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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Clorox Company v. WhoIsGuard Protected, WhoisGuard, Inc. / Cody Nudo, Clorox

Case No. D2020-2950

1. The Parties

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

Respondent is WhoIsGuard Protected, WhoisGuard, Inc., Panama / Cody Nudo, Clorox, United States.

2. The Domain Name and Registrar

The disputed domain name <cloroxvpn.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 10, 2020 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 12, 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 Respondent of the Complaint, and the proceedings commenced on November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2020.

The Center appointed Scott R. Austin as the sole panelist in this matter on December 15, 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

Complainant states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is an American global manufacturer and marketer of consumer and professional products, founded in 1913 and based in Oakland California. Complainant has approximately 8,700 employees worldwide and generated 2019 net sales of USD 9.2 billion. Complainant develops, manufactures, and sells numerous consumer cleaning products as well as professional health care disinfecting services upon which over 4300 US hospitals rely. Complainant’s flagship cleaning product is its bleach, identified under the trademark CLOROX (the “CLOROX Mark”) since 1915.

Complainant, its affiliated subsidiaries and associated companies own exclusive rights to the CLOROX Mark within numerous jurisdictions worldwide, including but not limited to; United States Trademark Registration No. 290449 for CLOROX, registered on January 5, 1932, covering “liquid preparation for general household cleaning purposes”” in Class 3; Mexico Trademark Registration No. 642378 for CLOROX, registered on February 23, 2000; Canada Trademark Registration No. TMA510987 for CLOROX plus design, registered on April 16, 1999; and Serbia Registration No. 38248 for CLOROX, registered on August 4, 1994.

The disputed domain name was registered on October 6, 2020 and is and has been passively held, resolving to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant states that since the recent COVID-19 pandemic it has seen a spike in its business, its stock price and the number of infringing domain names using the CLOROX Mark.

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the CLOROX Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The disputed domain name incorporates Complainant’s CLOROX Mark with the addition of the term “vpn”, an acronym for the term “virtual private network”. Prior UDRP panels have specifically found the addition of such a descriptive term does not prevent a finding of confusing similarity where the complainant’s trademark remains clearly recognizable within the disputed domain name. See, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierre, WIPO Case No. D2009-0434. Similarly, the addition of the Top-Level Domain (“TLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.

The Panel finds therefore, that the disputed domain name is confusingly similar because it incorporates Complainant’s registered CLOROX Mark in its entirety and is recognizable within the disputed domain name.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. The Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).

Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts Respondent is not associated or affiliated with Complainant, nor has Complainant granted any license to Respondent to use the CLOROX Mark to sell any products or offer any services, nor granted any rights to register the disputed domain name. Complainant also asserts and there is nothing of record to show that Respondent is commonly known by the disputed domain name because Respondent clearly bears no resemblance to the term “clorox”. The mere fact that the Respondent provided “Clorox” as the registrant organization at the time of the registration of the disputed domain name is not sufficient in itself to give rise to rights or legitimate interests.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Based on the evidence submitted of Complainant’s extensive use of the CLOROX Mark for over a century and its registration in numerous jurisdictions worldwide, the Panel agrees with prior UDRP panels which have held the CLOROX Mark to be well-known. See, e.g., The Clorox Company v. Domain Administrator, See PrivacyGuardian.org / Izyf, Miny Sibio / Zhongqi Jia, WIPO Case No. D2020-1583.

Given the well-known status of the CLOROX Mark, and recent increased focus on cleaning and disinfecting products due to the COVID-19 pandemic, it is inconceivable that Respondent was not aware of Complainant’s rights in the CLOROX Mark when it registered the disputed domain name and given the timing of the registration during the COVID-19 pandemic, more likely to have been registered to intentionally target Complainant’s CLOROX Mark in bad faith. See Celgene Corporation v. Diana Claire, WIPO Case No. D2016-0922.

Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because, as Complainant’s evidence shows, the disputed domain name is passively held, resolving to an inactive website. Prior UDRP panels have held that non-use of a domain name is not a bona fide offering of goods or services. See, Laboratoire Polidis v. Contact Privacy Inc. Customer 1243132597 / Michael Beauton, WIPO Case No. D2020-1026. Similarly, prior UDRP panels have found that the non-use of a domain name is not a legitimate noncommercial or fair use. See, Instagram, LLC v. Zafer Demir, Yok, WIPO Case No. D2019-1072.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant’s well-known CLOROX Mark is recognized and registered around the world, including the United States, where Respondent is located. The CLOROX Mark has been used to identify Complainant’s cleaning products and services provided to millions of consumers for over 100 years prior to Respondent’s registration of the disputed domain name on October 6, 2020. It is implausible, therefore, to believe that Respondent was not aware of the CLOROX Mark when it registered the confusingly similar disputed domain name incorporating the CLOROX Mark, as determined in 6.A. above. Prior UDRP Panels have found bad faith on this basis alone. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Co., WIPO Case No. D2000-0878.

Further, as noted in 6.B., in the circumstances of this case, where Respondent registered the disputed domain name to engage in per se illegitimate activity, to intentionally target Complainant’s CLOROX Mark and capitalize on its business reputation and goodwill following Complainant’s documented spike in Complainant’s business and consumer interest in its cleaning products due to the ongoing COVID-19 pandemic, the Panel considers such factors sufficient to find bad faith registration. See, WIPO Overview 3.0, section 3.2.1.

Complainant asserts and has submitted evidence that the disputed domain name has been passively held as it has remained inactive since its registration. Prior UDRP panels have found bad faith “passive holding” in the presence of specific circumstances, including where the Complainant has a well-known trademark, and the Respondent provides no evidence of any actual contemplated good faith use. See WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Furthermore, although the disputed domain name currently appears to be inactive, Complainant has submitted evidence that it has been set up with mail exchanger or “MX” records, which may be actively used for email purposes. Prior UDRP panels have considered the presence of “MX” records could support a finding of bad faith registration and use because by connecting the disputed domain name to email servers, the Respondent may be using its confusingly similarity to engage in misrepresentations and/or phishing and spamming activities. See Alain Afflelou Franchiseur v. Lihongbo, Lihongbo, WIPO Case No. D2020-2075.

Accordingly, considering all of the circumstances here, the Panel finds that Respondent registered and used the disputed domain name in bad faith. Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 name <cloroxvpn.com> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: January 5, 2021

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