Orange Glo International, Inc. v. Jeff
Blume
Claim Number: FA0208000118313
PARTIES
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.
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 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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