WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Clorox Company v. WhoisGuard Protected, WhoisGuard, Inc. / Enos Villanueva, Melissa Rosenberg, Yang Ming

Case No. D2021-0603

1. The Parties

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

The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Enos Villanueva, Germany; Melissa Rosenberg, United States; and Yang Ming, China.

2. The Domain Names and Registrar

The disputed domain names <cloroxac.shop>, <cloroxae.shop>, <cloroxan.shop>, <cloroxclean.shop>, <cloroxco.shop>, <cloroxec.shop>, <cloroxmall.shop>, <cloroxmu.shop>, <cloroxoutlet.shop>, <cloroxr.shop>, <cloroxusa.shop>, <cloroxus.shop> and <cloroxwipes.shop> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 1, 2021, 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 the Complainant on March 18, 2021 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control, or to file a separate complaint for each of the disputed domain names. The Complainant filed an amended Complaint on March 30, 2021.

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 April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 21, 2021. 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 a North-American manufacturer of consumer and professional products, founded in 1913. The Complainant is the owner, amongst others, of the following trademark registrations:

- United States trademark registration No. 290449 for the word and device mark CLOROX, registered on January 5, 1932, subsequently renewed, in class 3; and

- United States trademark registration No. 1877353 for the word mark CLOROX, registered on February 7, 1995, subsequently renewed, in class 3.

Seven of the thirteen disputed domain names were used in connection with identical webpages that appear to be fraudulent online shops (Annex 16 to the Amended Complaint). The disputed domain names were registered on and are presently used in connection with:

5. Parties’ Contentions

A. Complainant

The Complainant asserts to have been founded in 1913, presently counting with 8,800 employees worldwide and having had USD 6.7 billion sales in 2020, ranking No. 474 on Forbes’ 2020 Fortune 500 list.

With a diverse portfolio of consumer brands sold in more than 100 countries across the world, the Complainant asserts to have acquired widespread consumer goodwill under the CLOROX trademark used, promoted, and marketed for over a century internationally and thus having acquired distinctiveness in the market worldwide.

The Complainant submits that the disputed domain names are subject to common control by either the same person or connected parties and for reasons of fairness, equity, and efficiency, the Complainant requests consolidation of multiple Respondents to the same Complaint, given that (i) seven of the thirteen disputed domain names were used in connection with webpages with identical content (fake online shops offering the exact same products); (ii) the disputed domain names have been registered with the same registrar and WhoIs privacy service; (iii) almost all of the disputed domain names share the same nameservers; (iv) are highly similar on a lexical level, reproducing the Complainant’s CLOROX trademark in its entirety with the addition of other letters/terms under the “.shop” generic Top-Level Domain (“gTLD”); (v) within a short period of time (October/November 2020); and (vi) using what appears to be false contact details.

The 13 disputed domain names are, according to the Complainant, confusingly similar to the Complainant’s trademark, given the reproduction of its CLOROX trademark which is clearly recognizable as the leading element of the disputed domain names, not adding any distinctiveness thereto the addition of a few letters or terms at the end of the disputed domain names.

Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names given that:

(a) the Respondents do not have registered trademarks comprising the “clorox” term, nor is there any evidence suggesting that the Respondents hold unregistered rights over the “clorox” term, or have been commonly known by the disputed domain names;

(b) the Respondents have not received any license from the Complainant to use domain names incorporating the CLOROX trademark;

(c) the Respondents have not provided any evidence of the use, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services before any notice of this dispute given that some of the disputed domain names have not been in use and some of the disputed domain names have been used in connection with what appear to be fake online shops, either creating confusion amongst Internet users who might think that the disputed domain names are owned, related or otherwise endorsed by the Complainant, which is not true, or a risk of tarnishing the Complainant’s CLOROX trademark; and

(d) the disputed domain names, which presently do not resolve to an active webpage, are being passively held by the Respondents.

As to the registration of the disputed domain names in bad faith, the Complainant asserts that the Respondents knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering that it has acquired substantial goodwill and recognition worldwide since the Complainant’s establishment in 1913. Further, the Respondents’ intent to capitalize on the strong global reputation of the Complainant’s distinctive trademark can easily be inferred given that it would be inconceivable to believe that the Respondents would have chosen to register the 13 disputed domain names for any arbitrary reason other than to target the Complainant’s trademark, a globally recognized brand, which has no descriptive meaning. Moreover, the past use made of some of the disputed domain names in connection with fraudulent online shops show both unequivocal knowledge of the Complainant’s trademark but also bad faith use of the disputed domain names. Bad faith use is also present in the disputed domain names that are inactive.

B. Respondents

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the 13 disputed domain names dealt with at the same procedure, given that the disputed domain names were registered within a period of approximately one month, sharing the same naming pattern, Registrar, privacy server, and some of them also shared the same name servers, and were used in connection with identical webpages, using what appears to be false contact details.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established its rights in the CLOROX trademark.

The Panel finds that the disputed domain names reproduce the Complainant’s trademark in its entirety. The addition of letters or other terms at the end of the disputed domain names does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7).

The first element of the Policy has therefore been established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents, in not formally responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondents.

In that sense, the Panel notes that the Complainant has made out a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, indeed stating that the Respondents have not received any license from the Complainant to use domain names incorporating the CLOROX trademark. Also, the lack of evidence as to whether the Respondents are commonly known by the disputed domain names or the absence of any trademarks registered by the Respondents corresponding to the disputed domain names, corroborates the indication of an absence of rights or legitimate interests in the disputed domain names.

The use made and being made of the disputed domain names cannot be characterized as a bona fide offering of goods or services, given that the websites that resolved from some of the disputed domain names prominently featured the Complainant’s logo and products, in what it appear to be fraudulent online shops, with no disclaimer as to Respondents’ lack of relationship or affiliation with the Complainant, all of which increases the likelihood of confusion amongst Internet users who might think that the disputed domain names are owned, related or otherwise endorsed by the Complainant, which is not true.

Given the overall circumstances of this case, the fact that the 13 disputed domain names presently do not resolve to active webpages do not grant a right or legitimate interest to the Respondents over such disputed domain names that clearly reproduce the Complainant’s well-known CLOROX trademark.

Therefore, the Panel finds that the Respondents lack rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met.

D. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the use of some of the disputed domain names in connection with websites that reproduced the Complainant’s trademark and products characterizes the Respondents’ intent of commercial gain by profiting from the notoriety of the Complainant’s trademark.

Further, the Panel finds that the currently inactive use of the disputed domain names does not prevent a finding of bad faith. Prior UDRP panels have held that the non-use of domain names may support a finding of bad faith when considering factors such as the distinctive nature and reputation of the trademark, the failure of the respondent to file a response, and the implausibility of any good faith use to which the domain name may be put. These factors are present in the current case and accordingly support a finding of bad faith here. Further, the indication of false addresses corroborates the finding of Respondents’ bad faith.

For the reasons above, the Panel finds that the Respondents have registered and are using the disputed domain names in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The third element of the Policy has therefore been met.

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, <cloroxac.shop>, <cloroxae.shop>, <cloroxan.shop>, <cloroxclean.shop>, <cloroxco.shop>, <cloroxec.shop>, <cloroxmall.shop>, <cloroxmu.shop>, <cloroxoutlet.shop>, <cloroxr.shop>, <cloroxusa.shop>, <cloroxus.shop>, and <cloroxwipes.shop>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: June 1, 2021