UDRP CASE SUMMARY ARCHIVES - DOMAIN NAME LEGAL DISPUTES

Colgate-Palmolive Company v. Charles Kasinga

[Indexed as: Colgate-Palmolive v. Kasinga]
[Indexed as: ColgatePalmolive.com et al]

WIPO Arbitration and Mediation Center
Administrative Panel Decision

Case No. WIPO FA0002000094203
Commenced: 28 February 2000
Judgment: 7 April 2000

Presiding Panelist: Nelson A. Diaz

Domain name - Domain name dispute resolution policy - U.S. Trademark - International trademark - Service mark - Identical - Confusingly similar - bad faith registration - History of bad faith registration - Well-known marks - Famous marks.
 

Complainant was registrant of several trademarks in United States and internationally for COLGATE PALMOLIVE.  Respondent registered the domain names, COLGATEPALMOLIVE.COM, COLGATE-PALMOLIVE.NET and COLGATEPALMOLIVE.NET.  Complainant alleged that Respondent had no legitimate interest in the domain names and registered them in bad faith.

Held, Names Transferred to Complainant.

Respondent tried to sell the domain names to Complainant.  Additionally, Respondent had a history of registering domain names that he had no rights or legitimate interest in.

It is clear the domain names, COLGATEPALMOLIVE.COM, COLGATE-PALMOLIVE.NET and COLGATEPALMOLIVE.NET are identical or confusingly similar to the service marks and trademarks registered and used by Complainant.  It is also clear that Respondent has no rights or legitimate interest in respect to the domain names.  This is bad faith registration.

By trying to effect payment for the domain names and a history of registering domain names that were well-known and trademarked, Respondent demonstrated bad faith use of the marks.

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

America On Line Inc. v. QTR Corporation, National Arbitration Forum, No. FA0092106 
Nabisco Brands Co. v. The Patron Group, Inc., ICANN Case No. D2000-0032; 
 (February 10, 2000)

Stella D'Oro Biscuit Co., Inc v. The Patron Group, Inc., ICANN Case No. D2000-0012; 

World Wrestling Federation Entertainment, Inc. v. Michael Bosman

Panel Decision referred to
--

Diaz, Panelist: - 

1. The Parties
Complainant is Colgate-Palmolive Company ("Complainant"), located at 300 Park Avenue, New York, N.Y. 10022. Complainant was represented by Bret I. Parker.  Respondent is Charles Kasinga ("Respondent"), located at 7632 Amazon Drive, No. 1, Huntington Beach, CA 92647. Respondent filed no response and therefore was not represented.

2. The Domain Names and Registrar
The domain names at issue are <colgatepalmolive.com>, <colgate-palmolive.net> and <colgatepalmolive.net>. The registrar is Network Solutions, Inc. (the "Registrar"), 505 Huntmar Park Dr., Herndon, Virginia 20170 USA.

3. Procedural History
The National Arbitration Forum (the "Forum") received the Complaint on February 28, 2000. The Forum verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Pursuant to paragraph 2(a) of the Rules, the Forum thereafter sent the Respondent a notification of the administrative proceeding together with copies of the Complaint. 
On February 28, 2000, Network Solutions Inc. ("NSI") verified to the Forum that:
1. The domain names at issue are registered with NSI; 
2. Registrant's information from the "WHOIS" database was accurate; 
3. The domain name registrants are bound by the Network Solutions service agreement version 4.0; and 
4. The domain registration for the disputed domain names are on "Hold" status.

As Respondent did not submit a response to the Complaint within twenty (20) days pursuant to Rule 5(a), the Administrative Panel issues its decision below based upon the Complaint, the filed documents, the Policy, the Rules, and the Supplemental Rules without the benefit of any response from Respondent.

4. Factual Background
The Complainant is the owner of numerous trademarks, service marks and trade names that include the terms Colgate, Palmolive, Colgate-Palmolive and various combinations of the above. The marks are famous and have been used around the world for a wide variety of personal care and household cleaning products including toothpaste, toothbrushes, soap, dishwashing liquid and shampoo. Complainant owns the registered United States trademarks COLGATE'S (Registration No. 57,034), PALMOLIVE'S (Registration No. 210,594), COLGATE-PALMOLIVE READY-TO-CLEAN (Registration No. 1,903,316). Similarly, Complainant has registered its trademark internationally. For example, Complainant has registered COLGATE-PALMOLIVE, as a trademark in Great Britain and Northern Ireland (Registration No. 890326 and 890327).
Respondent registered the domain names , <colgate-palmolive.net> and with the Registrar on February 6, 1998. Respondent has also registered the domain <coke-cola.net>, , <magic-kindom.net> and 

5. Parties' Contentions
A. Complainant contends that the domain names , and are substantially similar to, and, in fact, identical to Complainant┬╣s COLGATE, PALMOLIVE and COLGATE-PALMOLIVE trademarks and service marks.
B. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain names. 
C. Complainant contends that Respondent registered and is using the domain names in bad faith in violation of the Policy. 
D. Respondent does not contest that the domain names are identical with or confusingly similar to Complainant┬╣s trademark and service marks. 
E. Respondent has not contested that it has no rights or legitimate interest in the disputed domain names. 
F. Respondent has not contested that it has acted in bad faith in registering and using the domain names.

6. Discussion and Findings
To obtain the requested relief, paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
1. That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 
2. That the Respondent has no rights or legitimate interest in the domain name; and 
3. That the domain name has been registered and used in bad faith.
A. Similarity Between Registrant's Domain Names and Complainant's Trademarks. 
In this case, it is clear that the domain names registered by Respondent are identical to the registered trademarks and service marks owned by Complainant. The addition of .net or .com or the absence of the space between the words is not significant in determining similarity. The panel concludes that Complainant has met its burden of proof on the first prong and that the domain names are identical to and confusingly similar to Complainant's trademarks and service marks.
A. Respondent's Rights or Legitimate Interest in the Domain Names.
Under paragraph 4(c) of the Policy, evidence of a registrant's rights or legitimate interest in the domain name includes:
1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; 
2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or 
3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark. 
Respondent has not shown, and cannot show, that it has made any legitimate use 
of the disputed domain names which are identical to the registered and famous trademarks and service marks of Complainant. Complainant thus has met its burden of proof with regard to the second prong under paragraph 4(a)
B. Respondent's Bad Faith Registration and Use of the Domain Name. 
Under paragraph 4(b) of the Policy, evidence of Respondent's bad faith registration and use includes:
1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit; 
2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks; 
3. Registration of the domain name for the purpose of disrupting the business of competitor; or 
4. Using the domain name to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with the trademark owner's mark.
Here, Respondent's bad faith has been amply demonstrated. 
Complainant has demonstrated that Respondent sought to profit from the domain names by seeking excessive payments from Complainant in return for a transfer of the domain names. Such a demand for payment has been deemed evidence of bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, ICANN Case No. D99-0001(January 14, 2000) (finding that demand for payment constituted both bad faith use and registration). 
Similarly, Complainant has also shown that Respondent has registered numerous other domain names identical to well-known marks of others, including those of Coca-Cola and Walt Disney. Panel decisions have found that registration and ownership of numerous domain names, which are the names or the marks of well-known business entities unaffiliated with the registrant, may serve as evidence from which an adverse inference of bad faith may be drawn. See Stella D'Oro Biscuit Co., Inc v. The Patron Group, Inc., ICANN Case No. D2000-0012; Nabisco Brands Co. v. The Patron Group, Inc., ICANN Case No. D2000-0032; America On Line Inc. v. QTR Corporation, National Arbitration Forum, No. FA0092106 (February 10, 2000) (finding bad faith where Respondent engaged in pattern of registering domain names that infringe upon other entities trademarks). The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain names in bad faith.
Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.

7. Decision
The Panel concludes: (a) that the domain names <colgatepalmolive.com>, <colgatepalmolive.net> and <colgate-palmolive.net> are identical to and confusingly similar to the trademarks and service marks COLGATE, PALMOLIVE and COLGATE-PALMOLIVE; (b) that Respondent has no rights or legitimate interest in the domain names; and (c) that Respondent registered and used the domain names in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain names <colgatepalmolive.com>, <colgatepalmolive.net> and <colgate-palmolive.net> be transferred to the Complainant Colgate-Palmolive Company.

Date: April 7, 2000 
Nelson A. Diaz, Presiding Panelist

Names Transferred to the Complainant.

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