Orange Glo International, Inc. v. Dan
Green
Claim
Number: FA0501000404469
Complainant is Orange Glo International, Inc. (“Complainant”),
represented by Michael K. Hendershot, of Goldberg, Kohn, Bell, Black, Rosenbloom and Moritz, Ltd., 55 East Monroe Street, Suite 3700,
Chicago, IL 60603. Respondent is Dan
Green (“Respondent”), 12135 David
Drive, Silver Spring, MD 20904.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <oxyclean.info>, registered with Spot
Domain, LLC d/b/a DomainSite.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 17, 2005.
On
January 17, 2005, Spot Domain, LLC d/b/a DomainSite confirmed by e-mail to the
National Arbitration Forum that the domain name <oxyclean.info> is
registered with Spot Domain, LLC d/b/a DomainSite and that Respondent is the
current registrant of the name. Spot Domain, LLC d/b/a DomainSite has verified
that Respondent is bound by the Spot Domain, LLC d/b/a DomainSite 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
January 20, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 9, 2005 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@oxyclean.info by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 14, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Sandra Franklin as Panelist.
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:
1. Respondent’s <oxyclean.info>
domain name is confusingly similar to Complainant’s OXICLEAN mark.
2. Respondent does not have any rights or
legitimate interests in the <oxyclean.info> domain name.
3. Respondent registered and used the <oxyclean.info>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
manufactures, distributes, and sells household cleaning products, including a
variety of cleaning products sold under the OXICLEAN mark. Complainant has used
the OXICLEAN mark in connection with its products since at least as early as August
1992 and has spent considerable time, money, and resources promoting its mark.
Complainant holds U.S. trademark Reg. No. 2,430,077 for the OXICLEAN mark
(issued February 20, 2001), which is on file at the United States Patent and
Trademark Office. Complainant also operates a website at the
<oxiclean.com> domain name.
Respondent
registered the <oxyclean.info> domain name on September 6, 2004.
The domain name resolves to a website that promotes glass cleaning products
that compete with Complainant’s household cleaning products. Respondent is not
a licensee of Complainant and is not authorized to use Complainant’s mark for
any purpose.
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.
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
established by extrinsic proof in this proceeding that it has rights in the
OXICLEAN mark through registration with the United States Patent and Trademark
Office and through continuous use of the mark in commerce since 1992. See Men’s Wearhouse, Inc. v. 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.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption.
The <oxyclean.info>
domain name is confusingly similar to Complainant’s OXICLEAN registered
trademark. The domain name fully incorporates the mark while merely
substituting the letter “y” for the letter “i” and adding the “.info” generic
top-level domain. Misspelling the mark and the addition of a generic top-level
domain do not distinguish the <oxyclean.info> domain name from
Complainant’s OXICLEAN mark. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level
of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar; see also STMicroelectronics Inc v. Trabalza, FA 100637 (Nat. Arb. Forum Dec. 18, 2001) finding that the
addition of the “.info” top-level domain name to the complainant’s mark does
not defeat a claim that they are identical or confusingly similar; see also Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) finding that a domain name which is
phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy;
see also VeriSign, Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) finding that the pronunciation and spelling
between the domain name <venesign.com> and Complainant’s mark, VERISIGN,
are so close that confusion can arise in the mind of the consumer.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not submit a response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Because Respondent has
failed to submit a response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <oxyclean.info> domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a response,
Respondent failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name; see also Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the Complaint to be deemed true.
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the <oxyclean.info> domain name directs unsuspecting
Internet users to a website that promotes goods that compete with Complainant’s
household cleaning products. Respondent makes opportunistic use of
Complainant’s mark in order to advertise goods that compete with those sold
under the well-known OXICLEAN mark. Thus, Respondent fails to establish rights
or legitimate interests in the domain name. See Pfizer, Inc. v. Internet
Gambiano Prods., D2002-0325 (WIPO June 20, 2002) finding that because the
VIAGRA mark was clearly well-known at the time of Respondent’s registration of
the domain name it can be inferred that Respondent is attempting to capitalize
on the confusion created by the domain name’s similarity to the mark and that
Respondent lacks rights and legitimate interests; see also Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services.
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the
registrant of the disputed domain name is known as “Dan Green” and is not known
by the confusing second-level domain that infringes on Complainant’s OXICLEAN
mark. Moreover, Respondent is not authorized or licensed to use Complainant’s
mark for any purpose. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply; see also 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.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of promoting products that compete with Complainant’s
household cleaners. Although there is no evidence in the record that Respondent
commercially benefits from this promotion, the Panel finds that Respondent is a
competitor of Complainant because Respondent has acted in opposition to
Complainant’s interests. Respondent’s use of the <oxyclean.info> domain name establishes that Respondent
registered and used the domain name for the purpose of disrupting the business
of a competitor pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu
v. Rost, D2000-0279 (WIPO June 7, 2000) defining “competitor” as “one who
acts in opposition to another and the context does not imply or demand any
restricted meaning such as commercial or business competitor”; see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation from
Complainant’s marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant’s
business.
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See 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”; see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith]
in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent
substituted the letter “y” for the letter “i” in Complainant’s OXICLEAN mark,
resulting in a domain name that is confusingly similar to the mark. Respondent
diverts Internet users who accidentally mistype Complainant’s mark to
Respondent’s competing website. Thus, the Panel finds that Respondent engaged
in the practice of typosquatting, which is evidence that Respondent registered
and used the <oxyclean.info> domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant’s ZONEALARM mark. “Typosquatting, itself is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant’s DERMALOGICA mark and stating
that “[t]yposquatting itself is evidence of bad faith registration and use
pursuant to Policy 4(a)(iii)”.
Respondent’s
registration of the disputed domain name, which is confusingly similar to a
well-known mark in which Complainant has rights, suggests that Respondent knew
of Complainant’s rights in the OXICLEAN mark. Additionally, Complainant’s
trademark registration, on file at the United States Patent and Trademark
Office, gave Respondent constructive notice of Complainant’s mark. Moreover,
Respondent’s knowledge of Complainant’s rights in the mark is evidenced by the
fact that its website promotes products that compete with Complainant’s
household cleaners. Thus, the Panel finds that Respondent chose the <oxyclean.info> domain name
based on the distinctive and well-known qualities of Complainant’s mark, which
evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
finding that the “domain names are so obviously connected with the Complainants
that the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”; see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain name without creating a false impression of association with the
Complainant”; see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) finding that because the link between Complainant’s mark
and the content advertised on Respondent’s website was obvious, Respondent
“must have known about Complainant’s mark when it registered the subject domain
name”; see also Reuters Ltd. v. Teletrust
IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) finding that Respondent
demonstrated bad faith where Respondent was aware of Complainant’s famous mark
when registering the domain name as well as aware of the deception and
confusion that would inevitably follow if he used the domain names; see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“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.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <oxyclean.info> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
February 28, 2005
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