Orange Glo International, Inc. v. Jeff Blume
Claim Number: FA0208000118313
Complainant is Orange Glo International, Inc., Greenwood Village, CO (“Complainant”) represented by Oscar L. Alcantara, of Goldberg, Kohn, Bell, Black, Rosenbloom & Moritz, LTD. Respondent is Jeff Blume, Redmond, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oxiclean.us>, registered with Register.com.
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 National Arbitration Forum (the “Forum”) electronically on August 15, 2002; the Forum received a hard copy of the Complaint on August 16, 2002.
On August 22, 2002, Register.com confirmed by e-mail to the Forum that the domain name <oxiclean.us> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2002, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following contentions:
1. Respondent’s <oxiclean.us> domain name is identical to Complainant’s registered OXICLEAN mark.
2. Respondent does not have any rights or legitimate interests in the <oxiclean.us> domain name.
3. Respondent registered or used the <oxiclean.us> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant’s OXICLEAN mark was registered (Reg. No. 2,430,077) on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on February 20, 2001, while first use of the mark in commerce is listed as August of 1992.
Complainant is a growing company that manufactures, distributes and sells household cleaning products, including a multi-purpose granulated cleaning compound sold under the OXICLEAN trademark. Complainant asserts that it has used the trademark registration symbol in association with the OXICLEAN mark, advertising materials and other related documents intended for public distribution; thus, indicating its registered trademark status. As of the date of the Complaint, Complainant had sold over 20,000,000 units of the OXICLEAN brand-cleaning compound. Complainant also operates from the <oxiclean.com> domain name.
Complainant has expended considerable time, money and resources developing, promoting and advertising its OXICLEAN brand cleaner by way of various media. As a result of Complainant’s intensive advertising and promotional campaign, its OXICLEAN mark and corresponding product have earned significant goodwill and commercial recognition.
Respondent registered the <oxiclean.us> domain name on April 25, 2002. Complainant’s examination of Respondent’s use of the domain name indicates that Respondent’s domain name initially resolved to a website that promoted the sale of Clean-N-Brite, a multi-purpose granulated cleaning compound. Furthermore, when Respondent’s website is printed it displays Complainant’s OXICLEAN mark in “hidden text.” Respondent also maintains an additional website located at <clean-n-brite.com>, which promotes the sale of Respondent’s Clean-N-Brite product. Complainant’s investigation of Respondent’s <clean-n-brite.com> domain name and corresponding website reveals that Respondent utilizes Complainant’s OXICLEAN mark in the metatags of the website.
After receiving a cease and desist letter from Complainant demanding transfer of the domain name registration, Respondent changed the <oxiclean.us> domain name to resolve to <greatcleaners.com> instead of maintaining the original website that advertised its Clean-N-Brite product.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has established rights in the OXICLEAN mark by securing registration of its mark with the USPTO, and subsequent continuous use of the mark.
Respondent’s <oxiclean.us> domain name is identical to Complainant’s OXICLEAN mark. Respondent’s second-level domain “oxiclean” is identical in every respect to Complainant’s OXICLEAN mark, mirroring the mark in form and spelling. Because the addition of a top-level domain, such as “.us,” is required of domain name registrants, it is inconsequential when conducting a Policy ¶ 4(a)(i) “confusingly similar” analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because Respondent failed to submit a Response in this proceeding and Complainant’s assertions remain unopposed, the Panel may resolve all reasonable inferences in favor of Complainant. See 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”).
Furthermore, subsequent to Complainant establishing its prima facie case, the burden effectively shifts to Respondent who must show rights or legitimate interests in the domain name. As stated, Respondent failed to respond, thereby failing to produce any set of circumstances that could establish rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Complainant’s investigation of Respondent’s activities concerning the infringing domain name indicates that Respondent initially used Complainant’s OXICLEAN mark to divert Internet users to its website. Respondent’s domain name originally resolved to a website that offered goods that compete with Complainant’s cleaning product. Therefore, Respondent’s opportunistic use of Complainant’s mark in a domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii). Furthermore, because Respondent is misleadingly diverting potential consumers of Complainant’s OXICLEAN product to its competing website, Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv). Respondent’s intention to mislead consumers is evidenced in its misuse of the OXICLEAN mark in the hidden text on the website attached to the subject domain name. See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).
There is no evidence that suggests Respondent is the owner or beneficiary of a trademark or service mark indicating rights in the <oxiclean.us> domain name under Policy ¶ 4(c)(i). Additionally, Respondent has failed to proffer any evidence that would suggest it is commonly known by the domain name pursuant to Policy ¶ 4(c)(iii). In fact, Complainant’s Submission includes evidence that Respondent actually operates under the guise of “Clean-N-Brite,” and the WHOIS information lists Jeff Blume as the registrant of the infringing domain name. Therefore, there is no apparent connection between the domain name and Respondent. See Nat’l Acad. of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that it had no trademark or service marks identical to <grammy.biz> and therefore had no rights or legitimate interests in the domain name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in the domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy paragraph 4(b) provides a listing of various instances where the conduct of Respondent would constitute evidence of registration or use in bad faith. However, this list is not an exhaustive representation of bad faith conduct and numerous other examples of bad faith behavior have been articulated by previous panel decisions. The Panel may look at the “totality of circumstances” in determining if Respondent’s conduct reaches the threshold of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Circumstances indicate that Respondent was aware of Complainant’s rights in the OXICLEAN mark prior to seeking registration of that mark in a domain name. More specifically: Respondent intentionally incorporated Complainant’s mark in the content of its website; Respondent is a competitor of Complainant, thereby operating in the identical industry and offering similar goods; and, Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof. Respondent’s registration of a domain name, despite knowledge of Complainant’s preexisting rights, indicates bad faith registration pursuant to Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Dispute Resolution Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <oxiclean.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 4, 2002
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