WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Auto-C, LLC v. MustNeed.com
Case No. D2004-0025
1. The Parties
The Complainant is Auto-C, LLC, Memphis United States of America, represented by Reinhart Boerner Van Deuren s.c., United States of America.
The Respondent is MustNeed.com, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <autochlor.com> ("the domain name") is registered with Moniker Online Services, LLC ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2004. On January 15, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On January 19, 2004, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 20, 2004.
The Center appointed Warwick Smith as the Sole Panelist in this matter on February 27, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In the absence of any response from the Respondent, the Panel has considered whether the Center has discharged its responsibility to forward the Complaint to the Respondent (paragraph 2(a) of the Rules). The Panel is satisfied that it has. The Complaint was forwarded by courier to the correct Post Office Box, and was also emailed to the appropriate email addresses. Overall, the Panel is satisfied that the Center has discharged its responsibility "to employ reasonably available means calculated to achieve actual notice [of the Complaint] to Respondent" (Rule 2(a) of the Rules).
In the course of the Panelís preliminary consideration of the Complaint, the Panel came to the view that the Complaint did not contain adequate evidence that the Complainant (as opposed to some other company or companies within the group of companies of which the Complainant is a member) was the owner of at least one of the trademarks on which the Complaint was based. However, it appeared to the Panel that, if the Complainant were permitted to submit further evidence, it was highly likely that the Complainant could provide proof of ownership of one or more of those marks. Accordingly, the Panel followed the procedure adopted by the learned panelists in WIPO Case No. D2000-1490 (Creo Products Inc v. Website in Development) and WIPO Case No. D2001-0592 (Brown Thomas and Company Ltd v. Domain Reservations), and this Panelís own decision in WIPO Case No. D2003-1023 (Harvey World Travel Ltd v. GamCo), and invited the Complainant to provide a supplementary statement clarifying what it claimed were its "rights" within the meaning of that word in Paragraph 4(a)(i) of the Policy.
That supplementary statement was to be filed with the Center (and copied to the Respondent) by March 15, 2004. The Respondent was given until March 19, 2004, to make any Response it might wish to make. The time for the Panel to forward its decision was extended under paragraph 15(b) of the Rules, to March 26, 2004.
The Complainant submitted its supplementary statement in electronic form on March 11, 2004, minus attachments. Because a hard copy of the supplementary statement (with attachments) was not received by the Panel until March 29, 2004, the time for the Panel to give its decision on the Complaint was further extended to April 2, 2004.
The Complainantís supplementary statement has been considered by the Panel. The Respondent did not file any response.
4. Factual Background
The following information is taken from the Complaint and the Complainantís supplementary filing. In the absence of any Response, Rule 5(e) of the Rules requires that, absent exceptional circumstances, the Panel must decide the dispute "based upon the Complaint." The Panel accordingly takes the following matters as sufficiently proved.
The Complainant is a United States corporation based in Memphis, Tennessee. It supplies dishwashing, cleaning, and sanitation products and services for restaurants, institutions, and commercial environments, and it and its predecessors have been market leaders in that field for approximately 66 years.
The Complainant is a wholly-owned subsidiary of JohnsonDiversey, Inc. (formerly known as SC Johnson Commercial Markets Inc.), which in May of 2002 had acquired the Auto-Chlor System Division of a corporation called DiverseyLever Inc.
The Complainantís Trademarks
The Complainant has produced evidence of a number of trademarks registered with the United States Patent and Trademark Office. First, the word mark AUTO-CHLOR is registered in international class 3 for a number of product categories, including "laundry preparations, detergents, stain removers, fabric softeners, grease removing preparations for commercial dishwashers, floor cleansers, and so-on (Registration Number 1617277). The effective registration date of this mark is August 18, 1989.
In addition, the Complainant has proved the existence of registrations in international classes 5 and 7, of stylized versions of the mark AUTO-CHLOR. The first of these registered marks (registration number 505303) has been registered with effect from February 24, 1948, in respect of "chemical solutions for sterilizing eating utensils." The design incorporates the words "Auto-Chlor" in a curved, stylized script on a white background, with a curved dark border around the white background. The international class 7 registration consists of the words "Auto-Chlor" in stylized script form. This mark (registration number 845387) has been registered with effect from December 23, 1966, in respect of "commercial dishwashing machines."
The Complainant has also produced evidence of registrations of two marks consisting of the words "Auto-Chlor SYSTEM," each in stylized script, in international classes 11 and 37 (registration numbers 1018200 and 363438). The class 37 registration (effective from May 1974) is for "maintenance and repair of dishwashing equipment," and the class 11 registration (effective from June 1938) is for "chlorinating units for use with water systems."
In respect of each of these marks, the "TESS" printouts produced by the Complainant show that the registrant of the marks is "Auto-Chlor System, Inc.", a Tennessee-based corporation which, at least in recent times, has operated from the same Memphis address as the Complainant.
Although the Complainant is not shown as the owner of these marks in the "TESS" printouts which were annexed to the Complaint, the Complainant has provided with its supplementary filing sufficient evidence of assignments recorded at the United States Patent and Trademark Office, to establish that the Complainant is now the owner of United States registration numbers 1617277, 505303, 845387, 1018200 and 363438.
The Complainant and its predecessors have invested a substantial amount of money and effort in advertising and promoting goods and services by reference to these registered marks. The AUTO-CHLOR trademark is highly distinctive of the Complainantís goods and services, and the Complainant has achieved a significant degree of consumer goodwill, recognition, and reputation in those marks.
The Respondent and the Domain Name
The domain name was registered on November 13, 2002. The Respondent was the registrant, and it was also the administrative, billing, and technical contact for the domain name. The Whois printout for the domain name shows that the record was last updated on September 25, 2003.
The domain name currently resolves to a website which offers the domain name for sale and contains a generic Internet search engine and directory. The web page from the site at "www.autochlor.com" which the Complainant downloaded on January 12, 2004, contains the words "Your Super Search Engine Ė autochlor.com" in the top left hand corner. "autochlor.com" appears in stylized form a little below that, with the words "FOR SALE" a little further below.
The website at the domain name contains numerous links to other websites, to be accessed by clicking on the relevant topic heading. The topic headings are grouped under the categories "Health," "Job & Learning," "Internet," "Travel," "Finance," "Shopping," "Lifestyle" and "Others." At the top right hand side of the web page, the site visitor is exhorted: "Earn Money, JOIN NOW!" and immediately below that are the words: "Looking for a new guide, find it." A "Search it" icon on which the browser can click is immediately below that.
The Complainant only recently became aware that the Respondent had registered the domain name. On December 12, 2003, the Complainantís counsel emailed a letter to the Respondent demanding the transfer of the domain name to the Complainant. The letter from the Complainantís counsel noted: "It does not appear that your company has any legitimate claim to this trademark or domain name."
The Complainantís counsel received an email response from "Lee" stating:
"Thank you for your email. Unfortunately we are located in China and we had no idea about who and what your client is. We would be willing to transfer this domain name to your client for US$1,200 for a quick resolution if your client would be interested. Please let me know if this is acceptable.
The Complainantís counsel responded by email on December 23, 2003, advising that his client was not generally inclined to pay for domain names which it believed infringed its trademark rights, but for the sake of resolving the matter quickly would be willing to pay $250 for the transfer of the domain name. The Complainant did not receive any reply to that counter-offer, and this administrative proceeding was then commenced.
5. Partiesí Contentions
Domain Name Identical or Confusingly Similar to Trademark in which Complainant has Rights
1. The domain name incorporates the Complainantís AUTO-CHLOR mark in its entirety. A domain name that incorporates the entire trademark of a Complainant will be held to be identical or confusingly similar to the Complainantís registered marks, and will be transferred to the Complainant (citing WIPO Case No. D2003-0007; EH New Ventures Inc. v. WW Processing, WIPO Case No. D2003-0111; Inland Homebuilding Group Inc. v. Flashmasters Photography Inc., and WIPO Case No. D2003-0004; Philip Morris Inc. v. r9.net.
Respondent has No Right or Legitimate Interest in the Domain Name
1. The Respondent has not been licensed by the Complainant to use and/or register any domain name incorporating the Complainantís AUTO-CHLOR trademarks.
2. The Respondent has never conducted business under any "Auto-Chlor" or "AutoChlor" trademarks. The website to which the domain name now resolves is a generic Internet search engine and a directory, and it offers the domain name for sale.
3. The Respondentís registration of the domain name prevents valid use of the domain name by the Complainant, and therefore wastefully restrains the legitimate and proper use of the domain name and unlawfully tarnishes the Complainantís marks.
4. For the foregoing reasons, the Respondentís use of the domain name and the Respondentís trademarks is not legitimate (citing National Arbitration Forum Case FA0104000097097 Ė Caterpillar Inc. v. Vine; Decision June 22, 2001).
Respondent has registered and is using the Domain Name in Bad Faith
1. Under 15 U.S.C. Section 1072, registration of the Complainantís marks constitutes constructive notice of those marks. The Respondent has therefore had legal, if not actual, notice of the Complainantís marks prior to registering the domain name.
2. The Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for consideration in excess of the Respondentís documented out-of-pocket costs. That is evidenced by the Respondentís request for US$1,200 for the transfer of the domain name to the Complainant.
3. By refusing to sell the domain name at a cost not exceeding its out-of-pocket expenses, or by otherwise refusing to respect the Complainantís trademark rights, the Respondent has registered the domain name in order to prevent the Complainant from using the domain name.
4. The Respondent has registered the domain name to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location, or of a product or service on that website or location.
5. The Complainant has not abandoned or otherwise waived its rights to the domain name (citing WIPO Case No. D2000-0901 Ė Vereniging Bovag v. Bastiaan Roest).
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondentís] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondentís] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the respondentís] website or location or of a product or service on [the respondentís] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 15(a) of the Rules requires the Panel to:
"Ö 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 5(e) of the Rules provides that, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. By Paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a partyís failure to comply with any provision of the Rules.
A. Identical or Confusingly Similar
The Panel has no difficulty in finding this part of the Complaint proved.
The Complainant has shown that it has rights in the wordmark AUTO-CHLOR (United States Trademark Registration No 1617277). That registered mark is almost identical to the domain name. Leaving aside the generic "com," the only difference is the hyphen. That difference is far too insignificant to distinguish the domain name from the Complainantís marks, and the "confusingly similar" test in paragraph 4(a)(i) of the Policy is clearly met.
B. Rights or Legitimate Interests
The Policy requires that a Complainant must prove each of the elements in paragraph 4(a), and it might be thought that proving a negative (that the respondent does not enjoy some right or legitimate interest in the domain at issue) could pose particular difficulties for complainants. But the wording of paragraph 4(c) of the Policy appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest (see for example WIPO Case No. D2000-1074, Sony Kabushiki Kaisha v. Sony.net). The Panel agrees with that general approach.
In this case, the Complainant has not licensed or otherwise permitted the Respondent to use an expression which is virtually identical with the Complainantís registered marks, whether as part of a domain name or otherwise. That alone would be enough to call for some response from the Respondent showing that it has some right or legitimate interest in the domain name.
However, the Panel in this case does not need to rely solely on the Respondentís failure to submit any response, to reach the conclusion that the Respondent has no right or legitimate interest in the domain name.
First, there is no apparent connection between the domain name and the search engine and directory business presently being operated at the site to which the domain name resolves. Indeed, that website appears to offer the domain name for sale. Further, there is no evidence that the Respondent is or has ever been involved in the manufacture or distribution of cleaning agents or detergents, or in any other business involving chlorination or chlorine-based products.
In those circumstances, the Panel can think of no reason why the Respondent would have selected the domain name, unless the Respondent was aware of the Complainant and/or its trademarks. In the Panelís view, it is highly improbable that anyone who was unaware of the Complainant or its trademarks (and who was not involved in any business involving chlorination or the use of products containing chlorine) would have come up with the name "autochlor" by chance. Even for speakers of the English language that would be pushing the bounds of probability too far, and in this case the Respondent appears to reside in a country where English is not the main language.
In the absence of any formal response in this proceeding, the Panel is not prepared to accept the assertion in "Leeís" December 2003 email that "we had no idea about who and what your client is." If the Respondent did have some right or legitimate interest in the expression "autochlor," the Respondent was effectively invited to say so when it received the email from the Complainantís counsel in December 2003 (that was the email in which the Complainantís counsel commented that it "does not appear that your company has any legitimate claim to this trademark or domain name"). The Respondent did not assert any legitimate claim to the trademark or the domain name Ė all it did was claim ignorance of the Complainantís rights and offer to sell the domain name to the Complainant. If the Respondent had been using the domain name in connection with any bona fide offering of goods or services, or otherwise for some legitimate non-commercial or fair purpose, that would have been the time to say so.
For the foregoing reasons, the Panel concludes that the Respondent has no right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
The Panel also finds this part of the Complaint proved, for the following reasons:
1. The domain name is almost identical to the Complainantís registered word mark.
2. There is no evidence of the Respondent ever having carried on any business to which (or in which) the expression "autochlor" might have had some relevance.
3. There is no other evidence why this apparently Taiwan-based Respondent might have legitimately chosen an English language expression which appears to combine (and shorten) the concepts of automation and chlorination (or the use of chlorine-based products).
4. Although there is no evidence of the Complainantís products being sold in Taiwan, and no evidence of the Complainant or its products having any significant reputation or goodwill in Taiwan, it is highly improbable that the Respondent could have hit upon a made-up name like the domain name by chance, without any knowledge of the Complainant or its marks.
5. There is no evidence of the Respondent ever having used the domain name, other than as a pointer to the search engine/directory website apparently operated by the Respondent.
6. The Respondentís website is in the English language, and the Respondent appears to be a sophisticated provider of Internet services. Its registration agreement with the Registrar is in the English language, and is subject to the laws of the State of Florida and the Federal laws of the United States of America. In that registration agreement, the Respondent warranted that to the best of its knowledge and belief, neither the registration of the domain name nor the manner in which the Respondent intended to use it would directly or indirectly infringe the legal rights of any third party. In the Panelís view, it is highly improbable that an obviously experienced provider of Internet services such as the Respondent would have provided that warranty without checking to ensure that there were no "autochlor" trademarks registered with the United States Patent and Trademark Office. Any such search would have led the Respondent to the Complainant and its registered marks.
7. The Respondentís website appears to show that the Respondent was offering the domain name for sale, and the Respondentís response when approached by the Complainant was to offer to sell the domain name to the Complainant.
8. In the absence of any explanation or response from the Respondent, the Panel is prepared to infer that the sum of US$1,200 for which the Respondent tried to sell the domain name to the Complainant, would have exceeded the Respondentís out-of-pocket costs directly related to the domain name.
9. In the registration agreement with the Registrar, the Respondent agreed to provide certain true, current, and complete and accurate information about itself (as required by the application process). The name of the registrant of the domain name <mustneed.com> does not appear to be the real or complete name of any person or corporation. The provision of incomplete or inaccurate registration information can be an indicator of bad faith registration (see for example WIPO Case No. D2000-0003, Telstra Corporation v. Nuclear Marshmallows; and WIPO Case No. D2000-0111, Home Director Inc. v. Homedirector).
10. The Respondent has failed to file any response. The Panel is entitled to draw such inferences from that default as it considers appropriate (Paragraph 14(b) of the Rules). Put together with the other factors listed above, the Respondentís failure to respond to the Complaint tends to confirm the impression of bad faith registration and use suggested by those other factors.
11. Having regard to the matters listed 1-10 above, the Panel finds that the domain name was registered by the Respondent for the purpose of selling it to the Complainant, for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name. The Panel further finds that, pending sale to the Complainant, the Respondentís purpose was to attempt to attract, for commercial gain, Internet users to the Respondentís website, by creating a likelihood of confusion with the Complainantís AUTO-CHLOR marks as to the source, affiliation or endorsement of the Respondentís website. Those circumstances constitute bad faith registration and use under paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <autochlor.com> be transferred to the Complainant.
Dated: March 30, 2004