DECISION

The Clorox Company v. Daniel Khesin

Claim Number:  FA0304000154103

PARTIES

Complainant is The Clorox Company, Oakland, CA (“Complainant”) represented by Bonnie J. Barnish and Scott Gerien, of Owen Wickersham & Erickson. Respondent is Daniel Khesin, Kew Gardens, NY(“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freereadymop.com>, registered with Go Daddy Software.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 4, 2003; the Forum received a hard copy of the Complaint on April 7, 2003.

On April 7, 2003, Go Daddy Software confirmed by e-mail to the Forum that the domain name <freereadymop.com> is registered with Go Daddy Software and that Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 April 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 28, 2003 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 postmaster@freereadymop.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <freereadymop.com> domain name is confusingly similar to Complainant’s READYMOP mark.

2. Respondent does not have any rights or legitimate interests in the <freereadymop.com> domain name.

3. Respondent registered and used the <freereadymop.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The Clorox Company, is the largest U.S. household bleach maker.  In January of 2002, Complainant began marketing a new product for household cleaning called READYMOP.  This mop system is sold nationally through various retail discount stores, wholesalers, and national grocery stores.  Since its introduction Complainant’s READYMOP has become one of Complainant’s top selling products.  Complainant promotes its product on TV, radio, newspaper and the Internet at <cloroxreadymop.com>, <cloroxreadymops.com>, <readymops.com> and <readymop.com>.

Complainant holds trademark registrations for READYMOP with the U.S. Patent and Trademark Office including Reg. Number 2,578,720 registered on June 11, 2002; Reg. Number 2,592,691 registered on July 9, 2002; and Reg. Number 2,615,848 registered on September 3, 2002.

Respondent registered the <freereadymop.com> domain name on January 14, 2003.  Respondent is not making any use of the disputed domain name.  An article appearing in the February 10, 2003 issue of Advertising Age, quotes Respondent, Daniel Khesin, stating that his company plans to use the domain name in a similar fashion as it uses the <freerazors.com> domain name.  Respondent markets Gillette brand razors via an opt-in email advertising and free product reward scheme.  Internet users sign up for a free Gillette razor, give Respondent their credit card number, and then are shipped replacement blades automatically every two months.  Respondent also emails its customers numerous messages regarding other mail-in and Internet offers.  Some have labeled Respondent’s business as misleading advertising, although no legal action has been taken as of the writing of this decision.[1]

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the READYMOP mark through registration with the U.S. Patent and Trademark Office.

Respondent’s <freereadymop.com> domain name is confusingly similar to Complainant’s READYMOP mark because it incorporates Complainant’s entire mark and merely adds the descriptive term “free.”  The addition of a descriptive term such as “free” to Complainant’s well-known READYMOP mark does not distinguish Respondent’s domain name in a manner capable of overcoming a claim of confusing similarity.  See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is not using the <freereadymop.com> domain name for any purpose.  Respondent reportedly claims that it plans to use the domain name to market Complainant’s READYMOP product, as well as other online and mail-in offers.  The Panel infers, based on Respondent’s use of <freerazor.com> to confuse and divert Internet users interested in Gillette products, that Respondent intends to use <freereadymop.com> to divert Internet users interested in Complainant’s READYMOP brand product to Respondent’s website.  Thus, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use).

Respondent, Daniel Khesin, is not commonly known as FREE READYMOP or <freereadymop.com>.  Respondent has been doing business as <freerazor.com> and therefore has become known by that domain name, not the <freereadymop.com> domain name at issue in this proceeding.  Thus, the Panel finds that Respondent does not have rights or legitimate interests in the <freereadymop.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent had actual knowledge of Complainant’s rights in the READYMOP mark when it registered the <freereadymop.com> domain name.  Registration of an infringing domain name, despite actual knowledge of Complainant’s rights, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent is not currently using the domain name; however, based on the evidence submitted it is apparent that the domain name was registered to attract Internet users interested in Complainant’s READYMOP product.  Based on this information, the Panel infers that Respondent registered the domain name with the intent to profit from the Internet user confusion that would result from the use of the <freereadymop.com> domain name, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  Moreover, the domain name evidences opportunistic bad faith on the part of Respondent.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). 

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <freereadymop.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 13, 2003

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