About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Colgate-Palmolive Company (“Colgate”) and Hill’s Pet Nutrition, Inc. (“Hill’s”) v. Contact Privacy Inc. / Sachin Kanodia, colpal

Case No. D2019-2869

1. The Parties

Complainant is Colgate-Palmolive Company (“Colgate”) and Hill’s Pet Nutrition, Inc. (“Hill’s”), United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.

Respondent is Contact Privacy Inc., Canada / Sachin Kanodia, colpal, United States.

2. The Domain Names and Registrar

The disputed domain names <colpal.org> and <hlillspet.com> (the “Domain Names”) are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 25, 2019.

The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 17, 2019.

The Center appointed Robert A. Badgley as the sole panelist in this matter on December 19, 2019. 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

Complainant is a corporation resulting from the 1928 merger of Colgate & Co. (a manufacturer of soaps since 1806) and Palmolive & Peet (a manufacturer of soaps since 1898). In 1953, Complainant’s name was changed to Colgate-Palmolive Co. Complainant and its predecessors have been major manufacturers of soaps, detergents, toothpaste, deodorants, and other household and personal care products for more than a century. Complainant owns hundreds of longstanding trademark registrations with the United States Patent and Trademark Office (“USPTO”) and in other countries for the marks COLGATE (including USPTO Reg. No. 60,595 dated February 12, 1907) and PALMOLIVE (including USPTO Reg. No. 210,594 dated March 16, 1946). Complainant operates in 200 countries, and its global sales in 2018 exceeded USD 15.5 billion.

Complainant maintains a website at “www.colgatepalmolive.com” and links the domain name <www.colpal.com> to that site as well. Complainant uses the domain name <www.colpal.com> for its employees’ email addresses.

In 1976, Complainant purchased Hill’s Pet Nutrition, a pet food manufacturer under various names since the 1930s. Complainant holds numerous trademark registrations for HILL’S, including USPTO Reg. No. 955,342 dated February 13, 1937. Complainant operates a commercial website at the domain name <www.hillspet.com>. Complainant also uses that domain name for the Hill’s employees’ email addresses.

The Domain Names were registered on October 8, 2019, and October 23, 2019. The Domain Names do not resolve to an active website. Respondent has, however, used the Domain Names for email purposes. According to Complainant, Respondent has used the Domain Names to conduct a fraudulent phishing scam. Respondent uses the Domain Names to impersonate a Complainant employee who asks a customer to pay a fake invoice to a bank account not owned by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied the three elements required under the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

For each of the Domain Names, paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the marks COLGATE, PALMOLIVE, and HILL’S through longstanding registration and use demonstrated in the record. The Panel concludes further that the COLGATE and PALMOLIVE marks a very well-known marks.

The Panel also finds that the Domain Names are confusingly similar to Complainant’s marks. The Domain Name <colpal.org> blends the first three letters from the marks COLGATE and PALMOLIVE. Moreover, the Panel finds that the overall facts and circumstances of the case (use of the Domain Names to perpetrate a fraudulent phishing scam on Complainant) supports a finding of confusing similarity. The Domain Name <hlillspet.com> is a typographical error of “Hill’s pet”, which is Complainant’s HILL’S mark and the main product sold under that mark, i.e., pet food. Complainant’s HILL’S mark is recognizable within the Domain Name.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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 or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent has not come forward in this proceeding to articulate why he registered the Domain Names or otherwise explain his bona fides. The undisputed record shows that Respondent is unaffiliated with Complainant, and that Respondent has used the Domain Names to perpetrate a fraudulent phishing scam on Complainant customers by using the Domain Names to impersonate a Complainant employee. Such vile conduct obviously does not reflect rights or legitimate interests in the Domain Names.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. The Panel incorporates here its observations above in the rights or legitimate interests section. It is apparent from this undisputed record that Respondent has targeted Complainant’s trademarks, and has acted from bad faith motives, being engaged in a fraudulent phishing scam. At a minimum, bad faith under the above-quoted Policy paragraph 4(b)(iv) is established on this record.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <colpal.org> and <hlillspet.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: December 27, 2019

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/