DECISION

 

The Procter & Gamble Company v. Marilyn Hlad

Claim Number: FA0210000126656

 

PARTIES

Complainant is The Procter & Gamble Company, Cincinnati, OH (“Complainant”) represented by Tara M. Vold, of Howrey Simon Arnold & White, LLP.  Respondent is Marilyn Hlad, Wichita, KS (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pur-water-filters.com>, registered with BulkRegister.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2002; the Forum received a hard copy of the Complaint on October 1, 2002.

 

On October 1, 2002, BulkRegister confirmed by e-mail to the Forum that the domain name <pur-water-filters.com> is registered with BulkRegister and that Respondent is the current registrant of the name.  BulkRegister has verified that Respondent is bound by the BulkRegister 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 October 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2002 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@pur-water-filters.com by e-mail.

 

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 November 12, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 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 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

The <pur-water-filters.com> domain name is confusingly similar to Complainant’s PUR mark.

 

Respondent has no rights or legitimate interests in the <pur-water-filters.com> domain name.

 

Respondent registered and used the <pur-water-filters.com> domain name in bad faith. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Proctor & Gamble Company, is a well-known company around the world for its production and sale of a multitude of consumer goods.  One of Complainant’s trademarks is the PUR mark, which is used in connection with water filtration products for home and commercial use.  Complainant first acquired an interest in the PUR mark when it purchased the PUR business on October 8, 1999.  Complainant’s interest in the PUR mark is vested in trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 1,756,655 and 2,466,359). 

Complainant uses the PUR mark in association with water filters and has 300 to 400 million consumers of PUR related products throughout the world.  Complainant has invested over $150 million dollars in the PUR brand products since purchasing the mark in 1999.  Complainant has established a presence on the Internet at <purwater.com>.

 

Respondent registered the <pur-water-filters.com> domain name on January 30, 2001.  Respondent is a distributor of Complainant’s PUR products.  However, Respondent is not a licensee of Complainant and has no authorization to use the PUR mark in the subject domain name.  Respondent uses the domain name to resolve to a website that advertises and sells PUR brand products.  Respondent’s website suggests a broader relationship with Complainant allowing an inference that Respondent is the creator of PUR brand products rather than a distributor.  Complainant sent Respondent a cease and desist letter that opened up communication with Respondent, which ultimately lead to Respondent offering to transfer the domain name registration for $20,000.

 

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 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.

 

Identical and/or Confusingly Similar

Complainant has established it rights in the PUR mark through proof of trademark registration with the USPTO.  Complainant first acquired rights in the PUR mark in 1999, nearly two years before the subject domain name was registered.

 

Respondent’s <pur-water-filters.com> domain name incorporates Complainant’s PUR mark along with generic words that describe the exact product line the mark denotes.  The generic words “water” and “filters” have an obvious relationship with Complainant’s PUR brand products, and therefore the domain name is confusingly similar to Complainant’s mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant carries the burden to establish Respondent’s lack of rights and legitimate interests in the <pur-water-filters.com> domain name.  Complainant has alleged all the appropriate elements of Policy ¶ 4(a)(ii) and has thus discharged its burden.  Hence, Respondent is obligated to come forward and articulate its rights or legitimate interests in the <pur-water-filters.com> domain name.  At present, Respondent has failed to submit a Response.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the subject domain name.  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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

 

In addition, due to the lack of Response, the Panel accepts Complainant’s allegations as true and will draw all reasonable inferences in Complainant’s favor.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

 

Complainant notes that Respondent is a distributor of PUR brand products.  However, Respondent’s use of the PUR mark in the <pur-water-filters.com> domain name is not authorized.  Respondent uses the <pur-water-filters.com> domain name to resolve to a website that advertises the sale of PUR brand products.  Such a use alone would be enough to find an absence of a bona fide use since Respondent uses the PUR mark without authorization and merely diverts those looking for Complainant’s products to its own website.  Moreover, Respondent uses some of Complainant’s copyrighted literature from Complainant’s <purwater.com> website and further suggests a close relationship with Complainant by stating, “our researchers and engineers are busy developing more products.”  Therefore, Respondent’s use of the <pur-water-filters.com> domain name does not fall within the purview of Policy ¶¶ 4(c)(i) and (iii).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

 

Respondent has not come forward to suggest that it is commonly known by the <pur-water-filters.com> domain name.  In addition, Respondent, merely a distributor of PUR brand products, has no authorization to use the PUR mark for any trademark purpose, such as the use in the domain name.  Therefore, Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <pur-water-filters.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Given the close relation Respondent’s <pur-water-filters.com> domain name has to Complainant’s PUR mark and related products, it is evident that consumers searching for Complainant’s PUR brand products on the Internet could end up at Respondent’s website.  The content at Respondent’s website, as previously mentioned, further blurs the line of affiliation with Complainant.  Thus, Internet users are likely to be confused as to Complainant’s connection with Respondent’s commercial website.  Respondent clearly incorporated Complainant’s mark in the domain name to attract Internet users to its website and increase its customer base.  This use was unauthorized and constitutes bad faith use and registration under Policy ¶ 4(b)(iv).  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between Respondent and Complainant).

 

Furthermore, Respondent offered to sell the registration rights in the <pur-water-filters.com> domain name for an excessive price of $20,000.  This offer was done in correspondence following Complainant’s cease and desist order.  Respondent told Complainant that it had received permission to use the PUR mark in the <pur-water-filters.com> domain name.  Complainant replied “unequivocally rejecting” Respondent’s statement as false.  Respondent subsequently suggested a fair market exchange of registration rights for $20,000.  Although Respondent does have a developed website, circumstances, such as the copyright infringement of Complainant’s website content, indicate that Respondent’s out-of-pocket costs associated with the <pur-water-filters.com> domain name are nowhere near $20,000.  In addition, Respondent has not come forward in defense of the excessive price demanded for the domain name registration.  Therefore, Respondent’s offer to sell the registration rights in the subject domain name represents bad faith under Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <pur-water-filters.com> be transferred from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  November 20, 2002

 

 

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