Orange Glo International, Inc. v Roswell
International Ltd c/o oxy-clean.com
Claim Number: FA0503000440119
PARTIES
Complainant
is Orange Glo International, Inc. (“Complainant”),
represented by Salvador K. Karottki, of Goldberg, Kohn, Bell, Black, Rosenbloom and Moritz, Ltd., 55 East Monroe Street, Suite 3700,
Chicago, IL 60603. Respondent is Roswell International Ltd c/o oxy-clean.com (“Respondent”), represented by Angus Doyle, c/o 18
Riverside Steps, Bristol BS4 4RH, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <oxy-clean.com>,
registered with Wild West Domains, Inc.
PANEL
The
undersigned Daniel B. Banks, Jr., Panelist, 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 14, 2005.
On
March 11, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <oxy-clean.com>
is registered with Wild West Domains, Inc. and that the Respondent is the
current registrant of the name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West
Domains, Inc. 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
March 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 6,
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@oxy-clean.com by e-mail.
A
timely Response was received and determined to be complete on April 4, 2005.
An
Additional Submission was timely received from Complainant on April 6, 2005 and
was considered.
On April 7, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, Orange Glo International, Inc.
("Complainant" or "Orange Glo") is a company that
manufactures, distributes and sells household cleaning products, including a
variety of cleaning products sold under the OXICLEAN trademark (the "Mark"). Orange Glo, and/or its predecessor, have
used the Mark in commerce since at least as early as August 1992 and have
registered the Mark on the Principal Register of the United States Patent and
Trademark Office (U.S. Reg. No. 2,430,007) and with the Office For
Harmonization in the Internal Market (CTM Reg. No. 001507805). These
registrations are in full force and effect.
Orange Glo has expended considerable time, money
and resources developing, promoting and advertising its OXICLEAN brand cleaning
products through various media in interstate commerce, such that the Mark has
met with widespread public approval.
Orange Glo has sold tens of millions of units of OXICLEAN brand cleaning
products and has had sales of OXICLEAN brand products well in excess of $100
million. The Mark has been widely
broadcast to millions of viewers through infomercials, commercials, and
direct-to-consumer broadcasts (such as those of the Home Shopping Network)
aired across the United States and worldwide and has been featured in print ads
placed worldwide. As a result of the
extensive sales, advertising and promotion of Orange Glo's OXICLEAN brand
cleaning products, and as a result of Orange Glo's quality standards, the Mark
has earned significant goodwill and commercial recognition.
Orange
Glo also promotes and advertises its OXICLEAN brand cleaning products on its
websites located at <oxiclean.com> and <greatcleaners.com>. Orange Glo also owns the domain names
<oxiclean.us>, <oxiclean.info>, and <oxyclean.info>, which
redirect users to Orange Glo's <greatcleaners.com> site.
The
Mark is a suggestive word-mark which is inherently distinctive and, therefore,
strong. That strength has been enhanced
by Orange Glo's extensive advertising and promotion, as well as Orange Glo's
widespread sales, of its OXICLEAN brand products.
1 – The disputed domain name is confusingly similar to
Complainant’s Mark.
Respondent has registered the <oxy-clean.com>
domain name ("Domain Name").
Respondent's second-level domain name, which consists solely of a
misspelling of OXICLEAN with the addition of a hyphen, is confusingly similar
to Orange Glo's Mark.
The
confusion that necessarily exists between Respondent's Domain Name and Orange
Glo's Mark is magnified by the fact that Respondent is using the Domain Name in
order to promote the sale or offering of goods by third party companies that
are competitive with Orange Glo's goods.
Specifically, Respondent's website, located at the disputed Domain Name,
consists solely of links to third-party websites, some of which are competitors
of Orange Glo. For example,
Respondent's website contains a link to <oxyboost.com>, which is a
website operated by Natural Choices Home Safe Products L.L.C. ("Natural
Choices"), one of Orange Glo's competitors. Respondent's registration of the Domain Name is likely to cause
confusion or mistake with respect to Orange Glo's registered Mark based upon
the strength of Orange Glo's Mark and the nearly identical nature of
Respondent's second-level Domain Name and Orange Glo's registered Mark.
2
– Respondent has no rights or legitimate interests in the disputed domain name.
Respondent
does not have any legitimate rights or interests in the domain name because
neither Respondent nor any business operated by Respondent, nor any product
offered by Respondent, has been commonly known by the Domain Name. Also, Respondent should be considered to
have no rights or legitimate interests in the domain name because its
registration infringes Complainant’s federally-registered trademark.
Respondent's
use of the Domain Name is in connection with Sedo.com LLC's domain name parking
service, which allows Respondent to "earn money from [its] domain name
without needing to develop" its own site, according to the screen shot of
Sedo.com's website, explaining the domain name parking program, attached hereto
as Exhibit E. According to Sedo.com's
website, attached as Exhibit E, Respondent "parks" the disputed
Domain Name with Sedo.com, which then provides targeted ad links, some of which
link to Orange Glo's competitors, and Respondent earns "between $0.03 and
$1.50" for every time an Internet user clicks on an ad. In other words,
the sole purpose behind Respondent's registration and operation of the disputed
domain name is to make money from redirected Internet traffic. Such use does not constitute a bona fide
offering of goods or services.
3 – The
disputed domain name was registered and is being used in bad faith.
On
or about March 4, 2005, counsel for Orange Glo sent a letter to Respondent
demanding transfer of the Domain Name.
As of the date of this filing, Respondent has refused, without
justification, to take the requisite steps to transfer the Domain Name to
Orange Glo. Respondent's decision to
willfully ignore and disregard Complainant's rights is evidence of bad faith
registration and use. Furthermore,
Respondent was also on constructive notice of Orange Glo's Mark when it
registered the disputed Domain Name, which is evidence of bad faith.
Respondent's
practice of using Orange Glo's Mark as its Domain Name, changing only one
letter and adding a hyphen, which creates a misspelling of Orange Glo's Mark
and its <oxiclean.com> domain name, is known as
"typosquatting."
Typosquatting itself constitutes evidence of bad faith registration and
use. 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.").
Respondent's
Domain Name should be considered to have been registered and used in bad faith
because Respondent failed to discharge its responsibility to select, register
and use a domain name that does not infringe the rights of a third party,
namely Orange Glo, pursuant to Paragraph 2 of the Uniform Domain Name Dispute
Resolution Policy.
Respondent
is using the Domain Name in order to channel Internet users to third-party
websites, some of which compete directly with Orange Glo, in order to earn
per-click revenue. Upon information and
belief, Respondent has registered and is using the Domain Name in the manner
alleged in order to profit from Orange Glo's Mark, to profit from consumer
confusion regarding Orange Glo's Mark, and to disrupt Orange Glo's business.
Respondent is also offering to sell the disputed domain name
according to the screen shot from Sedo.com’s website. On information and belief, this constitutes bad faith
registration of the domain name to sell, rent, or otherwise transfer the name
for valuable consideration in excess of Respondent’s out-of-pocket
expenses.
B.
Respondent
Respondent
agrees that there is similarity with several other actual identical (UDRP Paragraph 4(a)(i)) marks of the
same name.
The
following are direct quotes from the Response:
It has been
claimed that the respondent’s use of the domain name on the respondent’s
website solely links to third party websites, some of which are competitors of
Orange Glo and as are indeed also Orange Glo, and/or its affiliates (ref.
complainants Exhibit C.) Upon
submitting a domain name for inclusion into the SEDO program, SEDO themselves
choose the most relevant keyword for any particular domain. Upon being made aware of a potential
confusion the domain was withdrawn from SEDO, in order to investigate the
claims made by the Complainant.
Respondent’s registration of the domain name is unlikely to
cause confusion to the complainants mark. Group Exhibit D. forwarded from SEDO
shows that the traffic to the disputed domain is originating from Asia, the US
and UK traffic are likely to be from the Complainant and the Respondent during
the course of this UDRP. We would
therefore submit that any confusion is in no way related to the Complainants
mark. We would also like to submit that
should any confusion arise in the future; [it] would be a direct cause of the
complainant and/or its affiliates, upon information and belief the complainant
and/or its affiliates are sponsoring the keyword “OXYCLEAN” through search
engines like Google, whereas if someone was to make a search for the term
“OxyClean”, the complainant or its affiliates would monopolize the search
results. This is further enhanced by the
Complainants use of the actual term OXYCLEAN on there own website, please note
Exhibit E. the use of the Term OXYCLEAN is in the title tag (tag is
highlighted) of the complainants website, this Bad Faith method of Keyword
Hijacking is used for the purpose of increasing search engine ranking for a
specific keyword or key phrase or in this case a potential tactic to discredit
the Respondent and therefore add weight to the Complainants frivolous claims.
The registration of Internet domain names is still built on the
foundation of registrations on a first come first serve basis and there in is
construed as legitimate rights.
The disputed
domain name oxy-clean.com regardless of the complainants claims, does not
infringe on the complainants trademark no more than the Complainants Trademark
does not infringe on the Oxy Corporation Trademark Oxy-Clean registered in
1983.
The domain name is parked with SEDO®, with respect the term ‘parked’ is “To
place or leave temporarily”. The
complainants claim that the sole purpose of registration and operation of the
disputed domain name was to make money from redirected internet traffic, that
comment is somewhat speculative, and shows ignorance and bad faith to the
respondent and the internet. Parking a
domain, gives the owner the ability to gain from search engine recognition
until such time as a complete website is launched, if the domain name was not
parked, search engines would not place a domain in its index. Of course there is an added bonus of a small
revenue stream whilst the domain is in a parked position, these count towards
out of pocket costs until such times as the domain name and operation costs can
maintain themselves financially.
There was no
intent to confuse against the complainants mark, and can therefore not be
construed as a deliberate misspelling of the complainants mark or a
registration in bad faith.
Respondent
then asserts that Complainant has no exclusive rights in the domain name
because the exact term OXY-CLEAN was in fact “born on 1983 by a Korean
Corporation aptly now named Oxy…”.
Respondent also states that the exact term OXYCLEAN is a trademark for
Engelhard Corporation, USA and for Beecham, Inc. USA. There are also listed owners of the same or similar mark in the
United Kingdom, Canada and the rest of the world. Further, several others in the U.S. have this as a common law
trademark. Respondent then suggests
that the term OXY CLEAN is in fact a generic term and cannot be considered as a
bad faith registration against the Complainant. Respondent says it there is no evidence that it had constructive
notice of Complainant’s mark and ICANN policy does not require to carry out a
trademark search in every county of the world for conflicting trademark rights.
C. Additional Submissions
Complainant
timely filed an Additional Submission, which responds to Respondent’s
arguments. Basically, the Additional
Submission says that Respondent’s listing of alleged third party registrations
or uses of OXY CLEAN and the alleged genericness of OXY CLEAN are factually
inaccurate and irrelevant to this proceeding.
First, if OXYCLEAN is being used by other entities as a trademark, it does not prove that it is
a generic term. It proves the opposite:
OXYCLEAN is being used as a trademark and not as a generic word. Second, one of Respondent’s examples of
other usage is Engelhard Corporation.
That usage is pursuant to a settlement between Complainant and
Engelhard. Finally, such other
third-party usage is irrelevant to this proceeding. That is no aid to Respondent who must prove its rights and legitimate interests in the domain name.
Complainant
then argues the confusing similarity between its mark and the disputed domain
name, Respondent’s lack of a legitimate interest in the domain name and
Respondent’s bad faith. With respect to
the telephone call with Complainant’s counsel, not only did Respondent fail to
offer any legitimate interests in or reasonable basis for retaining the domain
name, the Respondent threatened to transfer the domain name just so Orange Glo
would not get it.
Furthermore,
Respondent was on constructive notice of Orange Glo’s mark due to its CTM
Registration for the European Union, where Respondent is located. Also, Respondent registered the domain name
and then made a general offer to sell it.
With
respect to Respondent’s commercial activity and use of the Domain Name,
Respondent admits that it is profiting off its website that lists links to
Orange Glo's competitors, although it disagrees that any negative consequences
should flow from this. Respondent
specifically states that parking its Domain Name with the SEDO service provides
it with "an added bonus of a small revenue stream whilst the domain is in
a parked position." Id. Consequently, the purpose behind
Respondent's registration and operation of its Domain Name is to "make
money from redirected Internet traffic," sending Internet users from its
website to third party websites, some of which compete directly with Orange
Glo.
As
to Respondent’s naked assertion of reverse domain name hijacking, Complainant
says that it is without merit. "To
establish reverse domain hijacking, the respondent must show knowledge on the
part of the complainant of the respondent's right or legitimate interest in the
disputed domain name and evidence of harassment or similar conduct by the
complainant in the face of such knowledge." Sydney Opera House Trust v. Trilynz Pty. Ltd., D2000-1224
(WIPO Oct. 31, 2000). Accordingly, this
case is not one involving reverse domain hijacking.
FINDINGS
1 – The disputed domain name is
confusingly similar to Complainant’s mark.
2 – Respondent has no right or legitimate
interests in the domain name.
3 – The domain name was registered and is
being used in bad faith.
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 established rights in the OXICLEAN mark through registration of the mark in
the United States with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,430,077 issued February 20, 2001) and in Europe with the Office for
Harmonization in the Internal Market (“OHIM”) (Reg. No. 001507805 issued May 7,
2001) as well as through continuous use of the mark in commerce since
1992. See 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. The respondent has the burden of refuting
this assumption); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of business).
Respondent’s
<oxy-clean.com> domain name is confusingly similar to
Complainant’s OXICLEAN mark as the domain name is phonetically identical to
Complainant’s mark. It simply replaces
the letter “i” in Complainant’s mark with the letter “y” and inserts a
hyphen. The Panel finds that such minor
alterations are not enough to overcome a finding of confusing similarity
pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the
Policy); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398
(WIPO June 22, 2000) (finding it obvious that the domain name
<easy-jet.net> was virtually identical to the complainant’s
EASYJET mark and therefore that they are confusingly similar).
Furthermore,
the Panel finds that the addition of the generic top-level domain “.com” is
insufficient to negate the confusing similarity between Respondent’s domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
Respondent is
neither commonly known by the <oxy-clean.com> domain name nor
authorized to register domain names featuring Complainant’s OXICLEAN mark. Thus, the Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Furthermore, Respondent is using the <oxy-clean.com>
domain name to operate a website that features links to Complainant’s
competitors. Such competing use is not
a use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
the respondent’s appropriation of the complainant’s mark to market products
that compete with the complainant’s goods does not constitute a bona fide
offering of goods and services); see also Winmark Corp. v. In The Zone,
FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that the respondent had no
rights or legitimate interests in a domain name that used the complainant’s
mark to redirect Internet users to a competitor’s website).
Respondent
is using the confusingly similar domain name to operate a website that features
links to Complainant’s competitors.
Such use constitutes disruption and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business
from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)).
Also, Respondent receives click-through
fees for diverting Internet users to various websites, including those of
Complainant’s competitors. Since
Respondent’s <oxy-clean.com> domain name is confusingly similar to
Complainant’s OXICLEAN mark, Internet users accessing Respondent’s domain name
may become confused as to Complainant’s affiliation with the resulting
websites. Therefore, the Panel concludes
that Respondent’s commercial use of the disputed domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); see
also eBay, Inc v. Progressive Life
Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
the respondent is taking advantage of the recognition that eBay has created for
its mark and therefore profiting by diverting users seeking the eBay website to
the respondent’s site).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oxy-clean.com>
domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: April 21, 2005