Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz i Aleksandra Kluz
Claim Number: FA1105001386906
Complainant is Ecolab USA Inc. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is Tomasz Kluz / Ekolab s.c. Tomasz i Aleksandra Kluz (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ekolab.info>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (R159-LRMS).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2011; the National Arbitration Forum received payment on May 4, 2011.
On May 4, 2011, Directi Internet Solutions Pvt. Ltd. dba PublicDomainRegistry.com (R159-LRMS) confirmed by e-mail to the National Arbitration Forum that the <ekolab.info> domain name is registered with Directi Internet Solutions Pvt. Ltd. dba PublicDomainRegistry.com (R159-LRMS) and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. dba PublicDomainRegistry.com (R159-LRMS) has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. dba PublicDomainRegistry.com (R159-LRMS) 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 May 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2011 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@ekolab.info. Also on May 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on May 25, 2011.
On June 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges rights to and legitimate interests in the ECOLAB® mark through numerous registrations with the United States Patent and Trademark Office. The domain name <ekolab.info> is virtually identical to the registered trademarks of Complainant. The only minor difference between this disputed domain name and Complainant’s ECOLAB® mark is that the Respondent has substituted a “K” for the “C” within the ECOLAB® mark of Complainant. The inclusion of generic terms or descriptive terms in the disputed domain names does not change the fact that the protected mark ECOLAB®, and cited domain <ekolab.info>, convey the same commercial impression to consumers. The domain name <ekolab.info> is virtually identical to the registered trademarks of Complainant. Consumers are likely to be confused into believing that the disputed website, <ekolab.info> is sponsored by or affiliated with Complainant. The products and services offered under the ECOLAB® mark and through its own website at ECOLAB.COM are competitive products to those products associated with the website of Respondent. Respondent uses the domain name <ekolab.info> to promote products for automobile servicing including cleaning products, the same cleaning type products as those of Complainant, and potentially attractive to the same customers as Complainant’s customers for Complainant’s automobile cleaning products. These products and services are related to Complainant’s products and services. Therefore, Respondent has registered a confusingly similar domain name to the registered marks of Complainant which trades off the goodwill in the ECOLAB marks. Respondent has registered a confusingly similar domain name to the registered marks of Complainant.
Respondent has registered the domain name <ekolab.info> which is identical and confusingly similar to: (1) Complainant’s mark ECOLAB®; (2) the corporate identity of the Complainant; and, (3) the corporate web address of Complainant at ECOLAB.COM. Consequently, Respondent has appropriated a misspelling and phonetic equivalent of the inherently distinctive ECOLABâ mark of Complainant with a clear intent to trade off the reputation and goodwill of the mark. Respondent has no statutory or common law trademark right in the “Ecolab” designation. Moreover, Respondent has no other legal right or legitimate interest in the term “Ecolab” or in the use of the infringing domain name <ekolab.info>. And Complainant’s ECOLAB® mark has over 20 years of priority against <ekolab.info>.
B. Respondent
EKOLAB S.C. was founded in 1993 and has been registered in Poland in the Bielsko-Biala town council as a company performing economic activity. The original idea of founding EKOLAB was to supply service of industrial gas analyzers for car factories like FIAT, which resides in Bielsko-Biala.
The original project name was an abbreviation of polish phrase “EKOLOGICZNA AUTOANALIZA BADAWCZA”, which is to be translated as: “ecological vehicle inspection”. First letters in bold of those three words have created a final name EKOLAB. After few years the company expanded its activities. As an answer to market needs EKOLAB started to supply service and goods for regular workshop garages. As a final result of its evolution EKOLAB company is a car workshop equipment supplier that supply warranty and after warranty service. Many years of experience and activity made the name EKOLAB widely recognizable and acknowledged. EKOLAB runs a regular business, which means advertisement in workshop newspapers (AutoExpert, AutoNaprawa, AutoService Manager and many others – see attachment list), taking part in Polish fairs.
Respondent stated,
We didn’t know that the company ECOLABâ ever existed until 12th of May 2011 when we received the written notice of complaint indirectly from our internet provider. We didn’t get it neither from ECOLAB® nor from National Arbitration Forum. Because of the short time we have to respond and the difficulties with translating all the documents from American English to Polish and then from Polish to English we couldn’t get any law support and advice. Therefore we respond ourselves in good faith trusting that our explanations will make the Complainant withdraw his allegations.
From our point of view the Complainant refers to many facts, descriptions and intentions of our company, which unfortunately are false. We don’t know from where the company ECOLAB, INC. has this kind of knowledge because information contained even on our website www.ekolab.info are completely different. Even the name of our company and contact information are wrong, especially e-mail address which is the main way of communication. Complainant wrote big@telvinet.pl instead of ekolab@bb.onet.pl which exists on our website from at least 10 years time.
Another surprise to us is the information given to NAF stating that ECOLAB INC. USA tried to contact with us many times in order to solve their problem. We assure everyone that we didn’t get any information or contact from the company ECOLAB INC. USA in any form: verbal, in writing, nor e-mail.
In our understanding we have the right to use the <ekolab.info> domain to promote products of our interest, which for sure are not any kind of chemical products, even for automobile purpose. We don’t offer any kind of products competitive to the Complainant and we definitely don’t attract any potential customers of ECOLAB INC.USA in internet or out of internet. We have nothing similar to offer them.
Registration in bad faith means that someone first knew about the existence of the ECOLAB INC. USA and then tried to gain benefits from their name or reputation. In this case it is irrational because we don’t compete with ECOLAB INC, USA in any kind of products (besides we didn’t know about its existence). Domain <ekolab.info> exists from December 18, 2007 due to information given by the Complainant. There is absolutely no proof that this domain is harmful to ECOLAB INC.USA trademark because our businesses are separated due to completely different product range and field of interest. Moreover the domain name <ekolab.info> has never been registered and doesn’t exist, so there is no possibility of confusion between <ekolab.info> and ECOLAB.INFO. As we mentioned, during this time Complainant has never tried to contact us in order to inform about any allegations. We don’t suspect the Complainant of bad faith but we ask to forward the correspondence to the right address available all the time on our website.
Complainant has failed to prove the requirements under UDRP Policy ¶ 4(a)(ii), and ¶ 4(a)(iii)).
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.
Complainant contends that it has established rights in the ECOLAB mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,497,423 issued July 26, 1988). Previously, panels have determined that rights may be established in a mark under Policy ¶ 4(a)(i) through registration with a federal trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel may find that Complainant is not required to register its mark within the country of Respondent as long as the mark is registered in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that Respondent’s <ekolab.info> domain name is confusingly similar to its ECOLAB mark. Complainant claims that the disputed domain name incorporates its entire ECOLAB mark and only changes it by substituting a “K” for the “C” within the mark and by adding the generic top-level domain (“gTLD”) “.info.” The Panel may decide that misspelling a mark by a single letter does not help to avoid a finding of confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Additionally, the Panel may find that the affixation of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Complainant also points out that the disputed domain is phontetically similar to its ECOLAB mark. Previous panels have found that disputed domain names with similar pronuciations to a complainant’s mark are confusingly similar. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s <ekolab.info> domain name is confusingly similar to Complainant’s ECOLAB mark under Policy ¶ 4(a)(i).
The 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it is commonly known by the <ekolab.info> since it has been operating under the “ekolab” name for over 18 years. Respondent claims that its “ekolab” name comes from the Polish phrase “Ekololgiczna Autoanaliza Badawcza,” which is translated as “ecological vehicle inspection.” Respondent claims that it has run advertisements in many workshop newspapers and taken part in Polish fairs under its “ekolab” name. Respondent is commonly known by the disputed domain name; under Policy ¶ 4(c)(ii), if Respondent is able to present evidence that would support such a finding. See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also AST Sportswear, Inc. v. Hyken, D2001-1324 (WIPO Mar. 26, 2002) (finding that the respondent was commonly known by the <johnnyblaze.com> domain name because it “submitted conclusive documentary evidence that he used the stage name Johnny Blaze . . . during his career” and the panel should refrain from examining whether the type of use of the domain name was legitimate and simply determine whether the respondent was commonly known by the domain name under Policy ¶ 4(c)(ii)).
Respondent alleges that its company was founded to supply service of industrial gas analyzers for car factories but it subsequently expanded its activities to provide goods and services for regular workshop garages and therefore became a workshop equipment supplier. Respondent asserts that it uses the disputed domain name to further promote its business as a car workshop equipment supplier and that it does not offer any kind of chemical products that would compete with Complainant’s business. The Panel finds that Respondent’s use of the <ekolab.info> domain name is a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (finding that the respondent’s use of a disputed domain name was bona fide under Policy ¶ 4(c)(i) where the website only displayed links to jewelry products and the complainant used its mark to sell beverage products, including beer); see also Invicta Watch Co. of Am., Inc. v. Santana, FA 727672 (Nat. Arb. Forum Aug. 3, 2006) (“Moreover, Respondent used the domain name <invicta.com> for a significant period of time for business purposes, thus further highlighting his rights and legitimate interests in the title. Respondent alleges that at all times his business was entirely unrelated to that carried on by Complainant.”).
Complainant asserts that Respondent used the disputed domain name to advertise automobile servicing and cleaning products, which directly compete with the branch of Complainant’s business that provides vehicle cleaning products. The Panel may find that Respondent’s use of the <ekolab.info> domain name to advertise cleaning products which target Complainant’s customers is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has rights or legitimate interests in the <ekolab.info> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <ekolab.info> domain name in bad faith since Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent maintains that its use of the disputed domain name does not disrupt Complainant’s business and that it does not offer any products that would be of interest to Complainant’s customers or that have been purchased by Complainant’s customers. As such, the Panel finds that Respondent’s registration and use of the disputed domain name was not in bad faith under Policy ¶ 4(b)(iii) as its does not offer any chemical products in competition with Complainant. See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Respondent claims that it did not register the <ekolab.info> domain name in bad faith since it had no prior knowledge of the ECOLAB mark or Complainant’s rights in the mark until May 12, 2011, when Respondent received written notice of the Complaint. The Panel decides that constructive notice does not apply to a Policy ¶ 4(a)(iii) analysis. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Gruner + Jahr Printing & Publ’g Co. v. 2 Ergo Ltd., FA 214463 (Nat. Arb. Forum Jan. 27, 2004) (“Even if [constructive knowledge] were applicable to cases under the Policy, Complainant cannot rely, in relation to activities of non-U.S. persons outside the U.S., on constructive notice under U.S. trademark law arising out of registration of its U.S. marks.”).
Not Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: June 3, 2011
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