GOJO Industries, Inc. v. Sunggil choi / The best hand sanitizers
Claim Number: FA2004001891557
Complainant is GOJO Industries, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, United States. Respondent is Sunggil choi / The best hand sanitizers (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purell-sanitizer.com>(‘the Domain Name’), registered with Tucows Domains Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2020; the Forum received payment on April 9, 2020.
On April 13, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <purell-sanitizer.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 April 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2020 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@purell-sanitizer.com. Also on April 14, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark PURELL, registered, inter alia, in the USA for hand sanitizer products with first use recorded as 1991.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s mark containing it in its entirety and adding only a hyphen, the descriptive term ‘sanitizer’ and the gTLD .com, which do not prevent said confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name is currently being used for a website prominently displaying the phrase “The best hand sanitizers”, the type of product marketed by the Complainant, as well as an e-mail submission box in which visitors may sign up to receive “Promotions, new products and sales. Directly to [a consumer’s] inbox.” from Respondent. Respondent’s clear intention is then for visitors to submit their personal e-mail addresses to receive promotional information related to the sale of hand-sanitizing products. Respondent is redirecting consumers with the Domain Name to Respondent’s site to conduct business or otherwise promote hand-sanitizer via e-mail. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Panels have established that online retailers’ use of a complainant’s trademark in its domain for a commercial purpose “does not comport with Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) as there is no bona fide offering of goods or services or legitimate noncommercial or fair use”.
Respondent acquired the Domain Name on March 14, 2020, at a time when the public was in fear for what the future might hold due to COVID 19 and demand for health and sanitization supplies, such as hand sanitizer, skyrocketed to levels unprecedented in recent history. In fact, Respondent registered the Domain Name the day immediately following the United States’ Declaration of a National Emergency, and mere days after the World Health Organization’s official classification of the COVID-19 viral disease a pandemic. Respondent seized on the panic spread across the population to create a website at the Domain Name, and as recently as April 2, 2020 used the Complainant’s PURELL hand sanitizer brand and logo on its web site to draw in panicked consumers. Respondent sought to exploit the fears of the public by selling what appeared to be PURELL branded sanitizers for exorbitant prices, which in some jurisdictions may now even be illegal and the products could have been counterfeit.
Respondent’s registration and use of the Domain Name is likely to confuse consumers into believing that Respondent and its site are somehow affiliated with or sponsored, endorsed or approved by the Complainant.
This activity further constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Complainant has been contacted by numerous members of the public and government officials, mistakenly believing the Complainant was somehow connected to Respondent and its web site and concerned about the price gouging taking place on that website. The Complainant has been accused of taking advantage of the public during the COVID-19 worldwide pandemic emergency. The Complainant and its goodwill associated with the PURELL trademark have been harmed by Respondent’s conduct.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark PURELL, registered, inter alia, in the USA for hand sanitizer products with first use recorded as 1991.
The Domain Name registered in 2020 has been used to offer hand sanitiser products using the Complainant’s logo.
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's PURELL mark (which is registered, inter alia, in USA for hand sanitizer with first use recorded as 1991), the generic term ‘sanitizer’, a hyphen and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the term ‘sanitizer’ to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s mark under the Policy.
The gTLD .com does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Finally a hyphen does not prevent a domain name being confusingly similar to a Complainant’s trade mark. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name.
The web site attached to the Domain Name used the Complainant's PURELL mark and its logo to offer sanitizer. It did and does not make it clear that there is no commercial connection between the site attached to the Domain Name and the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offered products under the Complainant’s logo and currently invites interest in unspecified hand sanitizer using the Domain Name. The use of the Complainant’s logo shows the Respondent is aware of the Complainant, its business, rights and products. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and products on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purell-sanitizer.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 9, 2020
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