GOJO Industries, Inc. v. Jonathan Laplante / Artiste de la Communication
Claim Number: FA2004001891566
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Jonathan Laplante / Artiste de la Communication (“Respondent”), Quebec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purellquebec.com>, registered with Tucows Domains Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2020; the Forum received payment on April 9, 2020.
On April 13, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <purellquebec.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 April 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2020 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@purellquebec.com. Also on April 14, 2020, 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 May 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it 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 brand has become very meaningful to the public over the past nearly 30 years and stands for safe, effective, and good products for consumers and the environment. Thanks to the company’s advertising and promotional efforts, the mark PURELL is world-famous and has come to symbolize the high quality of the products offered to consumers Complainant and the reputation that Complainant and its PURELL brand of products enjoy. Complainant has rights in the PURELL mark through its registration in the United States in 1992.
Complainant alleges that the disputed domain name is confusingly similar to its PURELL mark as it incorporates the mark in its entirety merely adding the geographic term “quebec.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s PURELL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and divert Internet users to a website that offers Complainant’s purportedly authentic (unauthorized) products but which Complainant believes to be counterfeit. Further, the disputed domain name was registered shortly after the World Health Organization officially declared the COVID-19 viral disease a worldwide pandemic; the resolving website appears to target panicked consumers by offering a hand sanitizer as an “ANTI-COVID-19 FORMULA”, when in fact no such product exists.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s resolving website by passing off as Complainant and offering Complainant’s unauthorized or counterfeit products for sale. The resolving website displays Complainant’s mark and logo. Respondent had actual knowledge of Complainant’s rights in the PURELL mark prior to registering the disputed domain name. Respondent also failed to respond to a cease and desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark PURELL and uses it to market hand sanitizers and skin care products.
Complainant’s rights in its mark date back to 1992.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers for sale unauthorized or counterfeit versions of Complainant’s products, and a non-existent anti-COVID hand sanitizer; it displays Complainant’s mark and logo.
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”).
The disputed domain name incorporates Complainant’s PURELL mark in its entirety and merely adds the geographic term “quebec” and the “.com” gTLD. Such changes may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Ushio Inc. v. Domain Admin / Whois Privacy Corp., FA 1863888 (Forum Nov. 4, 2019) (finding that the addition of a hyphen, a geographic designation, and a gTLD are not sufficient to distinguish the disputed domain name from Complainant’s mark); see also The Toronto-Dominion Bank v. Williams Jimenez / Voztu, FA1712001761017 (Forum January 3, 2018) (“It is commonly held geographical terms such as ‘quebec’ and ‘Canada’ fail to distinguish a Domain Name for the purposes of Policy 4(a)(i).”). The Panel therefore finds that the <purellquebec.com> domain name is confusingly similar to Complainant’s PURELL mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its PURELL mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the registrant of the disputed domain name as “Jonathan Laplante / Artiste de la Communication.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
The resolving website offers for sale unauthorized or counterfeit versions of Complainant’s products, and purports to offer a non-existent “ANTI-COVID-19 FORMULA” hand sanitizer. Such use of a disputed domain is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to disrupt Complainant’s business by offering to sell unauthorized or counterfeit versions of Complainant’s products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See NIHC, INC. and NORDSTROM, INC. v. Jonathan Shekleton, FA 1852259 (Forum Aug. 18, 2019) (“Complainant argues that Respondent registered and is using the <nordstromonlineshop.com> domain name in bad faith by disrupting Complainant’s business and diverting users to its website, where it sells counterfeit products. Disrupting a complainant’s business and diverting users to a disputed domain name that sells counterfeit goods evinces bad faith under Policy ¶¶ 4(b)(iii) and (iv)”). Accordingly, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purellquebec.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 8, 2020
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