Ecolab USA Inc. v. John Schramm
Claim Number: FA2108001957831
Complainant is Ecolab USA Inc. (“Complainant”), represented by Elizabeth M. Stafki, Texas, USA. Respondent is John Schramm (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecolabmn.com>, registered with 1&1 IONOS SE.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2021; the Forum received payment on August 2, 2021.
On August 3, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <ecolabmn.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2021 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@ecolabmn.com. Also on August 4, 2021, 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 August 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Ecolab USA Inc., is a global leader in water purification, hygiene, and infection prevention products. Complainant has rights in the ECOLAB and OASIS marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., ECOLAB – Reg. 1,525,025, registered Feb. 21, 1989; OASIS – Reg. 1,732,365, registered Nov. 17, 1992). The disputed domain name is identical or confusingly similar to Complainant’s ECOLAB mark, only differing by the addition of the geographic term “MN,” the abbreviation for Minnesota, the state where Complainant’s headquarters is located, along with adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the ECOLAB or OASIS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host a parked website to display pay-per-click links related to Complainant’s ECOLAB and OASIS marks. Respondent also uses an email account associated with the disputed domain name to attempt to phish for the personal information from job seekers looking to be hired by Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses an email account associated with the disputed domain name to attempt to defraud job seekers of their personal and financial information, disrupting Complainant’s business and likely leading to commercial gain for Respondent. Respondent’s use of the disputed domain name to host a parked website with monetized hyperlinks also demonstrates bad faith attraction to commercial gain. The use of a privacy service may also demonstrate bad faith. Additionally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the ECOLAB and OASIS marks prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on July 1, 2021.
2. Complainant has rights in the ECOLAB and OASIS marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., ECOLAB – Reg. 1,525,025, registered Feb. 21, 1989; OASIS – Reg. 1,732,365, registered Nov. 17, 1992).
3. Respondent uses the domain name to host a parked website providing links related to Complainant’s business.
4. Respondent uses the domain name to host a parked website providing links related to Complainant’s business.
5. Respondent uses an email account associated with the disputed domain name to attempt to phish for the personal information from job seekers looking to be hired by Complainant.
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 asserts rights in the ECOLAB and OASIS marks through registration with the USTPO. Registration of a mark with the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Complainant provides evidence of its registration with the USPTO (e.g., ECOLAB – Reg. 1,525,025, registered Feb. 21, 1989; OASIS – Reg. 1,732,365, registered Nov. 17, 1992). Therefore, the Panel finds Complainant has rights in the ECOLAB and OASIS marks under Policy ¶ 4(a)(i).
Complainant then argues that the disputed domain name is identical or confusingly similar to Complainant’s ECOLAB mark, only differing by the addition of the geographic term “MN” to abbreviate the state Complainant is headquartered in, and adding the “.com” gTLD. Previous panels have held that such changes do not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s ECOLAB mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the ECOLAB or OASIS mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies “John Schramm” as the registrant of the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant then argues that Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, instead using the disputed domain to host a parked website to display monetized advertisements related to Complainant’s business. Such use does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (“Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides screenshots of the disputed domain name as evidence that Respondent uses the disputed domain name to display links related to Complainant’s business.
Additionally, Complainant contends that Respondent uses an email account associated with the disputed domain name to phish for the personal and financial information of Internet users who are seeking employment with Complainant. Previous panels have held that such use of an infringing domain name does not qualify as a bona fide offer, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides copies of fraudulent emails sent to Internet users from Respondent. Therefore, the Panel finds Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to send fraudulent emails to Internet users. Previous panels have held that such use demonstrates both bad faith disruption and attraction to commercial gain pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides copies of emails Respondent sent to Internet users in an attempt to obtain sensitive personal or financial information. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also points to Respondent’s use of the disputed domain name to host a parked website displaying click-through hyperlinks. This may provide further evidence of bad faith attraction to commercial gain under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Screenshots of the disputed domain name demonstrate that Respondent uses the domain name to host a parked website providing links related to Complainant’s business. Thus, the Panel finds Respondent’s bad faith use of the disputed domain name under Policy ¶ 4(b)(iv).
Complainant contends that Respondent should be found to have actual knowledge of Complainant’s rights prior to registration due to the fame of the ECOLAB mark, the fact that Respondent imitated Complainant’s mark in an email sent from the fraudulent email address, and that Respondent researched the name of Complainant’s employee. Although panels have generally not regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in the mark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See 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.”).
The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of rights in Complainant’s mark at the time of registering the disputed domain name, which constitutes bad faith registration 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 <ecolabmn.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 27, 2021
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