Ecolab Inc. v.
Claim Number: FA0708001053330
Complainant is Ecolab Inc. (“Complainant”), represented by Edward
R. Courtney, of Ecolab Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ecolabmsds.com>, registered with Intercosmos Media Group, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2007.
On August 3, 2007, Intercosmos Media Group, Inc. confirmed by e-mail to the National Arbitration Forum that the <ecolabmsds.com> domain name is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ecolabmsds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 assertions:
Complainant is the leading global developer and marketer of premium cleaning, sanitizing, pest elimination, maintenance and repair products and services within the agricultural, commercial, food service, healthcare and industrial markets.
Complainant was founded in 1923 and holds several trademark and service mark registrations for variations of the ECOLAB mark with the United States Patent and Trademark Office (“USPTO”) (including trademark-service mark Reg. No. 1,497,423, issued July 26, 1988).
Complainant also operates a website at the <ecolab.com> domain name.
Respondent is not authorized to use its ECOLAB mark in any way.
Respondent registered the <ecolabmsds.com> domain name on June 13, 2005.
Respondent’s domain name resolves to a website displaying hyperlinks to third-party websites that offer goods and services in competition with the business of Complainant.
The letters “MSDS” in the disputed domain name refer to “Material Safety Data Sheets” that are required by the United States Occupational Safety and Health Administration to be maintained by businesses such as Complainant.
Respondent’s <ecolabmsds.com> domain name is confusingly similar to Complainant’s ECOLAB mark.
Respondent does not have any rights or legitimate interests in the <ecolabmsds.com> domain name.
Respondent registered and uses the <ecolabmsds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and 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 same domain name was registered and is being used by Respondent in bad faith.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s multiple registrations of the ECOLAB mark with
the USPTO sufficiently establish its rights in the mark for purposes of Policy
¶ 4(a)(i). See Reebok Int’l Ltd. v.
Complainant alleges that the <ecolabmsds.com>
domain name is confusingly similar to its ECOLAB mark under Policy ¶ 4(a)(i). We agree,
inasmuch as the disputed domain name contains Complainant’s mark in its
entirety with the mere addition of acronym “MSDS” and the generic top-level
domain (“gTLD”) “.com.” Complainant
contends, and Respondent does not deny, that the letters “MSDS” refer to
“Material Safety Data Sheets” required by the Occupational Safety and Health
Administration in the
The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is required by Policy ¶ 4(a)(ii) to establish a prima facie case that Respondent lacks rights or legitimate interests with regard to the <ecolabmsds.com> domain name. Complainant has satisfied this requirement. Therefore, the burden now shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
We also note in this connection, that Respondent’s WHOIS information indicates that it is known as “Belize Domain Whois Service Lt,” and there is no other evidence in the record indicating that Respondent is commonly known by the <ecolabmsds.com> domain name. Moreover, Complainant states, and Respondent does not deny, that Respondent is not authorized to use its ECOLAB mark in any way. Thus there is no evidence that Respondent is commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use the trademarked name).
We observe further that there is no dispute that Respondent uses the <ecolabmsds.com> domain name to host a website that displays hyperlinks to third-party websites in competition with the business of Complainant. Such use of the domain name is presumably for Complainant’s commercial benefit through the accrual of click-through fees. Accordingly, Respondent’s use of the <ecolabmsds.com> domain name is 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). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a complainant’s mark to display links to that complainant’s competitors did not constitute 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)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s
demonstrated intent to divert Internet users seeking Complainant’s website to a
website of Respondent and for Respondent’s benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
As discussed above, there is sufficient evidence to indicate that Respondent is attempting to benefit commercially from its use of the <ecolabmsds.com> domain name, and that the disputed domain name is confusingly similar to Complainant’s mark. Moreover, the <ecolabmsds.com> domain name creates a likelihood of confusion as to Complainant’s possible sponsorship, endorsement or affiliation with the disputed domain name and corresponding website. Thus, we conclude that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that a respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and a complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Additionally, it appears that Respondent registered the <ecolabmsds.com>
domain
name with at least constructive knowledge of Complainant’s rights in the ECOLAB trademark-service
mark by virtue of Complainant’s prior registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ecolabmsds.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 19, 2007
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