DECISION

The Proctor & Gamble Company v. Fast Track Corporation

Claim Number:  FA0406000289085

PARTIES

Complainant is The Procter & Gamble Company (“Complainant”), represented by Stacey H. King, of Howry Simon Arnold & White, LLP, 1299 Pennsylvania Avenue, NW, Washington, D.C. 20004.  Respondent is Fast Track Corporation  (“Respondent”), P.O. Box 1071, Panama 9A, Panama.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tidedetergent.com>, registered with Network Solutions, Inc.

PANEL

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

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 23, 2004; the Forum received a hard copy of the Complaint on June 24, 2004.

On June 24, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <tidedetergent.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 15, 2004 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@tidedetergent.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 July 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <tidedetergent.com> domain name is confusingly similar to Complainant’s TIDE mark.

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

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

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

FINDINGS

Complainant, The Proctor & Gamble Company, is a famous, multi-national company that engages, inter alia, in the development, manufacturing, and sale of a variety of consumer goods worldwide.  Of particular importance, Complainant has marketed a detergent known as “Tide” for household and laundry use since 1945.  In the past fourteen years, Complainant has expended over $750 million dollars to advertise “Tide” products.  As part of its marketing efforts, Complainant has developed and maintained a website located at <tide.com>.

To identify its products, Complainant first registered the TIDE mark with the United States Patent and Trademark Office (“USPTO”) on October 1, 1946 in connection with “sudsing, soap-like detergents in solid (non-liquid) form for household and laundry purposes” (Reg. No. 424,339).  The USPTO information lists Complainant’s first use of the TIDE mark as being in 1945.  Complainant subsequently and successfully registered numerous other TIDE-related marks with the USPTO including registration numbers 1,063,680; 2,326,614; 2,474,496 (TIDE RAPID ACTION TABLETS); 2,478,609 (TIDE KICK); 2,518,798 (RAPID ACTION TABS TIDE); 2,541,789 (TIDE RAPID ACTION TABS); and 2,811,817 (TIDE TO GO).

Respondent registered the disputed domain name <tidedetergent.com> on May 17, 2000.  The domain name has never, and is not currently, resolved to an active website.

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

Under Policy ¶ 4(a)(i), it is sufficient for a Complainant to have registered a mark with an appropriate governmental authority in order to demonstrate rights in a mark.  In the instant case, Complainant owns numerous USPTO registrations in connection with its TIDE mark.  Thus, Complainant has established rights in the TIDE mark under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); 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.”).

A domain name that incorporates a well-known mark, in combination with a generic or descriptive term that relates to the goods or services offered by the owner of the mark, has been consistently found to be confusingly similar to the mark under Policy ¶ 4(a)(i).  Here, Respondent registered the domain name <tidedetergent.com>, which incorporates the well-known TIDE mark.  Respondent has appended the term “detergent” to the TIDE mark, which merely describes the type of goods sold by Complainant under the TIDE mark.  Consistent with like cases decided under the Policy, the Panel finds that the disputed domain name <tidedetergent.com> is confusingly similar to Complainant’s TIDE mark because the addition of the descriptive term “detergent” to the mark fails to alleviate the confusing similarity pursuant to Policy ¶ 4(a)(i).  See 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); see also Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the domain name <novellsolutions.com> confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” to the mark because even though “the word 'solutions' is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL.”); see also Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (“Respondent's <aigassurance.com> domain name is confusingly similar to Complainant's AIG mark because the disputed domain name appropriates Complainant's entire mark and adds the generic or descriptive term 'assurance' to the end of the mark. The addition of this generic or descriptive term does not significantly differentiate the domain name from the mark under Policy 4(a)(i) because the term 'assurance' relates directly to Complainant's business of providing insurance services.”).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The failure of Respondent to respond to the Complaint may function as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not come forward to explain what legitimate use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain names at issue”).

In addition, in the absence of a Response, the Panel may accept all reasonable allegations set forth in the Complaint as true.  See Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); 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.”); see also Allergan Inc. v. Medbotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint. Under these circumstances it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.”); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true).

Respondent has not connected the disputed domain name <tidedetergent.com> to an active website.  Such inactive use is referred to as “passive holding.”  Passively holding a domain name does not evidence rights or legitimate interests in a domain name pursuant to Policy ¶ 4(a)(ii).  Therefore, without a rebuttal to Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name, the Panel must base its decision on the evidence before it and thus, accepts Complainant’s reasonable contention.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Not My Kid, Inc. v. Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003) (“[The] Panel finds that the passive holding of the domain name is an indication that Respondent does not have rights or legitimate interests in the domain name.”).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that incorporates the well-known TIDE mark, which is owned by Complainant.  Complainant has alleged that Respondent’s registration and passive holding of the domain name is evidence of bad faith.  Given the fame associated with the TIDE mark, Respondent’s addition of the term “detergent” to the mark that merely describes the type of goods offered by Complainant under the mark, and the lack of a Response, the Panel is comfortable in determining that Complainant’s allegation of Respondent’s bad faith is reasonable.  Respondent has failed to controvert both the assertion and evidence that supports Complainant’s position.  Therefore, the Panel accepts Complainant’s assertion.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark); see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith registration and use where Respondent registered a domain name incorporating Complainant’s mark and Respondent failed to show circumstances in which such a registration could be done in good faith).

Under the Policy, the passive holding of a domain name has been sufficient to establish bad faith registration and use on behalf of domain name registrants; such is the case here.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith) see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  August 2, 2004

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