DECISION

 

Ecolab USA Inc. v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** / web master

Claim Number: FA2310002066081

 

PARTIES

Complainant is Ecolab USA Inc. ("Complainant"), represented by Danae T. Robinson of Pirkey Barber PLLC, Virginia, USA. Respondent is Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** / web master ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ecolabwatermark.com>, registered with Dynadot 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.

 

 The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 12, 2023; Forum received payment on October 12, 2023.

 

On October 12, 2023, Dynadot Inc confirmed by e-mail to Forum that the <ecolabwatermark.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 October 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2023 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@ecolabwatermark.com. Also on October 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Ecolab USA Inc. ("Complainant" or "Ecolab") is a global leader in water, hygiene, and infection prevention solutions and services. In addition to its common law trademark rights resulting from decades of use, Ecolab also owns numerous registrations for the mark ECOLAB. See, e.g., U.S. Reg. Nos. 3965037, 3976921, 4014916, 4021579, and 4152481. Respondent's <ecolabwatermark.com> is confusingly similar to Complainant's mark as it wholly incorporates the mark and adds the term "watermark" and the ".com" generic top-level-domain ("gTLD"). Complainant also contends that the disputed domain name is identical to Complainant's mark ECOLAB WATERMARK.

 

Respondent has no legitimate interest in the <ecolabwatermark.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the ECOLAB mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is offering to sell the disputed domain name for a sales price of $2588.  

 

Respondent registered and uses the <ecolabwatermark.com> domain name in bad faith. Respondent knew of Complainant's well-known ECOLAB mark and Complainant's ECOLAB WATERMARK mark prior to registration of the domain name. The disputed domain name is highly likely to cause confusion. The domain name is being passively held. Respondent acquired the domain name primarily for the purpose of selling the domain name for a substantial profit. The use of a privacy service to register the disputed domain name gives rise to a rebuttable presumption of Respondent's bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Ecolab is a global leader in water, hygiene, and infection prevention solutions and services. Ecolab's 47,000 associates work to deliver comprehensive solutions, data-driven insights, and on-site service to optimize water and energy use, promote safe food, maintain clean environments, and improve operational efficiencies for customers in various markets in more than 170 countries. 

 

Ecolab has continuously used the well-known mark ECOLAB for over 30 years. Ecolab uses the mark ECOLAB extensively in connection with a variety of products and services, including water treatment, climate, and sustainability products and services. Many of the world's most recognizable brands rely on Ecolab and its comprehensive solutions to help ensure operational efficiencies, product integrity, and brand reputation. In addition to its common law trademark rights resulting from decades of use, Ecolab also owns numerous registrations for the mark ECOLAB. See, e.g., U.S. Reg. Nos. 3965037 (reg. May 24, 2011), 3976921 (reg. June 4, 2011), 4014916 (reg. Aug. 23, 2011), 4021579 (reg. September 6, 2011), and 4152481 (reg. June 5, 2012).

 

Respondent's <ecolabwatermark.com> domain name is confusingly similar to Complainant's ECOLAB registered and common law mark.

 

Ecolab also uses several other ECOLAB-formative marks for various products and services. Specifically, Ecolab uses the mark ECOLAB WATERMARK in connection with a study that examines the state of water stewardship by consumers in several countries. Ecolab filed a U.S. trademark application for ECOLAB WATERMARK on August 21, 2023.

 

Respondent registered the <ecolabwatermark.com> domain name on August 22, 2023.

 

Respondent has no rights or legitimate interests in the <ecolabwatermark.com> domain name. Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Instead, Respondent registered the disputed domain name one day after Complainant filed a U.S. trademark application for an identical mark and Respondent is offering to sell the disputed domain name for a high sales price of $2588.

 

Respondent registered and uses the <ecolabwatermark.com> domain name in bad faith. Respondent had actual knowledge of Complainant's well-known ECOLAB mark and Complainant's ECOLAB WATERMARK mark prior to registration of the domain name. The disputed domain name is highly likely to cause confusion. The domain name is being passively held. Respondent acquired the domain name primarily for the purpose of selling the domain name for a substantial profit. The use of a privacy service to register the disputed domain name gives rise to a rebuttable presumption of Respondent's bad faith; which Respondent has failed to rebut.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the <ecolabwatermark.com> name under Policy 4(a)(i) based upon registration with the USPTO and upon its common law mark.

 

Respondent's <ecolabwatermark.com> is confusingly similar to Complainant's mark as it wholly incorporates the mark and adds the term "watermark" and the ".com" generic top-level-domain ("gTLD"). Although Respondent's disputed domain name is identical to Complainant's recent application for registration of ECOLAB WATERMARK, it is unnecessary to determine rights under the trademark application, as the Panel has determined that Complainant has rights under the ECOLAB registrations.

 

Rights or Legitimate Interests

Respondent does not have rights or legitimate interests in the <ecolabwatermark.com> domain name because Respondent is not licensed or authorized to use Complainant's ECOLAB or ECOLAB WATERMARK marks and is not commonly known by the disputed domain name.  

 

Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Instead, Respondent registered the disputed domain name one day after Complainant filed a U.S. trademark application for an identical mark and Respondent is offering to sell the disputed domain name for a high sales price of $2588.

 

As the domain name is solely used to forward visitors to a parking page offering the domain name for sale, it appears Respondent acquired the disputed domain name with the intention of selling it for a significant profit, thus showing Respondent has no legitimate rights in the domain name. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., Case No. FA 1783121 (Forum June 1, 2018) (holding that "Offering a confusingly similar domain name for sale to the public is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use"). Moreover, passive holding of a domain name by using it as a parking page, as Respondent is doing, is evidence that the Respondent has no rights or legitimate interests in the domain name. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., Case No. FA 1783121 (Forum June 1, 2018) (holding that "Offering a confusingly similar domain name for sale to the public is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use").

 

Registration and Use in Bad Faith

Registrant registered and is using the domain name in bad faith.

 

Complainant had rights in its ECOLAB mark for over three decades before the Respondent registered the <ecolabwatermark.com> domain. Respondent had actual knowledge of Complainant's rights prior to registration. Respondent knew of Complainant's well-known ECOLAB mark and Complainant's ECOLAB WATERMARK mark based on Respondent's incorporation of identical terms into a domain name registered the day after Complainant filed a trademark application for ECOLAB WATERMARK. See Diners Club International Ltd. v. N.A. a/k/a Amer Bakri, FA 1079846 (Forum Nov. 1, 2007) (finding bad faith, in part, upon a recognition of a mark's global fame and the corresponding notice such fame provides to a would-be registrant).

 

Respondent is using the domain name to attract, for commercial gain, internet users to Respondent's website by creating a likelihood of confusion with the Complainant's trademark. Policy 4(b)(iv).

 

The domain name is being passively held. See, e.g., Warner Bros. Entertainment Inc. v. David Haddad / Warner Bros, Case No. FA 1736053 (Forum July 17, 2017) (stating, "panels have routinely found bad faith use and registration where a respondent passively holds a domain name," transferring warnerbroscareers.com.co).

 

Respondent offered to sell the domain name for $2588, an amount presumably greater than Respondent's out-of-pocket registration costs. Therefore, Respondent acquired the domain name primarily for the purpose of selling the domain name for a substantial profit. See McMullan Bros., Limited, et. al. v. Web Names Ltd, Case No. D2004-0078 (WIPO April 16, 2004) "an offer to sell the Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name is not only evidence of, but conclusively establishes that the Domain Name has been registered and is being used in bad faith").

 

The use of a privacy service to register the disputed domain name gives rise to a rebuttable presumption of Respondent's bad faith. See, e.g., United States Postal Service v. Gary Wiggin / JY, FA 1708540 (Forum Jan. 30, 2017) ("Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, this Panel is willing to find bad faith registration on these grounds alone."). Respondent has failed to rebut the presumption of bad faith.

 

DECISION

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 <ecolabwatermark.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: November 20, 2023