WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Clorox Company v. Domains for sale, dba Netegg
Case No. D2010-0831
1. The Parties
Complainant is The Clorox Company of Oakland, California, United States of America (the “Complainant” or “Clorox”), represented by Howard Rice Nemerovski Canady Falk & Rabkin, United States of America.
Respondent is Domains for sale, dba Netegg of Baltimore, Maryland, United States of America (the “Respondent” or “Netegg”), represented by Lewis & Hand, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cloro.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2010. On May 25, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 25, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response June 17, 2010. The Response was filed with the Center June 17, 2010.
Following the submission of the Complaint and Response, the parties submitted the following additional documents:
1. Complainant’s supplemental filing of June 29, 2010;
2. Respondent’s letter of July 2, 2010 objecting to Complainant’s supplemental filing;
3. Complainant’s reply of July 13, 2010 to Respondent’s letter of July 2, 2010;
4. Further objection from Respondent dated July 13, 2010; and
5. Further communication from Complainant dated July 13, 2010.
The Center appointed Christopher S. Gibson, Sandra J. Franklin and Diane Cabell as panelists in this matter on July 15, 2010. The Panel finds that it was properly constituted. Each member of 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.
Supplemental filings: The Panel considers that while it may have discretion to accept unsolicited supplemental filings from the parties, there are no special circumstances in this case that justify doing so. In this regard, the Panel weighs not only Respondent’s objections to Complainant’s supplemental filings, but also the concern that if such supplementary submissions were to become frequent in UDRP disputes, the disputes would likely become significantly more resource-consuming to all the actors (i.e., the parties, the dispute resolution service provider, and the Panel) than is currently the case, which presents an outcome that seems contrary to the original intention of the Policy and the Uniform Rules in their present form.
4. Factual Background
Complainant is the manufacturer and distributor of a line of bleach and cleaning products under the trademark CLOROX, including bleach, cleaners, disinfectant wipes, and toilet bowl cleaners which are sold throughout the United States and abroad. Complainant's CLOROX brand bleach has been sold in the United States since 1912.
Clorox is the owner of numerous United States federal trademark registrations and foreign registrations for many word and design marks incorporating the term CLOROX (collectively, the “CLOROX Marks”) in various classes, including the mark CLOROX.COM.
Complainant has used the domain name <clorox.com> since 1994 to advertise, promote, and provide information regarding its products under the CLOROX Marks.
The Domain Name was registered on January 8, 2000.
5. Parties’ Contentions
Complainant alleges that Respondent has registered the Domain Name <cloro.com> in an effort to divert persons interested in the goods and services offered by Complainant and to trade unfairly on the goodwill associated with Complainant’s CLOROX Marks. By merely omitting the “x” from the CLOROX mark, the Domain Name is a classic example of typosquatting—a slight misspelling of a registered trademark designed to divert Internet traffic.
Identical or confusingly similar: Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. With the mere omission of an “x,” the Domain Name is virtually identical to Complainant’s well-known CLOROX Marks and presents a classic example of typosquatting: the Domain Name is designed to divert Internet traffic to Respondent’s site based upon typing errors, and is so similar to Complainant’s CLOROX Marks that it is likely to cause confusion among the consuming public. Moreover, Complainant has submitted evidence to show that since registering the Domain Name, Respondent has used it to purport to be an online destination for Complainant’s CLOROX cleaning products. In particular, Respondent has promoted the Domain Name as “Your destination for Clorox Cleaning Products,” while providing links on that website to products that complete with CLOROX products, such as Seventh Generation. Respondent has also advertised that “Cloro.com is your gateway to sites on the Internet for clorox cleaning products!” Until Complainant first contacted Respondent in February 2010, the HTML title for the Domain Name’s website was “Cloro.com – Clorox cleaning products Resources and Information” and Respondent had also designated “clorox cleaning products” as keywords for the site. Complainant therefore argues that – particularly in light of Respondent’s use in of the Domain Name – there can be no dispute that it is confusingly similar to Complainant’s CLOROX Marks.
No rights or Legitimate Interests: Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name. In particular, Respondent is not using the Domain Name in connection with a bona fide offering of goods and services because Respondent’s use, which intentionally trades on the fame of another, cannot constitute such a bona fide offering. Complainant holds extensive and long-standing rights to the CLOROX Marks and has never authorized or licensed Respondent’s use of those marks. Respondent has no active United States trademarks or applications for the CLOROX Marks, and on information and belief, Respondent has not used the CLOROX Marks in commerce or otherwise except in connection with the Domain Name. Pursuant to the registration records associated with the Domain Name, Respondent is not known by the Domain Name. Further, Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but instead is acting with intent for commercial gain to misleadingly divert customers. Respondent has no legitimate reason to use the Domain Name except to divert Internet users who mistakenly omit the “x” when attempting to type “Clorox.” Accordingly, Respondent has no rights to or legitimate interests in the domain name.
Bad Faith: Finally, Complainant contends that the Domain Name has been registered and is being used in bad faith. Complainant provides several reasons in support of its contention here. First, Complainant states that Respondent’s lack of rights or legitimate interests in the Domain Name creates the presumption that it was registered and used in bad faith. Thus, the Panel’s analysis should be colored with healthy suspicion towards Respondent’s motives in registering and using the Domain Name. Second, Complainant asserts that Respondent registered and is using the Domain Name in bad faith because he knew of the well known CLOROX Marks at the time of registration. Respondent registered the Domain Name in January 2000, nearly 90 years after Complainant began to use the CLOROX Marks. This is evidence of bad faith registration and use, and a previous panel has agreed that “the fame and strength of the Clorox mark is such that the mere registration by the Respondent suggests ‘opportunistic bad faith’ since a legitimate good faith use by a party other than the Complainant or its licensee is hard to conceive.” The Clorox Company v. TechLever Inc., WIPO Case No. D2001-0914 (citing Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group, Co., WIPO Case No. D2000-0163). Third, Respondent registered and used the Domain Name in bad faith because it linked users searching for information related to CLOROX products to pornographic content and advertising for years, thereby tarnishing Complainant’s marks. Fourth, as described above in connection with the CLOROX-related content that was posted on the website associated with the Domain Name, it is clear that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CLOROX Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the services offered on Respondent’s website. The Domain Name consists of Complainant’s CLOROX mark, minus the “x”, and the website has made multiple infringing uses of the CLOROX Marks suggesting sponsorship. It is well settled under the Policy that the practice of typosquatting constitutes bad faith registration. Fifth, Complainant has submitted evidence that Respondent has a history of registering domain names corresponding to trademarks owned by others including, for example, domain names typosquatting on famous trademarks such as Bugs Bunny, Hotmail, McDonald’s, Walt Disney, and Wendy’s. In addition, at least one domain name has been transferred from Respondent when challenged under the provisions of the UDRP. See Telefonica Del Peru SAA v. netEGG.com, WIPO Case No. D2001-1248 (panel transferred the <cablemagico.com> domain name to complainant, finding that “it is Respondent’s common practice to register domain names and then wait for trademark owners to approach it in order to sell them for large sums . . . [which] behavior denotes bad faith under the Policy paragraph 4(b)(i).”). The panel also noted that Respondent had redirected the domain name to a pornographic site “as a pressuring measure” against the complainant. This pattern of behavior indicates bad faith registration and use pursuant to Policy paragraph 4(b)(ii).
Finally, communications between Complainant and Respondent suggest bad faith. Shortly after learning of Respondent’s infringing use of the CLOROX Marks, Complainant sent a letter to Respondent on February 25, 2010, regarding the website connected to the Domain Name. Mr. Rosenfeld answered on behalf of Respondent the following day, and asserted that Respondent’s registration of the Domain Name <cloro.com> merely referred to the Spanish word for chlorine, and that he did not register the Domain Name in order to infringe on Complainant’s intellectual property. Complainant contends, however, that this assertion was a lie because, as shown above, Respondent has used Complainant’s CLOROX Marks on the website connected to the Domain Name for years, and in the English language has advertised the Domain Name to be a “destination for Clorox Cleaning Products,” while providing links to Clorox’s competitors. Most recently, after Complainant contacted Mr. Rosenfeld, he redirected the Domain Name to the website at “www.luisrosenfeld.com/blog” for a time, and then created a revised English language parked page, which displays random links such as “Kamasutra positions” and “Order pizzia [sic].” Mr. Rosenfeld also offered to sell the Domain Name, stating “we may be willing to sell the domain name at issue. As of yet we have not sent this case to our attorney however the if [sic] we should choose to negotiate a fair price for the domain name, the price will increase if legal fees are incurred. Please let us know if your company is interested in purchasing cloro.com from netEGG.” Clorox offered to pay Mr. Rosenfeld USD 300 for the Domain Name, but he refused to sell at that price or to make a counter-offer.
In sum, by registering the Domain Name and using it in connection with a website to misleadingly divert consumers, with the knowledge that it had no legitimate rights in the CLOROX Marks, Respondent is intentionally attempting to attract users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s CLOROX Marks. Respondent therefore registered and used the Domain Name in bad faith, in violation of the Policy.
In its Response, Respondent asserts that it purchased the Domain Name as part of a legitimate business strategy to acquire domain names corresponding to common Spanish language dictionary words. Further, Respondent argues that although Complainant now claims that its CLOROX Marks were tarnished by Respondent’s earlier uses of the Domain Name, Complainant has taken no action for more than 10 years before bringing this UDRP case. Respondent submits that the reason for the delay is that Complainant did not view the Domain Name as a typographical misspelling of the mark CLOROX until it became opportune to do so. In this connection, Respondent argues that a few months ago, Complainant publicly announced a strategy to expand its reach in the Latin American marketplace. Thus, acquiring the Domain Name <cloro.com>, where the word “cloro” means bleach and is commonly used in the generic name for cleaning products in Latin American, would be quite useful for Complainant.
Not confusingly similar: Respondent urges that while determining the validity of a trademark is beyond the scope of the Panel’s authority, prior panels have properly ruled on the question of how much to extend a mark owner’s rights to domain names that are not identical to the mark at issue. In this case, Respondent emphasizes that “cloro” has been recognized as a dictionary word throughout much of Europe and South America.
Respondent states that while Complainant’s founders coined the mark CLOROX, Complainant’s rights in the mark cannot and do not extend to all uses of the word “chlorine” in connection with bleaches and cleansing products, as chlorine is a dominant element in Complainant’s and other third party bleaches. Further, in the international context where Spanish, Italian and Portuguese languages are spoken, the CLOROX mark is especially weak in that it closely resembles the primary ingredient of – and in some countries, the generic term for - the main products for which it is used. For example, in Mexico, one of the most popular brands of bleach is called Cloralex, a brand that advertises “detergente + cloro” or “sin cloro” (detergent plus chlorine, or without chlorine). Other major brands from Henkel, La Corona and Colgate Palmolive use the word “cloro,” respectively, in their liquid bleach product names “Densicloro,” “Cloro Pura Sol” and “Ajax Cloro.” Search results for the word “cloro” on Spanish language search sites do not display Complainant or its CLOROX marks. In addition, the websites <cloro.net>, <cloro.org>, <cloro.info> display content related to “cloro” – chlorine. To allow Complainant to claim exclusive rights in the common word “cloro” would extend far beyond the scope of the rights it has in its CLOROX marks.
Respondent further asserts that the Domain Name is not identical to the CLOROX marks in that it does not contain the letter “x.” The removal of the “x” from “Clorox” to form the term “cloro” so significantly transforms the CLOROX mark, that it no longer has the same commercial impression. In addition, the cases cited by Complainant in support of its contention that “cloro” is confusingly similar to CLOROX are completely inapposite, because the single-letter changes to the domain names at issue in those cases were not dictionary words of their own accord (e.g., in the cases cited, neither “edmundss” nor “redbul” are common words or phrases with meanings separate from the marks claimed to be infringed, much less was it argued that the removal of a single letter created a common dictionary word in another language).
Respondent adds that it took Complainant more than a decade to decide that the Domain Name <cloro.com> was a typo of <clorox.com>, notwithstanding the fact that Complainant has been filing UDRP complaints since 2001. Much more likely, Respondent argues that Complainant, which already owns the domain name <bleach.com>, decided in connection with its recently announced strategy to expand its brand in Latin America that it needed the Domain Name which is Spanish for bleach – <cloro.com>. Complainant has done its best to paint Respondent as a serial cybersquatter of typo domains, but “cloro” is not a typo. Accordingly, the Domain Name should not be found to be confusingly similar to Complainant’s CLOROX marks.
Rights and legitimate interests: Respondent explains that, since the late-1990s, it has been in the business of registering domain names, the vast majority of which, including the Domain Name, fall into generic categories, such as random four-letter combinations and common dictionary words. When Respondent started acquiring domain names, most common English language dictionary words had already been registered and were therefore more expensive. Through its Spanish-speaking management, Respondent seized the opportunity to invest in domain names corresponding to Spanish language dictionary words. Respondent states that the Domain Name was purchased in January 2000 as part of its collection of common Spanish language dictionary words – namely, one of the 118 chemical elements of the periodic table, as the word “cloro” means chlorine in Spanish. These domain names were purchased over a period of years starting in late 1999, together with a collection of other domain names in the field of chemicals and minerals. Respondent also owns hundreds of other generic Spanish words for plants, animals, other nouns, verbs and adjectives.
Respondent states that its core business model is not to intentionally profit from other entities’ trademarks. Respondent also regrets the other domain name registrations pointed out by Complainant that may raise trademark concerns, but affirms that the Domain Name <cloro.com> falls in an entirely separate category, as it was genuinely acquired in good faith for its generic properties as a common Spanish language word. Respondent asserts it has the right to use its Spanish language generic domain names to host any type of content and to sell these domain names for their fair market value, because the domain names are dictionary words, capable of multiple uses and free for anyone to register.
Respondent states that domain names that were purchased in the late 1990s were originally pointed to its website at <netegg.com>, where there was a link for potential buyers to inquire about purchasing domain names. However, Respondent later decided to route its domain names to sites that generated revenue to fund the cost of maintaining its domain name registrations. From approximately 2001 to 2006, Respondent’s <prostitutas.com> adult site was set up as a Spanish language portal to direct users to third party adult content. When the Domain Name was redirected to this portal site, it was part of a group of the Respondent’s domain names that were treated the same way. Later in 2006 to 2007, a large part of Respondent’s domain names, including the Domain Name, were pointed to a mortgage lender portal at <financialave.com>. In 2008, Respondent worked with a company called Revenue Direct to assist in the monetization of its domain name portfolio through affiliate programs and redirection from Respondent’s portals to other monetized websites. Briefly, in 2008, Respondent’s domain names pointed to a third party adult content portal at <sexonline.com> generated by Revenue Direct. Over time, Respondent domain names were pointed to Revenue Direct’s parking servers, so that each domain name generated content that was not necessarily the same as content displayed for other domain names.
Respondent argues that Complainant does not allege any use of the Domain Name from its registration in January 2000 until October 2008 that was illegitimate. During this time, the Domain Name pointed to Respondent’s business website, a Spanish-language adult content portal, a mortgage lending site and another adult content portal – all unrelated to Complainant’s CLOROX marks. Regardless of one’s personal opinion of adult content sites, these types of uses were bona fide business offerings. Moreover, Complainant has offered no evidence that its own CLOROX Marks have been tarnished by the direction of the Domain Name to the <prostitutas.com> adult content site. Respondent claims that more than 70% of visitors to the site used computers located in Central and South America. Further, Respondent did not use the Domain Name in connection with adult content with Complainant’s mark’s mind, let alone with any intent to tarnish its marks. For all of the foregoing reasons, Respondent respectfully submits that it has demonstrated that it has rights and legitimate interests in the Domain Name.
No bad faith: Respondent states that it did not register the Domain Name in bad faith, and for this reason, the Complaint must also be denied. The word “cloro” existed long before Complainant’s mark. Google traffic analysis tools demonstrate that approximately 550,000 users search for “cloro” per month. Respondent’s analytics reports show that actual visitors to the Domain Name are located primarily in Spanish and Portuguese speaking countries where “cloro” is a common word for a chemical or a cleaning agent. Based on this, it is fair to conclude that the Domain Name is capable of having considerable value separate from any goodwill existing in the CLOROX Marks.
Respondent argues that Complainant itself may very well have recognized that Respondent had a good faith right to register the Domain Name in view of the fact that it took no action for over 10 years. Notwithstanding the fact that Complainant was actively bringing UDRP cases in 2001, it failed to do so against Respondent at a time when the Domain Name was being used to redirect to Respondent’s website. If Complainant believed that Respondent’s initial use of the Domain Name was in bad faith, Complainant should have filed a UDRP complaint years ago. Respondent suspects it wasn’t until Complainant joined the Latinum Network with a focus on the Latino market, that obtaining the Spanish word for “bleach” became a priority for Complainant.
Respondent states that it never purchased keywords incorporating Complainant’s marks nor did it knowingly include Complainant’s marks in the metadata at the website at the Domain Name. Immediately after receiving notice from Complainant, on February 25, 2010, that Clorox-related links were being displayed on a parked page for the Domain Name, Respondent took steps to remedy this. Even were this Panel to be inclined to hold that the provision of CLOROX-related advertisements by a third party parking company was an impermissible use of the Domain Name, Respondent’s intent during this period that the Domain Name was parked – some eight years after it was first registered – cannot be imputed to Respondent’s intent at the time of registration. There is ample evidence in this case that Complainant has known about Respondent’s Domain Name for years, but only filed this Complaint after arriving at the decision that it needed to better target the Spanish speaking market for bleach. In making its allegations of bad faith registration and use, Complainant glossed over dates and time frames of Respondent’s registration and use of the Domain Name in an effort to make it appear, inaccurately, that Respondent registered the Domain Name and immediately began using it to host pages of competitive links in the English language. Nowhere in Complainant’s papers does it provide any evidence to establish that Respondent registered the Domain Name with the bad faith intent to profit from Complainant’s CLOROX mark.
Respondent responds to Complainant’s argument that this Panel should strip Respondent of the Domain Name because Respondent registered seven unrelated domain names that may be typographical misspellings of third party trademarks. Out of Respondent’s portfolio of roughly 900 domain names, Complainant found seven, which it claims establish that Respondent is a serial cybersquatter. The real pattern – the one that Complainant chose to ignore – is established by the hundreds of generic Spanish language domain names registered by Respondent for their value as dictionary words. The clear pattern that emerges is that Respondent’s primary business purpose was in registering Spanish language words as domain names, which included numerous domain names based on the names of elements, chemicals and minerals. It is regrettable that Respondent also registered a small number of domain names that could be classified as trademark typos, but it is clear that the Domain Name fits squarely within the 99% of the domain names that Respondent registered for their value as dictionary words.
In addition, Respondent argues that, in the absence of any material evidence of bad faith, Complainant attempts to misrepresent the facts and circumstances of a single UDRP complaint filed against Respondent in 2001, which was granted in a default judgment when Respondent did not submit a response or challenge any of the complainant’s allegations. Telefonica Del Peru SAA v. netEGG.COM, WIPO Case No. D2001-1248. One adverse UDRP decision in ten years does not constitute a “pattern,” and no inference of bad faith is warranted against Respondent by virtue of the fact that Respondent lost a default decision. Respondent asserts that Complainant also fails to mention that Respondent was named in a second UDRP dispute in which Respondent prevailed. In that case, the panel acknowledged that “[i]t might not be surprising if a person who registers names wholesale such as the Respondent would seek to register a simple combination two letters and a number.” Radiodifusora del Centro Sociedad Anonima v. Name for Sale $980/ Louis Rosenfeld trading as netEGG Internet, WIPO Case No. D2001-0634.
Respondent did not acquire the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to Complainant. Prior to February 2010, Respondent has at no time ever offered to sell, license or otherwise convey for financial gain the Domain Name to Complainant or its competitors. Respondent’s offer to sell the Domain Name was made in response to Complainant’s offer to purchase it. Considering an offer to sell a domain name in response to Complainant’s unmeritorious demands is not evidence of bad faith. Because the Domain Name is a generic Spanish language word, and one of numerous similar domain names relating to minerals and elements, bad faith cannot be inferred from Respondent’s refusal to transfer the Domain Name for an amount that is less than the cost of the 11 years of registration fees.
Finally, Respondent observes that Complainant is also in the business of registering common dictionary domain names, including <bleach.com>, <grease.com> and <salad.com>. In January 2010, Complainant announced a strategy to expand its branding and marketing to attract a greater segment of the Latin American and Spanish-speaking population. In view of the fact that “cloro” is a generic word for bleach in many Latin American countries, Respondent suggests that Complainant might view the UDRP process as a chance to acquire a valuable generic Spanish language domain name without having to pay Respondent fair market value. If it were not for the period of time that the Domain Name displayed links and text referencing the CLOROX Marks due to parked page algorithms from Revenue Direct and Sedo starting in late 2008, Respondent states it would ask the Panel to make a finding of reverse domain name hijacking. However, even without this request, Respondent submits that the Complaint is not supported by any evidence that the Domain Name was registered in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights in a trademark for purposes of paragraph 4(a)(i) of the Policy. Complainant has submitted evidence of numerous trademark registrations for its CLOROX Marks both in the United States and abroad. Complainant’s CLOROX Marks are long-established and widely well-known among a significant segment of the consuming public, particularly in the United States where both Complainant and Respondent are located. Respondent, through its director Mr. Rosenfeld, has admitted that he was personally aware of Complainant’s CLOROX trademark, an admission that is unsurprising given the strength and fame of Complainant’s CLOROX Marks.
The Panel must consider whether the Domain Name is confusingly similar to Complainant’s CLOROX Marks. Complainant has maintained that with the mere omission of the letter “x,” the Domain Name is virtually identical to Complainant’s well-known CLOROX Marks and presents a classic example of typosquatting: the Domain Name is designed to divert Internet traffic to Respondent’s site based upon typing errors, and is so similar to Complainant’s CLOROX Marks that it is likely to cause confusion among the consuming public. Respondent, on the other hand, urges that the Domain Name is not identical to the CLOROX Marks in that the removal of the “x” so significantly transforms “clorox” to “cloro,” such that it no longer gives the same commercial impression.
The Panel is of the view that this issue presents a close question. The omission or addition of a single letter in a domain name might normally do little to distinguish the domain name from a particular trademark, as in the cases cited by the Complainant (e.g., the domain names incorporating “edmundss” and “redbul,” were one letter less than or different from the EDMUNDS and REDBULL trademarks, but this did not change the overall impression created by the terms). Here, however, the “x” in Complainant’s CLOROX Marks lends a notable measure of distinctiveness.
In this connection, Respondent has observed that while determining the validity of a trademark is beyond the scope of the Panel’s authority, prior panels have properly ruled on the question of how much to extend a mark owner’s rights to domain names that are not identical to the mark at issue. Respondent maintains that the protection to be accorded to Complainant’s CLOROX Marks should be carefully delimited, particularly in the international context where Spanish, Italian and Portuguese languages are spoken and where the CLOROX Marks are, according to Respondent, relatively weak. The word “cloro” in those languages presumably means “chlorine.”
Here a majority of the Panel finds that it is not necessary to determine the extent of Complainant’s trademark protection. The threshold for paragraph 4(a)(i) is a low one. Complainant clearly has rights and the Panel finds that there is indeed likelihood that some consumers seeking Complainant will be confused.
The Panel finds that Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondent does not suggest that paragraphs 4(c)(ii) or (iii) of the Policy have any application in this case; thus, the focus is on paragraph 4(c)(i). The evidence is clear that Respondent has been using the site to offer various goods and services since at least 2003. A majority of the Panel, however, finds that Respondent has not thereby established any right or legitimate interest under paragraph 4(c)(i).
This case involves uses that varied over a relatively long period of time. Some panelists of are of the opinion that none of the uses were bona fide because they were at all times an intentional attempt to trade on Complainant’s famous mark. Others maintain that while a domain reselling enterprise itself may be a bona fide service, there was little evidence presented that such sales actually occurred making it difficult for the Panel to accept this as a bona fide in the sense of a real and true business purpose. Respondent’s actual business model appears, to this Panel, to be generating revenue from link farming. This, too, can be a legitimate service that assists in consumer searches but not where it serves to misdirect traffic. A person does not normally enter the search term “cloro” (nor many of the other common words registered by Respondent) to find adult content, which leads the Panel to conclude that Respondent’s actual purpose was to benefit from consumer confusion. Arguably, the more recent use to link to commercial sites that use chlorine in their products could constitute a bona fide good or service (albeit a possible infringement), but this use has also evaporated. None of these sites have focused on Spanish-language content which would have legitimized use of the Domain Name as a search vehicle.
In all, the Domain Name has pointed to Respondent’s own website, third party adult content, mortgage lenders, chlorine products, the owner’s personal blog and an English language parked page displaying random links such as “Kamasutra positions” and “Order pizza.” Given this peripatetic history, the Panel is of the opinion that Respondent’s interest is not bona fide, but simply an opportunistic attempt to mislead consumers. See Corrections Corporation of America v. Texas International Property Associates, WIPO Case No. D2008-0280 (finding that “if the overall circumstances of the pay-per-click advertising suggest an intention to drive traffic based on the trademark use of the domain name, panels have generally tended to find that the respondent does not have a legitimate interest, even where the domain name was arguably a generic term). For all of the foregoing reasons, Respondent has failed to demonstrate that it has any rights to or legitimate interests in the Domain Name.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Panel must determine whether the Domain Name has been registered and is being used in bad faith. Complainant argues principally that this is a case of typosquatting: Respondent, by registering the Domain Name consisting of Complainant’s CLOROX Mark minus the “x” and using it in connection with infringing CLOROX-related content posted on Respondent’s website, has intentionally attempted to attract users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s CLOROX Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the services offered on it. Complainant argues that Respondent registered and is using the Domain Name in bad faith because he knew of the well-known CLOROX Marks at the time of registration, having registered the Domain Name nearly 90 years after Complainant began to use the CLOROX Marks. Complainant also asserted that Respondent registered and used the Domain Name in bad faith because it linked users searching for information related to CLOROX products to pornographic content, thereby tarnishing Complainant’s marks. Complainant also argues that Respondent has a history of registering domain names corresponding to trademarks owned by others including typosquatting on famous trademarks such as Bugs Bunny, Hotmail, McDonald’s, Walt Disney, and Wendy’s.
To these arguments, Respondent has answered mainly that it did not register the Domain Name in bad faith, and for this reason, the Complaint must be denied. The word “cloro” existed long before Complainant’s CLOROX Marks and Respondent registered the Domain Name as part of its Spanish language collection. Immediately after receiving notice from Complainant in February 2010 that CLOROX-related content and links on the website connected to the Domain Name, Respondent took steps to remedy this. Thus, even if this Panel is inclined to hold that the CLOROX- related content by a third party parking company was an impermissible use, Respondent’s intent during the period that the Domain Name was parked and/or redirected, for eight years after it was first registered, cannot be imputed to Respondent’s intent at the time of registration. As to the other prior potentially infringing domain name registrations in its collection, Respondent responds that seven domain names that may be typographical misspellings of third party trademarks, out of Respondent’s large portfolio of domain names, does not establish Respondent as a serial cybersquatter. Respondent acknowledges that “[i]t is regrettable that Respondent …registered a small number of domain names that could be classified as trademark typos,” but the Domain Name fits within the group of domain names registered for their value as dictionary words.
The Panel finds that there is undisputed evidence of bad faith use of the Domain Name during the period of October 2008 until February 2010, when Respondent received notice of this case. During this period of more than a year, the website linked to the Domain Name carried multiple direct references to Complainant’s CLOROX Marks and products, such as the phrase “Your destination for Clorox Cleaning Products.” Respondent complains that Complainant waited many years to file this case. However, as other UDRP panels have observed, although paragraph 4(a)(iii) of the Policy uses the present tense (“is being used”) when referring to use, this term does not refer to a particular point in time, but refers to any time following registration when the fact of bad faith use is established. See Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. In addition, as indicated above, Complainant stated that it filed this case shortly after learning of Respondent’s infringing use of the CLOROX Marks. Moreover, it is also clear that Respondent is responsible for the content of the website connect to the Domain Name, even if it was generated by landing-page pay-per-click algorithms. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 and cases cited therein; Balgalow Finance S.A., Fortuna Comercio e Franquias Ltda v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216 (finding that where the domain name was used to attract paid advertising related to complainant’s trademark, it was immaterial that this might by the result of respondent’s use of an automated relevance-matching system).
The last issue to be considered is whether Respondent registered the Domain Name in bad faith. The Policy constrains the Panel to consider this element independently of the other elements required to make a successful UDRP case. A majority of the Panel finds that Complainant did not meet its burden under paragraph 4(a)(iii) of the Policy. Respondent provides evidence that it elected to amass a collection of domain names consisting of common Spanish language words to add to its extensive portfolio, giving examples of many such domain names that were registered along with <cloro.com>. The Declaration of Mr. Rosenfeld states that this strategy was partly due to his personal Spanish language connection. If Respondent did not register this group of domain names, and specifically the Domain Name at issue in this case, with an intent to use the Domain Name in bad faith, then he may use the Domain Name in any legitimate way he chooses, including to attract Internet users to adult-content sites. While pornography business may be in bad taste, it is not by itself bad faith under paragraph 4(a)(iii) of the Policy.
That Respondent knew of Complainant’s trademark does not mean that he intended to trade off the value of that mark by registering the <cloro.com> Domain Name. Though it’s possible that some Internet users may become confused by a domain name that is close to the CLOROX mark, especially by making a typing mistake, that does not translate to Respondent’s intention to use the Domain Name that way at the time of registration. Even subsequent use, some eight years later, in a way that does capitalize on Complainant’s mark, cannot be transformed into bad faith at the time of registration.
Businesses are entitled to register domain names with generic meaning and value as an investment and decide what to do with them later. They may use them for any non-infringing use, or sell them, as they see fit. If a registrant later undertakes an infringing use, trademark holders have other recourse. They are not, however, entitled to the remedy provided by the UDRP, a streamlined process designed to thwart those who register domain names with the specific intent of benefitting from the use of another’s trademark. The word “cloro” is not Complainant’s trademark.
Therefore, a majority finds that Complainant has not satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel (by majority) denies relief.
Christopher S: Gibson
President Panelist (Dissenting)
Sandra J. Franklin
Date: August 13, 2010
This Panelist agrees with the majority that the Domain Name is confusingly similar to Complainant’s CLOROX Marks, that Respondent’s improper use of the Domain Name did not give rise to any rights to or legitimate interests in the Domain Name, and that the Domain Name was used in bad faith by the Respondent. The Panelist writes separately because I would also find that the Domain Name was registered in bad faith. This is a case of typosquatting. The Respondent registered the Domain Name <cloro.com> (omitting the “x” in “Clorox”) with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s CLOROX Marks as to the source, sponsorship, affiliation or endorsement, thereby satisfying paragraph 4(b)(iv) of the Policy.
Although Respondent professes to have been interested in the Domain Name only in relation to its Spanish language meaning, the Respondent never used it to develop any Spanish language content. During relevant periods, the content on the website to which the Domain Name resolved was in the English language, not Spanish (or Portuguese or Italian). Respondent never used the Domain Name for a Spanish language website having anything to do with chlorine (see by comparison, the website for <cloro.org>, which displays content in the Spanish language related to “cloro” – chlorine). This Panelist is inclined to view Respondent’s references to the Spanish-language meaning for “cloro” as an after-the-fact justification. Other than for a short period immediately after registration when the Domain Name pointed toward Respondent’s own website and was listed for sale, from 2001 until February 2010 it has been connected to pornography twice, a financial portal, and a landing page site making unauthorized use of Complainant’s CLOROX Marks (e.g., “Your destination for Clorox Cleaning Products”) and targeting an English speaking audience. Thus, for nine of ten years, Respondent’s main objective appears to have been relying on initial interest confusion among Internet users. This type of business model does not detract from the view that Respondent registered the Domain Name with Complainant’s CLOROX Marks in mind. Moreover, at the time of registration, Complainant’s CLOROX Marks had been in use for 90 years and were very widely well-known in the United States where Respondent is located (Respondent is in Baltimore, Maryland).
Given the widespread recognition and fame of the CLOROX Marks, there is no reason to unduly restrict the degree of protection afforded to them. Respondent acknowledged he was aware of the CLOROX Marks, which is unsurprising given their strength. Indeed, when assessing Complainant’s trademark, a prior UDRP panel observed that “the fame and strength of the Clorox mark is such that the mere registration by the Respondent suggests ‘opportunistic bad faith’ since a legitimate good faith use by a party other than the Complainant or its licensee is hard to conceive.” The Clorox Company v. TechLever Inc., WIPO Case No. D2001-0914. Meanwhile, Respondent admits it was “regrettable” that it registered a number of other typosquatted domain names corresponding to famous trademarks (e.g., “waltdisnet,” “bugsbuny” and “mcdonals”), yet offers no explanation for why it did so. Complainant has submitted evidence that they were used to trade upon the goodwill of those closely similar famous trademarks, and that they were registered near to the time when the Domain Name was registered. Similarly, Respondent has been found to have registered and used a domain name in bad faith in a previous UDRP case. See In Telefonica Del Peru SAA v. netEGG.com, WIPO Case No. D2001-1248 (panel transferred the <cablemagico.com> domain name to complainant, finding that “it is Respondent’s common practice to register domain names and then wait for trademark owners to approach it in order to sell them for large sums . . . [which] behavior denotes bad faith,” and noted that Respondent had redirected the domain name to a pornographic site “as a pressuring measure” against Complainant).
This Panelist is persuaded from the facts and circumstances in this case, including the strength of Complainant’s CLOROX’S Marks in the United States, Respondent’s actual and constructive knowledge of the CLOROX Marks, the use to which the Domain Name has been put since the time of registration, and Respondent’s registering of other typosquatted domain names, that Respondent registered the Domain Name in bad faith, seeking to capitalize on the goodwill associated with Complainant’s CLOROX Marks. I would conclude that the Domain Name in this case has been registered and used in bad faith and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(iii) of the Policy.
Christopher S. Gibson
Date: August 13, 2010