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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Clorox Company v. Domain Administrator, See PrivacyGuardian.org / Izyf, Miny Sibio / Zhongqi Jia

Case No. D2020-1583

1. The Parties

The Complainant is The Clorox Company, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Izyf, Miny Sibio, Germany / Zhongqi Jia, China.

2. The Domain Names and Registrar

The disputed domain names <cloroxer.com>, <cloroxinc.com>, and <cloroxllc.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2020. On June 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 23, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. On July 15, 2020, the Center received a third party communication. The Center then informed the parties of this communication. As no response was received, the Center notified the Parties that, it would continue to panel appointment, pursuant to paragraph 6 of the Rules.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 11, 2020. 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

The Complainant is an American global manufacturer and distributor of consumer and professional bleach and cleaning products under the trademark CLOROX and various other brands. Founded in 1913, the Complainant has currently around 8,700 employees and operations in about 25 countries, with its products sold in over 100 markets round the globe. In 2019, its net sales were USD 9.2 billion, and it was ranked at position 477 by Forbes Fortune 500 list. The Complainant has further been awarded with various recognitions by Drucker Institute’s 2017 Wall Street Journal Management Top 250 list, The Just 100: America’s Top Citizens list, CR Magazine’s 2018 Best Corporate Citizens list, Barron’s 2018 100 Most Sustainable Companies, and Forbes Bloomberg Gender-Equality Index 2018.

The Complainant also markets its products for professional services in the health care and commercial cleaning sectors, under the trademarks CLOROX PRO, CLOROX HEALTH CARE, and CLOROX COMMERCIAL SOLUTIONS, owning an extensive portfolio of trademark registrations for the mark CLOROX (collectively the “CLOROX mark”), including:

- United States Trademark No. 290,449 CLOROX, figurative, registered January 5, 1932, in class 3; and

- United States Trademark No. 1,174,730 CLOROX, figurative, registered October 27, 1981, in classes 3 and 5.

The Complainant’s products are sold primarily through mass merchandisers, retail outlets, e-commerce channels, distributors, and medical supply providers across the globe. Further, the Complainant operates an official website advertising and promoting its products, under the domain name <clorox.com> (registered in 1994), and has presence in the main social media platforms using the CLOROX mark.

The disputed domain name <cloroxer.com> was registered on March 23, 2020, the disputed domain name <cloroxllc.com> was registered on May 4, 2020 and the disputed domain name <cloroxinc.com> was registered on May 5, 2020 (collectively “the disputed domain names”). The disputed domain names are currently inactive resolving to pages with Internet browser error messages. According to the evidence provided by the Complainant, the disputed domain names have been used in various subdomain names, namely, at least, <usa.cloroxer.com>, <vip.cloroxllc.com>, and <save.cloroxinc.com>, which hosted a copycat version of the Complainant’s official website, in English language, including its logo and copyrighted images, offering the Complainant’s products at a discounted rate.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

Due to substantial investment and effort in promoting, marketing, and using (for over 100 years) the CLOROX mark, it has acquired distinctiveness and reputation worldwide. Further, the importance of disinfectants to beat diseases has increased the Complainant’s net sales and the CLOROX mark visibility during this year 2020. The Complainant is the supplier of more than 4,300 United States hospitals, as well as business and schools across the United States.

The disputed domain names are confusingly similar to the CLOROX mark. The Complainant’s trademark is recognizable in the disputed domain names and the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement that should be disregarded under the first element of the Policy.

The Respondent lacks rights or legitimate interests in the disputed domain names. To the best of the Complainant’s knowledge, the Respondent has not registered any trademarks or holds any unregistered rights for the term “clorox”, and it is not known by this term. Further, the Respondent has not received any license to use the CLOROX mark. The disputed domain names have been used on several subdomain names to host infringing content, with the intention to take advantage of the reputation attached to the CLOROX mark, creating a false impression of association with the Complainant’s brand for commercial gain.

The disputed domain names were registered and have been used in bad faith. The Respondent actively hosted infringing content on several subdomains of the disputed domain names, showing that the Respondent had actual knowledge of the Complainant’s brand at the time of registration, targeting the CLOROX mark with opportunistic bad faith. The Respondent was attempted to divert Internet traffic to its website for commercial gain disrupting the Complainant’s business. On May 11, 2020, the Complainant sent a cease and desist letter to the Respondent with no reply. Furthermore, the Registrar has removed the infringing content from the subdomain names linked to the disputed domain names following takedown notices sent by the Complainant’s representatives.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position and requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

After receiving the notification of the Complaint, a person with a different name to the Respondent’s names, domiciled in the address located in Germany included in the WhoIs record of one of the disputed domain names, forwarded an email communication to the Center. This person claimed an unauthorized use of contact details, not being related to the Respondent and not being the owner of any of the disputed domain names.

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Preliminary Issue: Complaint Consolidated against Multiple Respondents

The Panel considers that the circumstances of this case indicate that the disputed domain names are subject to common control. Particularly, the disputed domain names were registered in the same Registrar using the same privacy protection service, and have been used to host identical content through several subdomain names, resolving to the same website reproducing the look and feel of the Complainant’s official website. Furthermore, the disputed domain names share a similar pattern incorporating the CLOROX mark in its entirety followed by some letters at its end, and the registration dates of the disputed domain names are close in time.

Therefore, the Panel considers that the consolidation is appropriate, fair and equitable to all parties in accordance with the Policy and the Rules. See section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel further notes that the Respondent provided two different addresses in the registration of the disputed domain names, one in Germany and another in China. However, the above-mentioned communication remitted by an individual (with a different name to than the one used by the Respondent) located in the address in Germany provided in the registration of one of the disputed domain names, leads the Panel to consider that the address in Germany provided by the Respondent is apparently not accurate or truthful.

B. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11.1, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademark CLOROX, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the CLOROX mark over many years (since 1913). The disputed domain names incorporate this mark in its entirety followed by the letters “er”, “llc”, or “inc”, which do not avoid confusing similarity with the trademark. The Complainant’s trademark CLOROX is recognizable in the disputed domain names, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

C. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.

The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain names in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain names.

A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain names incorporate the Complainant’s trademark in its entirety followed by the letters “er”, “llc”, or “inc”, which may refer to the Complainant’s company form, its business, or activities. The letters “llc” are the abbreviation for “limited liability company” and the letters “inc” are the abbreviation for “incorporated”, which is used in the names of United States companies that are legally established. The letters “er”, as a suffix added to a noun, refer to someone or something connected or involved with a particular thing, in this case connected to or involved with the CLOROX mark. The letters “er” may also be the abbreviation of “emergency room” which also connects with the Complainant’s activity as a supplier for hospitals. Therefore, the Panel considers that the addition of these letters (“er”, “llc”, or “inc”) to the Complainant’s trademark reinforce the risk of implied affiliation and confusion.

The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain name, not being authorized by the Complainant to use its CLOROX mark, and that the disputed domain names have been used to host a copycat version of the Complainant’s official website, including its logo and copyrighted images, which offered the Complainant’s products at a discounted rate.

The Panel further notes that the Respondent’s names provided in the registration of the disputed domain names were concealed under a privacy registration service, and have no resemblance with the term “clorox” or the terms corresponding to the disputed domain names “cloroxer”, “cloroxllc”, and “cloroinc”.

Furthermore, the Panel considers remarkable the Respondent’s lack of reaction to the Registrar’s action taking down the website linked to the disputed domain names, as well as the Respondent’s lack of response to the cease and desist letter and to the Complaint. The Respondent has chosen not to provide any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain names. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel notes the centennial existence and use of the CLOROX mark, as well as its extensive presence over the Internet, its use internationally and its well-known character at least in the United States, which has been recognized by previous decisions under the Policy. See The Clorox Company v. TechLever Inc., WIPO Case No. D2001-0914.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain names: (i) the disputed domain names incorporate the Complainant’s trademark CLOROX in its entirety, followed by letters (“er”, “llc”, or “inc”) that may refer to the Complainant’s company form or its business or activity, which enhances the intrinsic likelihood of confusion and affiliation; (ii) the Complainant’s trademark is well-known (at least in the United States), and the Complainant operates internationally, including in China (where the Respondent is apparently located according to the Registrar verification and considering that the address provided in Germany is apparently inaccurate or untruthful); (iii) according to the Complainant official website, the Complainant has a plant and an administrative/sales office in China commercializing its products in this country; (iv) the disputed domain names have been used for a commercial website selling the Complainant’s products at a discounted rate; (v) the Respondent used a privacy registration service and an inaccurate or untruthful address; (vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain names and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint; (vii) the Respondent has not reacted to the taking down of the website linked to the disputed domain names; and (vi) the Respondent has been apparently engaged in a bad faith pattern of conduct in registering various domain names incorporating the CLOROX mark (namely the disputed domain names), targeting this mark for the same purpose. See section 3.2.1, WIPO Overview 3.0.

In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities the Panel considers that the disputed domain names were registered and are being used targeting the CLOROX mark in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally misleading and attracting Internet users to a commercial website selling the Complainant’s products at a discounted rate.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain names have been registered and are being used in bad faith.

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 disputed domain names, <cloroxer.com>, <cloroxinc.com>, and <cloroxllc.com>, be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: August 24, 2020

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