s <purellsingle.com> domain name is confusingly similar to Complainant’s registered PURELL trademark. Respondent’s <purellsingle.com> domain name is particularly similar to Complainant’s PURELL SINGLES mark, which the USPTO registered for hand sanitizing and disinfecting goods. The domain name differs from Complainant’s PURELL mark only by the descriptive term “single.” It also differs by only one letter from Complainant’s PURELL SINGLES® trademark.
Respondent has no rights or legitimate interests in the <purellsingle.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use Complainant’s marks. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name. Additionally, Respondent is attempting to sell the disputed domain name.
Respondent registered and used the <purellsingle.com> domain name in bad faith, as Respondent is attempting to sell the disputed domain name. Additionally, Respondent is attempting to disrupt Complainant’s business by confusing Internet users into believing an affiliation exists between Respondent and Complainant. Furthermore, Respondent had knowledge of Complainant’s rights in its mark before registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, GOJO Industries, Inc. (“GOJO”), is a long-recognized manufacturer of hand-hygiene and skin-care products. The company began operations in 1946 and introduced its PURELL® Instant Hand Sanitizer in 1991, which is the company’s best-known product. The PURELL mark is world-famous. GOJO has used and promoted its PURELL family of marks in connection with hand sanitizers for nearly 30 years and holds U.S. trademark registrations claiming first-use dates dating back to October 1991. GOJO has registered its PURELL family of marks around the world. GOJO’s registered trademarks include the following marks registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”): GOJO’s PURELL registrations 1,696,754, 1,710,677, and 2,321,519. These registrations are now incontestable pursuant to 15 U.S.C. §1115(b). This incontestability constitutes conclusive evidence of GOJO’s ownership of the marks in the United States and its exclusive rights to use them. 15 U.S.C. § 1115(b).
Respondent’s <purellsingle.com> domain name is confusingly similar to GOJO’s
registered PURELL trademark. The domain name differs from GOJO’s PURELL mark only by the descriptive term “single.” In addition, the term “single” merely describes GOJO’s product because it is a single-use, individual sanitizer gel pack.
Respondent’s <purellsingle.com> domain name is confusingly similar to GOJO’s PURELL SINGLES mark, as the domain name differs from the mark by only a single letter, the “S” excluded from Respondent’s <purellsingle.com> domain.
As GOJO’s federal trademark registrations for the PURELL marks provide it with the exclusive right to use the marks in connection with the goods identified in the registrations. 15 U.S.C. § 1057(b), Respondent is not “commonly known” by the <purellsingle.com> domain name, which incorporates “PURELL” and, in large part, “PURELL SINGLES.”
As of August 15, 2019, Respondent’s domain name, <purellsingle.com> displayed no content of its own, but rather immediately forwarded a visitor to a webpage of the site, “dan.com,” a domain name buying and selling website where the <purellsingle.com> domain is offered for sale, listed by a “Private seller” for the price of $988.00. The lack of content, along with the offer for sale, show that Respondent has no rights or legitimate interests in the domain.
Respondent registered and used the <purellsingle.com> domain name in bad faith by (1) attempting to confuse consumers into believing that Respondent is somehow affiliated with or sponsored or approved by GOJO, (2) by attempting to sell the domain name for an excessive price, and (3) by registering and using the domain name with actual knowledge of GOJO’s trademark rights.
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 has rights in the PURELL and PURELL SINGLES marks under Policy ¶ 4(a)(i) through registration with the USPTO. Respondent’s <purellsingle.com> domain name is confusingly similar to Complainant’s PURELL and PURELL SINGLES marks.
Respondent has no rights or legitimate interests in the <purellsingle.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been authorized to use Complainant’s marks. The WHOIS of record identifies the Registrant as “Super Privacy Service LTD c/o Dynadot.”
Respondent fails to use the <purellsingle.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is passively holding the disputed domain name and is attempting to sell the disputed domain name.
Respondent registered and used the <purellsingle.com> domain name in bad faith, as Respondent is attempting to sell the disputed domain name, Policy ¶ 4(b)(i), and attempting to disrupt Complainant’s business, Policy ¶ 4(b)(iii). Furthermore, as Respondent had knowledge of Complainant’s rights in the PURELL and PURELL SINGLES marks at the time of registering the <purellsingle.com> domain name, Respondent registered and used the domain name in Policy ¶ 4(a)(iii) bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purellsingle.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 23, 2019
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