WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Colgate-Palmolive Company v. DomainJet, Inc., Jack Sun
Case No. D2012-1274
1. The Parties
Complainant is Colgate-Palmolive Company of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is DomainJet, Inc., Jack Sun of Mountain View, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <colgateplax.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2012, the Registrar 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 together with the amendment to 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 on June 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2012.
The Center appointed Bruce E. O’Connor as the sole panelist in this matter on July 30, 2012. 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.
4. Factual Background
Given the default of Respondent, the Panel is entitled to and does draw the inference that all facts alleged in the Complaint are true. See paragraph 14(b) of the Rules.
Complainant’s basis for asserting this Complaint is its use of the COLGATE PLAX product name and its registration and ownership of the COLGATE and PLAX trademarks.
The COLGATE trademark has been in use in the United States for more than 200 years, since 1806, when William Colgate first started selling starch, soap and candles in New York City. Since then, Colgate’s business has grown substantially to include some of the best known oral care, personal care, home care and pet nutrition products in the world, such as COLGATE toothpastes, toothbrushes, dental floss, PALMOLIVE soaps and detergents, SPEED STICK deodorants, AJAX cleaners and detergents, and HILL’S pet food. Complainant employs over 35,000 people in over 200 countries and territories around the globe and with global sales in 2011 of over USD 16.7 billion.
Complainant’s COLGATE PLAX line of mouthwashes has been on the market since 1992 and is among the most popular brands in its category, with annual worldwide sales in excess of USD 230 million. Through extensive use and advertising over many years, the COLGATE PLAX line of products has also become famous and is uniquely identified with Complainant’s COLGATE PLAX products. This represents enormous and valuable goodwill.
In addition, Complainant owns longstanding federal registrations for its COLGATE trademarks, including U.S. Registration Nos. 1,290,656, 1,452,806, 432,541, 427,475, 322,167, 227,647 and 60,595. These registrations constitute evidence of Complainant’s exclusive right to use the COLGATE trademarks in connection with the identified goods as a matter of law.
Complainant also owns multiple trademark registrations for its COLGATE and PLAX Marks around the world.
Complainant, either on its own or through affiliated companies, owns and operates the domains and websites associated with <colgate.com> and <colgatepalmolive.com>. Information as to Complainant’s COLGATE PLAX products can be found at Complainant’s corporate website, “www.colgate.com”. This website averages almost 500,000 unique visitors per month.
Through Complainant’s use and registration of the COLGATE PLAX trade name around the world since over the past several decades, its COLGATE PLAX products have come to be exclusively associated with Complainant.
Respondent registered the Domain Name on October 21,2009, long after Complainant’s COLGATE and PLAX trademarks were registered around the world.
Furthermore, the Domain Name is a confusingly similar combination to Complainant’s famous combination of the COLGATE and PLAX trademarks.
At no time did Complainant ever authorize or permit Respondent’s registration of the Domain Name incorporating Complainant’s COLGATE PLAX trade name, and there is no relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name.
Respondent is using the COLGATE PLAX name to attract users to its “www.colgateplax.com” website so that Respondent can generate “pay-per-click” revenue. When Internet users looking for information about Complainant’s COLGATE PLAX products type the Domain Name into their Internet browsers, they instead are directed to a “parking” website. The parking site contains links to websites of entities not associated with Complainant, many of which advertise products and other goods in direct competition with Complainant. These sites include (among others) “www.toothpaste.crestprohealth.com”, “www.scopemouthwash.com” and “www.armandhammer.comlwhiteningbooster”.
Furthermore, it is clear that Respondent registered the Domain Name for the purpose of selling it: Respondent’s website located at “www.colgateplax.com” contains a prominent hyperlink under the words “The domain colgateplax.com may be for sale by its owner!”. The hyperlink leads to the “www.sedo.com” auction site, where the Domain Name at issue is advertised for sale and prospective purchasers are invited to bid on it.
Respondent also has registered numerous domains, listed in the Complaint, that infringe the rights of other trademark owners, and is thus a serial cybersquatter.
5. Parties’ Contentions
The Domain Name is merely a combination of Complainant’s COLGATE and PLAX trademarks in their entirety. Indeed, the Domain Name is identical to Complainant’s COLGATE PLAX trade name, but for the addition of the generic top-level domain (“gTLD”) indicator “.com”. The gTLD indicator “.com” cannot be taken into consideration when judging confusing similarity.
Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. Respondent registered the Domain Name on October 21, 2009, long after Complainant had established rights in its COLGATE and PLAX trademarks through extensive use of the marks around the world since 1858 for COLGATE and 1992 for COLGATE PLAX. Given that Complainant’s adoption and extensive use of the COLGATE PLAX name predates Respondent’s registration of the Domain Name, the burden is on Respondent to establish its rights or legitimate interests in the Domain Name. Respondent cannot demonstrate or establish any such right or legitimate interest.
No relationship exists between Respondent and Complainant or any of Complainant’s licensees, agents or affiliated companies that would give rise to any license, permission, or authorization by which Respondent could own or use the Domain Name, which incorporates and is confusingly similar to Complainant’s COLGATE PLAX product name and marks. Respondent is not commonly known by the Domain Name, as shown by its registration information.
Since Complainant’s COLGATE PLAX products are so well-known and Respondent has no rights therein, the only reason that Respondent could have for registering and using the Domain Name is that Respondent knew of the COLGATE PLAX name and wanted to trade on Complainant’s renown to lure consumers to its website.
Upon information and belief, Respondent’s only use of the Domain Name is in connection with the conduct described above, i.e., (i) to attempt to profit from the sale of the domain name, and (ii) to misdirect Internet traffic to competing hotel and leisure companies and services so that he can generate pay-per-click revenue.
Furthermore, the use of the Domain Name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services for a noncommercial or fair use.
When users attempt to visit Respondent’s website at the Domain Name, consumers will reasonably but mistakenly believe that Respondent’s website is somehow related to or approved by Complainant, when that is not the case. It is certainly likely that someone looking for more information on Complainant’s products would see the website associated with the Domain Name and not realize that the website was not affiliated with Complainant.
Respondent’s website unquestionably trades on the fame of Complainant’s COLGATE PLAX products and as such cannot constitute a bona fide use.
Respondent is also improperly commercially exploiting the Domain Name and the COLGATE and PLAX trademarks for its own gain. The website currently appearing at the Internet address associated with the Domain Name is a parked website containing links to websites that directly compete with Complainant.
Respondent currently earns revenue directly by drawing consumers to its site by its unauthorized use of Complainant’s COLGATE PLAX trade name in the Domain Name and otherwise profiting from the consumer confusion that is the inevitable result of Respondent’s misappropriation of the COLGATE and PLAX trademarks.
Respondent’s use of the Domain Name to generate pay-per-click revenue through links to Complainant’s competitors clearly establishes Respondent’s bad faith.
Respondent is a serial cybersquatter that registered at least 3,200 domain names (listed in an Annex to the Complaint) relating to other well-known companies. Respondent’s registration of thousands of domain names and Respondent’s general pattern of conduct are enough to establish Respondent’s bad faith.
The facts set forth above make clear that Respondent is exploiting the goodwill and fame of Complainant's COLGATE PLAX trade name in bad faith in order to improperly deceive Internet users and benefit Respondent financially. These activities demonstrate bad faith registration and use of the Domain Name in violation of the Policy as set forth in paragraphs 4(b)(i) and 4(b)(ii).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph (4)(a) of the Policy states that the domain name can be cancelled or transferred where Complainant has established the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that 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.
A. Identical or Confusingly Similar
Complainant has established rights in the trademarks COLGATE and PLAX. These rights come from Complainant’s U.S. Trademark Registration No. 60,595, registered August 20, 1906 (COLGATE) and Russian Federation Trademark Registration No. 211,959, registered April 30, 2002 (PLAX).
Complainant has established rights in the trademark COLGATE PLAX. These rights come from Complainant’s rights for the trademarks COLGATE and PLAX, and from the common law use of their combination shown in the Annexes to the Complaint.
The Panel finds the Domain Name is confusingly similar to the trademarks COLGATE, PLAX, and COLGATE PLAX.
What is different in the Domain Name is the addition of the generic top-level domain “.com”. It is well settled that addition of a generic top-level domain adds no distinguishing feature.
Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the respondent’s use 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 and services; or
(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) 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.
Complainant has made a prima facie showing that Respondent does not come under those circumstances.
The goods identified with the trademarks COLGATE, PLAX, and COLGATE PLAX are toothpaste and mouthwash. Respondent, without authorization from Complainant, has offered for sale toothpaste and mouthwash on a website using the Domain Name, and began such offering long after Complainant established rights in its trademarks. Respondent’s use of the Domain Name is in this Panel’s view an infringement of Complainant’s rights in those trademarks, and is not bona fide under paragraph 4(c)(i) of the Policy.
Respondent has not been commonly known by the Domain Name and does not come under paragraph 4(c)(ii) of the Policy, and Respondent’s use of the Domain Name is commercial and does not come under paragraph 4(c)(iii) of the Policy.
Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, Complainant must establish that Respondent intentionally and actively registered and used the Domain Name for the purpose of causing injury to Complainant. And, Respondent must have known or should have known of Complainant’s mark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
Complainant has failed to establish the circumstances of paragraphs 4(b)(i) and 4(b)(ii). The Panel cannot find that Respondent registered or acquired the Domain Name primarily for transferring the Domain Name for consideration in excess of Respondent’s out-of-pocket expenses, merely from Complainant’s showing that the Domain Name may be for sale. The Panel also cannot find that Respondent is a serial cybersquatter, because Complainant has not shown that the listed domain names have been found by any panel to violate the Policy or by any other tribunal to infringe any trademarks or violate any anti-cybersquatting laws, regulations, or rules.
The Panel agrees with Complainant’s contention that the circumstances here fall within paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Respondent either knew or should have known of Complainant’s trademarks, and especially of its long-used and well established trademark COLGATE. Respondent’s use of the Domain Name, at a parking page to generate pay-per-click revenues by misdirecting users to competitors of Complainant, is clear and convincing evidence of Respondent’s bad faith in registering and using the Domain Name.
Complainant has carried its burden of proof under 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 orders that the domain name <colgateplax.com> be transferred to Complainant.
Bruce E. O’Connor
Dated: August 3, 2012