P. O. Box 50191
Minneapolis, Minnesota 55405 USA
COLGATE PALMOLIVE COMPANY
Bret I. Parker
300 Park Avenue
New York, New York 10022-7499
COMPLAINANT,
vs.
CHARLES KASINGA
7632 Amazon Drive
Huntington Beach, CA 92647
RESPONDENT.
DESCISION
No.: FA0002000094203
Complainant is Colgate-Palmolive Company ("Complainant"),
located at 300 Park Avenue, New York, N.Y. 10022. Complainant was
represented by Bret I. Parker.
Respondent is Charles Kasinga ("Respondent"),
located at 7632 Amazon Drive, No. 1, Huntington Beach, CA 92647. Respondent
filed no response and therefore was not represented.
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The Domain Names and Registrar
The domain names at issue are <colgatepalmolive.com>,
<colgate-palmolive.net> and <colgatepalmolive.net>. The
registrar is Network Solutions, Inc. (the "Registrar"),
505 Huntmar Park Dr., Herndon, Virginia 20170 USA.
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Procedural History
The National Arbitration Forum (the "Forum")
received the Complaint on February 28, 2000. The Forum verified
that the Complaint satisfies the formal requirements of the ICANN
Uniform Domain Name Dispute Resolution Policy (the "Policy"),
the Rules for Uniform Domain Name Dispute Resolution Policy (the
"Rules"), and the Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy (the "Supplemental Rules").
Pursuant to paragraph 2(a) of the Rules, the Forum thereafter sent
the Respondent a notification of the administrative proceeding together
with copies of the Complaint.
On February 28, 2000, Network Solutions Inc. ("NSI")
verified to the Forum that:
- The domain names at issue are registered with NSI;
- Registrants information from the "WHOIS" database
was accurate;
- The domain name registrants are bound by the Network Solutions
service agreement version 4.0; and
- The domain registration for the disputed domain names are
on "Hold" status.
As Respondent did not submit a response to the Complaint
within twenty (20) days pursuant to Rule 5(a), the Administrative
Panel issues its decision below based upon the Complaint, the filed
documents, the Policy, the Rules, and the Supplemental Rules without
the benefit of any response from Respondent.
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Factual Background
The Complainant is the owner of numerous trademarks,
service marks and trade names that include the terms Colgate, Palmolive,
Colgate-Palmolive and various combinations of the above. The marks
are famous and have been used around the world for a wide variety
of personal care and household cleaning products including toothpaste,
toothbrushes, soap, dishwashing liquid and shampoo. Complainant
owns the registered United States trademarks COLGATES (Registration
No. 57,034), PALMOLIVES (Registration No. 210,594), COLGATE-PALMOLIVE
READY-TO-CLEAN (Registration No. 1,903,316). Similarly, Complainant
has registered its trademark internationally. For example, Complainant
has registered COLGATE-PALMOLIVE, as a trademark in Great Britain
and Northern Ireland (Registration No. 890326 and 890327).
Respondent registered the domain names ,
<colgate-palmolive.net> and with the Registrar
on February 6, 1998. Respondent has also registered the domain <coke-cola.net>,
, <magic-kindom.net> and
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Parties' Contentions
A. Complainant contends that the domain names ,
and are substantially
similar to, and, in fact, identical to Complainant¹s COLGATE, PALMOLIVE
and COLGATE-PALMOLIVE trademarks and service marks.
B. Complainant contends that Respondent has no rights or legitimate
interest in the disputed domain names.
C. Complainant contends that Respondent registered and is using
the domain names in bad faith in violation of the Policy.
D. Respondent does not contest that the domain names are identical
with or confusingly similar to Complainant¹s trademark and service
marks.
E. Respondent has not contested that it has no rights or legitimate
interest in the disputed domain names.
F. Respondent has not contested that it has acted in bad faith in
registering and using the domain names.
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Discussion and Findings
To obtain the requested relief, paragraph 4(a) of the
Policy requires the Complainant to prove each of the following:
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That the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights; and
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That the Respondent has no rights or legitimate
interest in the domain name; and
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That the domain name has been registered and used
in bad faith.
- Similarity Between Registrants Domain Names and Complainants
Trademarks.
In this case, it is clear that the domain names registered
by Respondent are identical to the registered trademarks and service
marks owned by Complainant. The addition of .net or .com or the absence
of the space between the words is not significant in determining similarity.
The panel concludes that Complainant has met its burden of proof on
the first prong and that the domain names are identical to and confusingly
similar to Complainants trademarks and service marks.
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Respondents Rights or Legitimate Interest
in the Domain Names.
Under paragraph 4(c) of the Policy, evidence of a
registrants rights or legitimate interest in the domain name
includes:
- Demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior to the
dispute;
- An indication that the registrant has been commonly known
by the domain name even if it has acquired no trademark rights;
or
- Legitimate noncommercial or fair use of the domain name
without intent to divert consumers or to tarnish the trademark.
Respondent has not shown, and cannot show, that it
has made any legitimate use
of the disputed domain names which are identical to
the registered and famous trademarks and service marks of Complainant.
Complainant thus has met its burden of proof with regard to the
second prong under paragraph 4(a)
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Respondents Bad Faith Registration and
Use of the Domain Name.
Under paragraph 4(b) of the Policy, evidence of Respondents
bad faith registration and use includes:
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Circumstances indicating the domain name was registered
for the purpose of resale to the trademark owner or competitor
for profit;
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A pattern of conduct showing an attempt to prevent
others from obtaining a domain name corresponding to their trademarks;
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Registration of the domain name for the purpose
of disrupting the business of competitor; or
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Using the domain name to attract, for commercial
gain, Internet users to Respondents web site by creating
a likelihood of confusion with the trademark owners mark.
Here, Respondents bad faith has been amply demonstrated.
Complainant has demonstrated that Respondent sought
to profit from the domain names by seeking excessive payments from
Complainant in return for a transfer of the domain names. Such a demand
for payment has been deemed evidence of bad faith. See World
Wrestling Federation Entertainment, Inc. v. Michael Bosman, ICANN
Case No. D99-0001(January 14, 2000) (finding that demand for payment
constituted both bad faith use and registration).
Similarly, Complainant has also shown that Respondent
has registered numerous other domain names identical to well-known
marks of others, including those of Coca-Cola and Walt Disney. Panel
decisions have found that registration and ownership of numerous domain
names, which are the names or the marks of well-known business entities
unaffiliated with the registrant, may serve as evidence from which
an adverse inference of bad faith may be drawn. See Stella
DOro Biscuit Co., Inc v. The Patron Group, Inc., ICANN Case
No. D2000-0012; Nabisco Brands Co. v. The Patron Group, Inc.,
ICANN Case No. D2000-0032; America On Line Inc. v. QTR Corporation,
National Arbitration Forum, No. FA0092106 (February 10, 2000) (finding
bad faith where Respondent engaged in pattern of registering domain
names that infringe upon other entities trademarks). The Panel hereby
finds that Complainant has met its burden of showing that Respondent
has registered and used the domain names in bad faith.
Accordingly, under the standards applicable to this
proceeding, the Panel concludes that Complainant is entitled to relief
on the record presented.
The Panel concludes: (a) that the domain names <colgatepalmolive.com>,
<colgatepalmolive.net> and <colgate-palmolive.net> are
identical to and confusingly similar to the trademarks and service
marks COLGATE, PALMOLIVE and COLGATE-PALMOLIVE; (b) that Respondent
has no rights or legitimate interest in the domain names; and (c)
that Respondent registered and used the domain names in bad faith.
Therefore, pursuant to the Policy and the Rules, the Panel orders
that the domain names <colgatepalmolive.com>, <colgatepalmolive.net>
and <colgate-palmolive.net> be transferred to the Complainant
Colgate-Palmolive Company.
Date: April 7, 2000 Nelson A. Diaz
Presiding Panelist
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