The Procter & Gamble Company v. Hong Gil Dong
Claim Number: FA0510000572962
Complainant is The Procter & Gamble Company (“Complainant”), represented by Alison J. Bouffard of Keating Muething & Klekamp PLL, One East Fourth Street, Suite 1400, Cincinnati, OH, 45202. Respondent is Hong Gil Dong (“Respondent”), “living in Korea.”
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <procterandgamble.com>, registered with Onlinenic, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 11, 2005.
On October 7, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <procterandgamble.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Pursuant to ICANN Rule 3(b)(ix), this Complaint is based on the following factual and legal grounds:
[a.] In addition to its ownership of several United States trademark registrations for its well-known, famous and valuable PROCTER & GAMBLE trademark, Complainant is known by its famous PROCTER & GAMBLE trademark and has established significant and substantial goodwill and consumer recognition in this name based on over 160 years of continuous use. Complainant uses its PROCTER & GAMBLE trademark for consumer goods relating to house and home, health and wellness, personal beauty, pet nutrition and care, and baby wellness and family.
In 2004, sales of PROCTER & GAMBLE products exceeded $50 billion. In addition, Complainant has spent hundreds of millions of dollars advertising and promoting its PROCTER & GAMBLE products.
The infringing <procterandgamble.com> domain name is identical to Complainant’s registered PROCTER & GAMBLE trademark, and is certainly confusingly similar thereto as it incorporates the entirety of the mark.
Internet users who type Complainant’s PROCTER & GAMBLE name and trademark will be confused when they are directed to Respondent’s website that hosts a search engine which provides links to a variety of websites and features a variety of advertisements for cosmetic goods of Complainant’s competitors. Further, by using Complainant’s federally registered PROCTER & GAMBLE trademark, Respondent is trading off the goodwill and reputation established by Complainant in its well-known and famous PROCTER & GAMBLE trademark.
These statements regarding the manner in which the domain name <procterandgamble.com> is identical and confusingly similar to Complainant’s PROCTER & GAMBLE trademark are made pursuant to: ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
[b.] Pursuant to ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii), the Respondent (domain-name holder) has no rights or legitimate interests in the infringing <procterandgamble.com> domain name for the following reasons:
Respondent registered the infringing domain name on November 19, 2001, thirty-four years after Complainant commenced use of its PROCTER & GAMBLE trademark and 164 years after Complainant commenced use of its PROCTER & GAMBLE trade name.
Respondent is not in any way commonly known by, doing business as, or in any way providing any goods or services in any way related to the name “Procter and Gamble.” Access to Respondent’s website www.procterandgamble.com shows that it is nothing but a series of sponsored links for cosmetic goods.
Respondent is not affiliated with, licensed by or authorized in any manner to use Complainant’s PROCTER & GAMBLE trademark.
Upon entering the domain name and URL <procterandgamble.com>, users are automatically directed to Respondent’s website and upon reaching Respondent’s website, are presented with advertisements and links to Complainant’s competitors.
The preceding discussion and evidence support the conclusion that Respondent is using the domain name <procterandgamble.com> solely as a means to profit from the re-sale of the domain name either to Complainant or a competitor of Complainant. Respondent’s use of the disputed domain name <procterandgamble.com> to attract customers to a website is for Respondent’s commercial gain because it creates a likelihood of confusion with Complainant’s PROCTER & GAMBLE trademark as to the source, sponsorship, affiliation, or endorsement of the <procterandgamble.com> website. Respondent therefore has no rights or legitimate interests in the domain name <procterandgamble.com>.
These statements regarding the Respondent’s lack of rights or legitimate interest in respect to the infringing <procterandgamble.com> domain name are made pursuant to ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
[c.] Pursuant to ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii), the infringing <procterandgamble.com> domain name should be considered as having been registered and being used in bad faith for at least the following reasons:
Respondent registered the infringing domain name many years after Complainant commenced use, established rights, and gained fame and goodwill in its PROCTER & GAMBLE trademark.
Respondent is capitalizing on the goodwill of the PROCTER & GAMBLE mark by using the disputed domain name to divert Internet users to a website that advertises and links to Complainant’s competitors.
Respondent has no need or legitimate interest to register or use <procterandgamble.com>, and has attempted to register the domain name intending to either profit from the sale of <procterandgamble.com> by selling it to Complainant; profit from the sale of the domain name by selling it to a competitor of Complainant’s so that the competitor could divert sales; develop his own website using Complainant’s trademarks, with the intent to divert customers away from Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of Complainant; or prevent Complainant from registering the domain name for its own business.
On June 30, 2005, Complainant sent Respondent a cease and desist letter via email. Respondent replied on July 4, 2005 stating that he did not know PROCTER & GAMBLE was a company name. Respondent said he was only aware of P&G. Respondent requested payment of $3,900 to transfer ownership to Complainant. Complainant declined this offer, and again requested that he transfer ownership without payment with the exception of the transfer fees. Respondent replied on July 18, 2005 requesting $1,950 in payment. Complainant has not replied to Respondent’s most recent offer.
Respondent’s bad faith registration and use of the <procterandgamble.com> domain name are established because Respondent’s knowledge of Complainant’s trademark rights in PROCTER & GAMBLE can be inferred since Complainant’s PROCTER & GAMBLE trademark has been registered on the Principal Register of the USPTO, and has been in use in commerce at least as early as 1967. In addition, Complainant has used the trade name PROCTER & GAMBLE since 1837. Respondent’s registration of the <procterandgamble.com> domain name despite its knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. Victoria’s Secret Catalogue, Inc., 161 F. Supp.2d 1339, 1349 (S.D. Fla. 2001); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); and Glaxo Group Limited and The Wellcome Foundation Limited, WIPO Case No. D2005-0202 (May 6, 2005).
Accordingly, Complainant has satisfied Policy ¶4(a)(iii) by establishing that Respondent has registered, used and is using the infringing <procterandgamble.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Procter & Gamble Company, uses its PROCTER & GAMBLE mark for consumer goods relating to house and home, health and wellness, personal beauty, pet nutrition and care and baby wellness and family.
Complainant holds numerous trademark registrations throughout the world and with the United States Patent and Trademark Office (“USPTO”) for the PROCTER & GAMBLE mark (Reg. No. 858,361 issued October 8, 1968). Complainant has used its mark continuously and extensively since 1837.
Respondent registered the <procterandgamble.com> domain name on November 19, 2001. The domain name resolves to a directory website (at a different domain name) that displays links to various products and services, including some cosmetics products in competition with Complainant. Respondent presumably earns referral fees by directing users to third-party websites via the links on Respondent’s website. Simply using a domain name that forwards to another web site invites a higher level of scrutiny, Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, FA0211000129123 (January 2, 2003).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is the owner of several registrations for the PROCTER & GAMBLE mark with the USPTO and with trademark authorities worldwide. Complainant’s registration of its mark with a national trademark authority is sufficient to establish a prima facie case of Complainant’s rights in the mark pursuant to Policy ¶4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <procterandgamble.com> domain name differs from Complainant’s PROCTER & GAMBLE mark only with the substitution of the term “and” for the ampersand symbol. Because the ampersand is impermissible in domain names, the word “and” is the equivalent of the symbol within a domain name. Respondent’s alteration of the mark is not sufficient to significantly differentiate the domain name from Complainant’s mark, and the domain name is found to be confusingly similar to Complainant’s mark. See Foley & Lardner v. Wick, FA 114758 (Nat. Arb. Forum Sept. 10, 2002) (finding the <foleyandlardner.com> domain name confusingly similar to the complainant’s FOLEY & LARDNER mark and stating that “[t]he mere substitution of a word for its representative mark is insufficient to avoid confusion”); BB&T Corp. v. Enom Domain, FA 341277 (Nat. Arb. Forum Nov. 30, 2004) (“The <bbandt.biz> domain name . . . is confusingly similar to Complainant’s BB&T mark because the domain name merely replaces the ampersand ‘&’ from Complainant’s mark with the word ‘and.’”).
The Panel finds Policy ¶4(a)(i) is satisfied.
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Complainant has presented a prima facie case.
Respondent is not commonly known by the <procterandgamble.com> domain name and Respondent is not licensed or authorized by Complainant to use Complainant’s PROCTER & GAMBLE mark or any variation thereof for any purpose. Respondent has not established rights or legitimate interests under Policy ¶4(c)(ii) even though it has registered the domain name in 2001. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The <procterandgamble.com> domain name forwards Internet users to a website that displays links to various products and services, including many cosmetic products that compete with Complainant. The Panel infers Respondent profits from referral fees when Internet users access these third-party websites via this webpage. These circumstances indicate Respondent is attempting to benefit by using a version of Complainant’s PROCTER & GAMBLE mark to attract Internet users to Respondent’s own website. Such diversionary use of the domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds Policy ¶4(a)(ii) is satisfied.
Complainant provides evidence Respondent is using the <procterandgamble.com> domain name to operate a directory website that displays links to various third-party websites. Respondent likely derives gain from this website through referral fees earned by directing traffic to the third-party websites. Respondent’s use of a confusingly similar version of Complainant’s registered PROCTER & GAMBLE mark in a domain name creates a likelihood of confusion and suggests and attempt to attract Internet users to Respondent’s commercial website. The Panel finds this is sufficient evidence of bad faith registration and use under Policy ¶4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent has also offered to sell the domain name for $3,900. This is a further indication of bad faith.
Respondent has failed to provide full and correct information when he registered this domain name. For example, “living in Korea” hardly qualifies as an address. Even the precise country is unclear. Providing false or misleading whois contact information creates a presumption of bad faith, Agent Host v. Host Dot Com Investments, AF-0343 (October 16, 2000). This Panel elects to draw that conclusion.
The Panel finds Policy ¶4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <procterandgamble.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, November 16, 2005