[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 DOro 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. Registrants
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 COLGATES (Registration No.
57,034), PALMOLIVES (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 Complainant¹s 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 Complainant¹s 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 Registrants Domain Names and Complainants 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 Complainants
trademarks and service marks.
A. Respondents
Rights or Legitimate Interest in the Domain Names.
Under paragraph
4(c) of the Policy, evidence of a registrants 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. Respondents
Bad Faith Registration and Use of the Domain Name.
Under paragraph
4(b) of the Policy, evidence of Respondents 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 Respondents
web site by creating a likelihood of confusion with the trademark owners
mark.
Here, Respondents
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 DOro 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.