The Gillette Company v. Oscar Haynes
Claim Number: FA0304000155904
PARTIES
Complainant
is The Gillette Company, Boston, MA (“Complainant”) represented by Michelle Brownlee. Respondent is Oscar Haynes, Washington, DC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <duracellprocell.com>
registered with Go Daddy Software.
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 April 28, 2003; the Forum received a hard copy of the
Complaint on May 1, 2003.
On
April 29, 2003, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <duracellprocell.com>
is registered with Go Daddy Software and that the Respondent is the current
registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software
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
May 1, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 21,
2003 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@duracellprocell.com by e-mail.
A
timely Response was received and determined to be complete on May 21, 2003.
On May 29, 2003, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s domain name <duracellprocell.com>
is confusingly similar to Complainant’s DURACELL and PROCELL marks.
2. Respondent does not have any rights or
legitimate interests in the domain name.
3. Respondent registered and used the domain
name in bad faith.
B. Respondent
Respondent
does not dispute that Complainant has rights in the DURACELL and the PROCELL
marks. While the words Duracell and
Procell are trademarks owned by the Gillette Corporation, the word
“duracellprocell” is not. However,
Respondent contends there is no confusing similarity between Respondent’s <duracellprocell.com>
domain name and Complainant’s marks because Respondent has included a
disclaimer on its website that renounces any affiliation with Complainant.
Respondent
contends that it never attempted to sell the disputed domain name registration
to Complainant. Respondent asserts that Complainant initiated contact with
Respondent and Respondent was simply willing to listen to an offer.
There is a disclaimer stating that fact on Respondent’s
domain home page, and Respondent’s business name is in letters as prominent as
Complainant’s, and Respondent’s name is positioned at the top of the page. There is very limited use of Complainant’s
logo on Respondent’s website. The logo
only appears on the product itself, in a picture of the product.
Respondent has had a bona fide offering of goods and
services directly related to Duracell Procell batteries on Respondent’s website
since it’s purchase. The name of
Respondent’s business is “CapTech”, not Respondents’ domain name. Licensed and authorized Duracell
distributors sell Duracell Procell batteries to Respondent for resale by
Respondent with full knowledge of Respondent’s intent to resell.
FINDINGS
1.
Complainant owns U.S. Registration Nos. 838,685 and 793,273
for DURACELL and 1,620,895 for PROCELL for various battery products. Gillette has been using the DURACELL mark
since at least as early as May, 1964, and has been using the PROCELL mark since
at least as early as March, 1987.
2. Gillette,
or its affiliated company, N.V. Duracell Batteries, S.A., also owns
registrations for the DURACELL and PROCELL trademarks in numerous other
jurisdictions, including the European Community, Canada, Hong Kong, Mexico and
Australia.
3. Complainant
sells batteries that are branded DURACELL PROCELL.
4. Respondent
registered the domain name on June 28, 2001.
Respondent’s web site with the word DURACELL printed in large letters
has the words "Industrial Batteries" printed in small letters right
under DURACELL. The web site offers
DURACELL PROCELL batteries made by Complainant for sale.
5. Respondent's
website also has links to websites of other battery manufacturers, such as
Energizer and Sanyo.
6. Respondent
is not a licensee or authorized distributor of Complainant's products.
7. Upon
discovery of the web site, Complainant's counsel wrote Respondent a letter on
March 26, 2003, stating that Respondent's use of the domain name was a
violation of the ICANN Policy.
8. On
April 18, 2003, Respondent responded by email, arguing that he was not using
Duracell or Procell as a domain name, but rather duracellprocell, a word that
Complainant does not use as a trademark or domain name. He also asked Complainant to make an offer
to buy the domain name. He stated: "I do not intend to give the word I
made up to you, but as I said earlier, I am willing to sell it to you or to any
other entity that may wish to purchase it.
Thank you for enlightening me to the prospect of the sale of my domain
name."
9.
On April
18, 2003, Complainant's counsel responded in an email message, offering to pay
Respondent $100 to transfer the domain name within the next seven days. Complainant's counsel has received no
response to the April 18 email message.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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;
(2)
the
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 has produced evidence of trademark
registrations with the United States Patent and Trademark Office (USPTO) for
the PROCELL mark (Reg. No. 1,620,895 registered on November 6, 1990) and the
DURACELL mark (Reg. No. 793,273 registered on July 27, 1965) related to various
battery products. Complainant has
established its rights in the marks through registration with the USPTO and
continuous use in commerce. See
The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning”).
Respondent’s
<duracellprocell.com> domain name is confusingly similar to
Complainant’s marks because the disputed domain name appropriates both of
Complainant’s marks in their entirety and simply adds the generic top-level
domain (gTLD) to the end of the marks.
The domain name’s combination of Complainant’s marks does not
sufficiently differentiate the domain name from the marks for the purposes of
Policy ¶ 4(a)(i). See Nintendo of
Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name); see also Oki Data
Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that
a domain name incorporates a Complainant’s registered mark is sufficient to
establish identical or confusing similarity for purposes of the Policy despite
the addition of other words to such marks”); see also 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).
Thus,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent’s
use of the <duracellprocell.com> domain name does not represent a
bona fide offering of goods or services nor a legitimate noncommercial or fair
use because Respondent is using the disputed domain name to sell Complainant’s
goods despite the fact that Respondent is not affiliated with or authorized by
Complainant. 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 Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from Complainant's site to a competing website).
An
unauthorized distributor's use of a trademark in a domain name to sell products
branded under that trademark is not a legitimate interest. See Tacitica International, Inc. v. YouCanSave.com,
Inc., D2002-0018 (WIPO April 12, 2002) ("the use of the Domain Name
and the web site create confusion as to whether or not Respondent is authorized
or licensed by the Complainant."); see also Cunard Line Ltd. v.
Champion Travel, Inc., FA92053 (March 8, 2000) (finding no legitimate
interest to cunardcruise.com where respondent intended to use for a web site
selling cruises provided by Complainant).
Respondent
has no rights to or legitimate interests in the disputed domain name under
Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain name. See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark).
Thus,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has intentionally attempted to attract Internet users to Respondent’s website
for commercial gain by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation or endorsement of Respondent’s
website, which is evidence of bad faith registration and use with regard to
Policy ¶ 4(b)(iv). See State Fair
of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
Thus,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <duracellprocell.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 4, 2003
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