Complainant is Ecolab Inc. of St. Paul, Minnesota, United States of America, represented by CMS Hasche Sigle, Germany.
Respondent is Islandstone, Island Stone Natural Advantage Ltd of London, United Kingdom of Great Britain and Northern Ireland, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with R Spa (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2012. On November 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2012. The Response was filed with the Center on November 26, 2012.
The Center appointed Roberto Bianchi as the sole panelist in this matter on December 5, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Created in 1923, Complainant is an international company, currently represented in over 170 countries, including the United States of America (“USA”) and the United Kingdom. Complainant is one of the world’s leading manufacturers in the field of professional cleaning and hygiene supplies, and sanitation systems support. Among other things, Complainant produces and distributes a number of disinfectants, inter alia stone care products, and provides laboratory analyses. In 1986 Complainant changed its legal name to Ecolab, Inc. and has traded under this name since that date.
Complainant owns more than 250 trademark registrations for ECOLAB in numerous countries, including the United Kingdom (inter alia Trademark Registration No. 1280799, registered on December 6, 1991, filed on October 1, 1986, covering: Cleaning, polishing, scouring and abrasive preparations and products, soaps, detergents, bleaching preparations, substances for laundry use, rinsing aids, rinsing additives, lime, scale and rust removers, products for softening and removing stains, degreasing preparations, grease cutters, starches, brightening preparations, all included in International Class 3), and United States (inter alia Trademark Registration No. 1497423, registered July 26, 1988), filed on January 21, 1987; covering: laundry and warewashing machines, machinery for cleaning, polishing and scrubbing, parts and accessories therefor, of class 7; insect, rodent and pest extermination and control services; janitorial services; leasing of laundry and dishwashing machines and related equipment; lawn, tree and shrub maintenance services, and carpet services, of International Class 37; First use/first use in commerce December 5, 1986).
Respondent, based in London, United Kingdom, is a manufacturer and distributor of tiles and other construction materials.
On January 14, 2010, Respondent registered the disputed domain name. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s ECOLAB trademark. The disputed domain name incorporates the entire trademark ECOLAB. Adding elements of mere generic nature (“tiles”) into a domain name is insufficient to avoid a finding of confusing similarity. Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. The relevant and dominating part of the disputed domain name is the designation “ecolab”, which clearly is identical to the ECOLAB trademarks registered in the name of and owned by Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name. First, Complainant did not grant Respondent any license or rights to register and/or use the disputed domain name. Second, before any notice of this dispute to Respondent, there is no evidence that Respondent already used, or made preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, Respondent is trying to take unfair advantage of the goodwill associated with Complainant’s well-known ECOLAB trademark, by linking the disputed domain name to a domain parking service with Complainant’s mark in mind hoping and expecting that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page. This does not establish a legitimate interest in the disputed domain name under the Policy. Moreover, there is no evidence that Respondent made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Even if Respondent should have intended to use the designation “ecolabeltiles” to advertise its own products and should have made any preparations for this use, this would not be a use in connection with a bona fide offering of goods and services. Rather, such particular use of the designation “ecolabeltiles” in commerce for tiles and/or claddings would have to be qualified as an infringement of Complainant’s ECOLAB trademarks, since the opposing signs ECOLAB and “ecolabeltiles” are highly similar. In addition, tiles/claddings and the goods and services for which Complainant’s trademarks are protected (particularly in Classes 3 and 37) are highly similar; in particular, the distribution channels for stone tiles/claddings and stone care products - which are supplementary goods - overlap, and thus so do the customers. Therefore, even if Respondent should have intended to use the sign “ecolabeltiles” for tiles and/or claddings and should have made any preparations for this use, Respondent would not have made any preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Rather, Respondent would have made preparations for an infringement of Complainant’s ECOLAB trademarks, which is obviously not a bona fide offering of goods and services.
Third, Respondent has not been commonly known by the disputed domain name.
Fourth, the disputed domain name is being used for commercial purposes and intent for commercial gain. It is well-known how “pay-per-click” service pages operate: a domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to those sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link makes a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name. If Respondent intended to use the disputed domain name for selling and/or advertising tiles and/or claddings, this would be another fact that would show that the disputed domain name has obviously been registered for commercial purposes and intent for commercial gain.
Fifth, the disputed domain name has been registered only because it contains Complainant’s famous ECOLAB trademark (and not because the disputed domain name is descriptive). The disputed domain name does not consist of dictionary or descriptive words, since neither “ecolab” nor “ecolabel” are generic words. Moreover, the disputed domain name as a whole (“ecolabeltiles”) has no meaning that can be immediately understood by the targeted trade circles. Therefore, the disputed domain name as a whole is not descriptive either. Thus, the use in question is not privileged under the doctrine of “fair use”. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
The disputed domain name was registered and is being used in bad faith. Given that Complainant’s company name and trademark ECOLAB are internationally reputed and registered as trademarks in various countries all over the world for several classes and keeping in mind that Respondent does not have any authority, specifically, to use Complainant’s company name/trademark, Respondent could not seriously claim a legitimate registration and use of the disputed domain name.
It appears that Respondent has chosen a domain name that is confusingly similar to Complainant’s trademarks for commercial gain. Complainant’s ECOLAB trademarks have an outstanding reputation and were already registered years ago, whereas the disputed domain name was registered on January 14, 2010. Therefore, Respondent registered the disputed domain name with actual knowledge of Complainant and its ECOLAB marks and entered into an arrangement to share advertising revenue derived from use of the search term “ecolab”, in the expectation that some revenue would flow from stone care product/detergent/laboratory analysis-related advertisements aimed at Internet users arriving at Respondent’s website seeking Complainant’s products. Respondent should have known Complainant’s trademarks, since they are well-known at least in English speaking countries, thus - among others - in the United States and Great Britain, and because Respondent is located in many English speaking countries (United Kingdom, the USA, Canada, Australia, New Zealand) and since Respondent and Complainant produce supplementary goods. In cases in which the respondents “knew or should have known” about the existence of the complainants’ trademarks, various previous UDRP panels have found bad faith registration of the domain name.
Another fact from which knowledge and intent can be inferred is the content and nature of the sponsored links appearing on the “pay-per-click” page. Given how these “pay-per-click” pages operate and since the web page at the disputed domain name displays links connected with Complainant’s business, this of itself provides prima facie evidence of Respondent’s knowledge of Complainant’s trademarks and its intent to take advantage of the reputation of that mark.
Therefore, the only reason why Respondent chose the disputed domain name in question was the similarity to Complainant’s marks, in the hope and expectation that similarity would result in an increased number of Internet users being drawn to that page.
Accordingly, in using the disputed domain name, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with Complainant’s marks. This constitutes evidence of both bad faith registration and bad faith use under the Policy, paragraph 4(b)(iv). B. Respondent
In its Response, Respondent contends as follows:
Complainant has trademark rights over ECOLAB, which relates to chemicals as reflected in classes 1, 3, 4, 37 and 42. However, Respondent’s industry is exclusively construction materials, specifically natural stone and porcelain tiles of class 19. Respondent believes Complainant is intentionally demonstrating bad faith by claiming that its rights in chemicals of classes 3 and 37 extend to construction materials hard finishes of class 19. Respondent does not sell chemicals or chemicals to maintain its own products.
Complainant claims that the name “Ecolab” is encompassed within the domain name. It also claims wrongfully a breach of Complainant’s trademark rights and that Respondent should have sought permission to use the disputed domain name because it is confusingly similar to its trademark. However, “Ecolabel tiles” are tiles made to conform to Eco Label standards. Ecolabel is an environmental standard commissioned by the European Government and subscribed by the governments of the European Union states. Eco Label is part of European legislation. Eco Label is the environmental concept brand of the European Commission and the states it represents.
Clearly Complainant has no rights over the international and European governmental Eco Label standard. Environmental-friendly Eco label tiles do exist and this term is also a bona fide term within the industry for those seeking tiles that have been made and conform to the European environmental standard Eco Label.
Respondent rejects the claim that the disputed domain name is being used for commercial gain on the back of Complainant’s trademark. The disputed domain name is parked with a domain name supplier and Respondent was not aware that there was any advertising associated, and does not benefit in any way from it. Respondent checked those advertisements and the majority of them had no connection whatsoever with Complainant’s business (chemicals). Therefore the allegation that Respondent was targeting Complainant in the hope of financial gain is nothing short of fantasy or misrepresentation. Nonetheless upon becoming aware of a complaint on Respondent’s parked disputed domain name it immediately requested this “hosting function” to be stopped.1
Respondent has shown beyond doubt there is absolutely no cross-over of products or services or likelihood of confusion. Respondent is not a competitor of Complainant in any way. Complainant deals with chemicals and hygiene products while Respondent deals with environmental hard material finishes of stone and porcelain for the use in construction.
Respondent believes Complainant has shown poor judgment and demonstrated that the Complaint has elements of harassment and bad faith. It is reasonable that a company of Complainant’s size has the resources to research yet it is beyond belief and beyond reason Complainant did not search the word “Eco label”. Such an obvious search would have demonstrated genuine results for the term “Eco Label” including Wikipedia results and Acts of the European Parliament including internationally recognized symbols for Eco Label. Respondent believes that this is a genuine case of harassment. As Respondent is a small company, having to file this Response was a huge disruption. Respondent has had to seek consultation at its own expense for a claim and allegation that should never have been submitted (certainly not in good faith). 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the ECOLAB mark in the United States, the United Kingdom, and elsewhere. See section 4 above.
In order to determine whether the first requirement of the Policy is met, the Panel has to compare the disputed domain name with Complainant’s ECOLAB mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name ”).
This straightforward comparison shows that the disputed domain name contains the alphanumerical string “ecolab”, plus the letters “el” and the generic term “tiles”.
Since in the disputed domain name Complainant’s mark appears in its integrity, it is evident that a degree of similarity exists between the disputed domain name and Complainant’s mark. Is this similarity likely to create Internet user confusion, as required by Policy paragraph 4(i)? The Panel notes that “ecolab” is incorporated within the “ecolabeltiles” string, much as the string “heat” is included within the string “theatre” in the example above. However, the Panel notes below that “ecolabeltiles” has a descriptive meaning not associated to Complainant’s mark ECOLAB. As argued by Respondent and confirmed by the Panel, the “ecolabel” portion of the disputed domain name is a generic term referring to a certificate awarded to products and services meeting certain environmental standards. Also, Complainant does not offer any explanation or suggest any meaning for the remaining particle “el” in the disputed domain name after the terms “ecolab” and “tiles” have been identified. Therefore, the Panel is doubtful whether Complainant’s ECOLAB mark is “recognizable as such” in the disputed domain name, as stated in the WIPO Overview 2.0. Thus, a conclusion on confusing similarity seems ultimately to depend on whether the Internet user is aware or not of the existence of Complainant’s ECOLAB mark and/or the ecolabel certificate.
The Panel need not reach a conclusion under the first element of the Policy, because Complainant has failed to make out its case under the second element. See Mastercard International Incorporated v. Education, Ersin Namli,WIPO Case No. D2011-2312 (“Ultimately, however, this Panel need not to decide the question of whether the Complaint establishes that Respondent’s disputed domain name is confusingly similar to marks of Complainant, since the Panel has determined that the Complaint fails on other grounds, as elaborated below.”) B. Rights or Legitimate Interests
Under Policy paragraph 4(a)(ii) a complainant should first establish a prima facie case that the respondent lacks any right or legitimate interest in a domain name; then it is up to the respondent to come forward with allegations and evidence showing that it has at least some rights or legitimate interests in the domain name.
Complainant alleges that the disputed domain name has been registered only because it contains Complainant’s ECOLAB trademark and not because the disputed domain name is descriptive; that the disputed domain name does not consist of dictionary or descriptive words, since neither “ecolab” nor “ecolabel” are generic words; that the disputed domain name as a whole has no meaning that can be immediately understood by the targeted trade circles, and that therefore, the disputed domain name as a whole is not descriptive.
Respondent alleges that it registered the disputed domain name for future use in a website dedicated to market and publicize its own products, i.e. tiles conforming to Eco Label European standards. Respondent has pointed to the fact that a simple search by Google would have shown that Eco Label is a European standard for environment-friendly products and services. The Panel has confirmed this fact by visiting the websites listed as a result of a Google search for “eco label” and “ecolabel”, as suggested by Respondent. In particular, the FAQ in the “/environment/ecolabel/faq.html” website states:
“[a]n ecolabel is a voluntary environmental performance certificate that is awarded to products and services. These products and services have to meet specific, identified criteria depending on the product groups, which reduce overall environmental impact.”
Respondent also submits a copy of the Official Journal of the European Union of January 30, 2010, showing Regulation (EC) No. 66/2010 of the European Parliament and of the Council, of November 25, 2009, on the EU Ecolabel, which lays down rules for the establishment and application of the voluntary EU Ecolabel scheme.
Respondent has also shown that it is a company manufacturing and/or distributing tiles and other construction materials.
In the opinion of the Panel - and contrary to Complainant’s allegations above - the disputed domain name can be immediately understood as clearly descriptive by the targeted trade circles as it results from the combination of the generic terms “ecolabel” and “tiles”, provided they are aware of the existence of ecolabels. Thus, the disputed domain name appears to be appropriate for legitimate use in a marketing or information website on tiles awarded or deserving the ecolabel, as plausibly contends Respondent. Although links to products close to the goods protected by Complainant’s mark did appear on the website at the disputed domain name, the Panel finds that, in the circumstances of this case, this is not indicative of lack of rights or legitimate interests on the part of Respondent. Accordingly, the Panel concludes that Complainant failed to show that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Since Complainant failed to establish Respondent’s lack of rights and legitimate interests in the disputed domain name, the Panel also need not deal with the bad faith element. See Bidmania Co. v. Dale Cumming / Euro PC,WIPO Case No. D2012-0632 (“Given the Panel’s findings in relation to the second element of paragraph 4(a) of the UDRP Policy, consideration of the third element is not necessary as the elements are conjunctive.”) D. Complaint Not Brought in Bad Faith
Under Rules paragraph 1 (“Definitions”), “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Rules paragraph 15(e) reads, “[…] If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the Panel’s view, under Rules paragraphs 1 and 15(e), acting in bad faith, attempting at Reverse Domain Name Hijacking and bringing the complaint primarily to harass the domain-name holder requires intent and specific knowledge on the part of the complainant, and not mere negligence or carelessness. As reflected in the WIPO Overview 2.0 paragraph 4.17, “to establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name” (Emphasis added).
It is true, as Respondent suggests, that Complainant appears to be sophisticated enough to make research on the Internet. The Panel also agrees with Respondent that had Complainant searched for the “Eco Label” or “Ecolabel” terms, it would easily have found numerous references, and thus, the basis for Respondent’s claim of rights or legitimate interests of the disputed domain name. However, the Panel is not convinced that under the terms of Rules paragraphs 1 and 15(e) a complainant, and particularly the owner of a well-known mark, is under the obligation to conduct any specific research aimed at excluding that a respondent may have rights in a domain name, before bringing a UDRP complaint.
As the parties certify in the Complaint and the Response, there were no other legal proceedings in connection with or relating to the disputed domain name, and there is no indication on the record of any contacts or correspondence between the parties before this proceeding, such as a cease and desist letter from Complainant and a reply from Respondent. Moreover, there is no provision in the Policy or the Rules requiring that the parties in a domain name dispute should first try contacting each other, although in many cases that may be a reasonable thing to do. Accordingly, Complainant did not receive any notice or claim concerning any rights or legitimate interests of Respondent in the disputed domain name before bringing the Complaint.
Further, as alleged by Complainant and previously mentioned, links related to products close to the goods protected by Complainant’s mark did appear on the website at the disputed domain name, although this does not necessarily indicate Respondent’s bad faith. See WIPO Overview 2.0, paragraph 4.17 (“WIPO panels have declined to find Reverse Domain Name Hijacking in circumstances where […] the respondent’s website contains commercial links explicitly referable to the complainant for the purpose of generating revenue, providing a basis for the complainant to be aggrieved”.)
As seen above, Complainant contends that the disputed domain name as a whole has no meaning that can be immediately understood by the targeted trade circles, and that the disputed domain name is not descriptive either. We have just seen this statement is without ground due to the existence of ecolabels and the fact that Respondent is a manufacturer of tiles. However, on the website at the disputed domain name there weren’t any references to ecolabels at the time the Complaint was submitted.
All considered, Complainant’s statement suggests - in all likelihood in good faith - that it may have been unaware of the existence of ecolabel certificates and thus, and of the fact that “ecolabel” and “tiles” combined make a descriptive domain name, apt to support a claim of legitimate registration and use by a manufacturer of tiles awarded or deserving the ecolabel.
For these reasons, the Panel finds that the Complaint was not brought in bad faith or primarily to harass Respondent. 7. Decision
For the foregoing reasons, the Complaint is denied.
Roberto Bianchi
Sole Panelist
Date: December 18, 2012
1 The Panel notes that the disputed domain name currently does not resolve to an active website.
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