WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Colgate-Palmolive Company v. Linecom
Case No. D2013-0712
1. The Parties
The 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.
The Respondent is Linecom of Gyeongju-si, Gyeongsangbuk-do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <colgatemaxwhite.com> is registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2013. On April 18, 2013, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2013, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 26, 2013, the Center notified the parties, in both English and Korean, that the language of the Registration Agreement is Korean. Furthermore, the Center instructed the Complainant to provide, by April 29, 2013:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Korean; or …
3) submit a request for English to be the language of the administrative proceedings….”
To the Respondent, the Center informed that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by May 1, 2013.”
The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [May 1, 2013], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On April 26, 2013, the Complainant confirmed its request in the Complaint that English be the language of the proceeding. The Respondent did not make any submission in relation to the language of the proceeding.
The Center verified that 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, in both Korean and English, formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2013. Regarding the language of the proceeding, the Center stated :
“The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied.
Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Korean;
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment)….”
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2013.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on June 14, 2013. 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.
The language of this proceeding is English, as discussed herein.
4. Factual Background
The Complainant sells, among many items, various products relating to oral care, including toothpaste, tooth brushes, and dental floss. It has used the COLGATE, MAX WHITE, and COLGATE MAX WHITE marks for some of these products. At the United States Patent and Trademark Office, the Complainant registered the COLGATE mark for “toothpaste” (on August 21, 1984), MAX WHITE for “toothpaste” (on July 26, 2011), and COLGATE MAX WHITE for “oral care products, namely, dentifrices” (on April 21, 2009).
The Respondent registered the disputed domain name <colgatemaxwhite.com> on June 17, 2012.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights; (ii) the 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 Complainant also states:
“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”;
“Complainant employs over 35,000 people in over 200 countries and territories around the globe …”; and
“At no time did Complainant ever authorize or permit Respondent’s registration of the Domain Name incorporating Complainant’s COLGATE, COLGATE MAX WHITE and MAX WHITE trademarks and trade names, 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”.
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding.
Under paragraph 11(a) of the Rules, the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties. This provision also states, however, that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the Registration Agreement is Korean. The Complainant nevertheless requests that English be the language of the proceeding, and the Panel agrees.
After receiving the Complaint submitted in English, the Center notified the parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding in English. The Respondent did not respond to the Center’s notification, and then defaulted. Under these circumstances, with only one party remaining in the proceeding, the Panel determines that English is the language of the proceeding.
Turning to the merits, in order to prevail, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <colgatemaxwhite.com> is confusingly to marks in which the Complainant has rights, including, most obviously, COLGATE MAX WHITE.
The first element of paragraph 4(a) of the Policy is present.
B. Rights or Legitimate Interests
The Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would indicate any right or legitimate interest that the Respondent has in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element of paragraph 4(a) of the Policy is demonstrated.
C. Registered and Used in Bad Faith
After the Complainant registered the COLGATE, MAX WHITE, and COLGATE MAX WHITE marks, the Respondent registered the disputed domain name <colgatemaxwhite.com>. The website that appears when Internet users resort to the disputed domain name includes the statement, “We are looking for Investors in developing our new Website ….” In the Panel’s view, the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website …, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv).
The third element of paragraph 4(a) of the Policy is also established.
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 <colgatemaxwhite.com> be transferred to the Complainant.
Date: June 28, 2013