Kimberly-Clark Worldwide, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2005001894753
Complainant is Kimberly-Clark Worldwide, Inc. (“Complainant”), represented by Donna Schmitt, United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cottonelletoiletpaper.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2020; the Forum received payment on May 4, 2020.
On May 5, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cottonelletoiletpaper.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@cottonelletoiletpaper.com. Also on May 7, 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 June 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a manufacturer and distributor of bathroom tissue. Complainant has rights in the COTTONELLE trademark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 966,501, registered Aug. 21, 1973). Respondent’s <cottonelletoiletpaper.com> domain name is identical or confusingly similar to Complainant’s trademark because it incorporates Complainant’s COTTONELLE trademark in its entirety, simply adding the generic or descriptive term “toilet paper” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <cottonelletoiletpaper.com> domain name. Respondent is not authorized to use Complainant’s COTTONELLE trademark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses <cottonelletoiletpaper.com> to host a pay-per-click site.
Respondent registered and uses the <cottonelletoiletpaper.com> domain name in bad faith. Respondent uses the disputed domain name to redirect users seeking Complainant to its own webpage for profit. Further, Respondent had actual knowledge of Complainant’s rights in the COTTONELLE trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 966,501 COTTONELLE (word), registered August 21, 1973;
No. 4,964,106 COTTONELLE (word), registered May 24, 2016 for goods in class 3;
No. 5,717,032 COTTONELLE (fig), registered April 2, 2019 for goods in class 3;
No. 5,741,275 COTTONELLE (fig), registered April 30, 2019 for goods in class 3; and
No. 5,741,276 COTTONELLE (fig), registered April 30, 2019 for goods in class 16.
The disputed domain name <cottonelletoiletpaper.com> was registered on March 23, 2020.
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”).
It is noted that the Complainant claims rights in the COTTONELLE trademark based upon the registration with the USPTO. Registration of a trademark with the USPTO is a valid showing of rights in a trademark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the COTTONELLE trademark with the USPTO (e.g., Reg. No. 966,501, registered Aug. 21, 1973). Thus, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <cottonelletoiletpaper.com> domain name is identical or confusingly similar to Complainant’s trademark because it incorporates the COTTONELLE trademark in its entirety, simply adding the generic or descriptive term “toilet paper” and the “.com” gTLD to form the disputed domain name. Addition of generic and/or descriptive terms and a gTLD to a trademark does not negate any confusing similarity between a disputed domain name and trademark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
The Panel fully agrees with the Complainant’s note that the additional term “toilet paper” actually increases the likelihood of confusion because consumers associate toilet paper with the COTTONELLE trademark. Thus, the Panel find that the disputed domain name is confusingly similar to Complainant’s COTTONELLE trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant claims that Respondent does not have rights or legitimate interests in the <cottonelletoiletpaper.com> domain name because Respondent is not authorized to use Complainant’s COTTONELLE trademark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”).
Additionally, lack of authorization to use a trademark constitutes further showing that a respondent lacks rights in a trademark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant and no information suggests that Complainant has authorized Respondent to use the COTTONELLE trademark in any way. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
The Complainant also claims that Respondent doesn’t use the <cottonelletoiletpaper.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to host a pay-per-click site. Use of a disputed domain name to divert users to a site containing various commercial hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage in its complaint.
Thus, the Panel agree that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant argues that Respondent registered and uses the <cottonelletoiletpaper.com> domain name in bad faith since Respondent uses the disputed domain name to redirect users seeking Complainant to its own webpage for profit. Use of a disputed domain name to display pay-per-click hyperlinks relating to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant argues that Respondent presumably profits from the hyperlinks on its page. As previously mentioned, Complainant includes a screenshot of the resolving webpage in its complaint. The Panel agree with the Complainant, and find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the COTTONELLE trademark. Actual knowledge may be shown by the entirety of circumstances surrounding registration and use of a domain name, including the prominence of the mark per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Complainant argues that Respondent’s use of the COTTONELLE trademark makes it clear that Respondent had actual knowledge of Complainant’s rights in the trademark due to Complainant’s longstanding public use of the said trademark. The Panel agrees, and find that Respondent registered and uses the disputed domain name in 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 <cottonelletoiletpaper.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 4, 2020
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