The Complainant is Colgate-Palmolive Company, New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C.
The Respondent is Andrew Hendry, Sugarland, Texas, United States of America and Whois Privacy Protection Service, Inc., c/o Whois Agent, Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming 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 the Respondent of the Complaint and the proceedings commenced on April 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2013. The Respondent did not submit a response. Accordingly, the Center notified the Complainant of the Respondent’s default on May 28, 2013.
The Center appointed Marylee Jenkins as the sole panelist in this matter on June 6, 2013. 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
Based on the review of the uncontested evidence submitted with the Complaint, the Complainant is the owner of the following U.S. Trademark Registrations for the mark COLGATE: Registration Nos. 60,595 registered on February 12, 1907; 227,647 registered on May 10, 1927; 322,167 registered on February 26, 1935; 427,475 registered on February 11, 1947; 1,290,656 registered on August 21, 1984; and, 1,452,806 registered on August 18, 1987. The Complainant is also the owner of the following U.S. Trademark Registrations for the mark PALMOLIVE: Reg. Nos. 113,591 registered on October 24, 1916; 210,594 registered on March 15, 1926; 317,320 registered on September 18, 1934; 732,251 registered on May 29, 1962; and, 861,145 registered on November 26, 1968. The Complainant also is the owner of a number of trademark registrations outside of the United States for marks including COLGATE, PALMOLIVE, and/or COLGATE PALMOLIVE.
The Domain Name was registered on February 20, 2013 and is set to expire on February 20, 2014. The Domain Name is registered in the name of the Respondent, Andrew Hendry. There is currently no accessible website at the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant bases its Complaint on its ownership of the marks COLGATE, PALMOLIVE, and COLGATE PALMOLIVE for which it has trademark registrations around the world for use of the marks in connection with goods including toothpaste, toilet soap, tooth brushes, dental cream, soap, shaving cream, shampoo, and liquid detergent for washing dishes. The Complaint specifically relies on trademark registrations in the United States, as cited above. The Complainant also asserts ownership of the domain name and operation of the website at “www.”. The Complainant further claims long-standing use around the world of COLGATE, PALMOLIVE, and COLGATE PALMOLIVE as trademarks and trade names and that these marks are exclusively associated with the Complainant.
The Complainant contends that the Domain Name is a confusingly similar combination of the Complainant’s well known COLGATE mark with a misspelled version of its PALMOLIVE mark. Complainant further contends that it never authorized or permitted the Respondent to register the Domain Name incorporating the Complainant’s COLGATE, PALMOLIVE, and COLGATE PALMOLIVE trademarks and trade names and that there is no relationship between the Complainant and the Respondent that would give rise to such authorization or permission.
The Complainant asserts that the Respondent has no rights or legitimate interest in the Domain Name since it registered the Domain Name on February 20, 2013, long after the Complainant established rights as well as its extensive use of the trademarks COLGATE, PALMOLIVE, and COLGATE PAMOLIVE for many years (i.e., as early as 1858 for COLGATE and 1898 for PALMOLIVE and 1953 for COLGATE PALMOLIVE).
The Complainant alleges that the Respondent’s use of the Domain Name trades on the fame of the Complainant’s well known COLGATE, PALMOLIVE, and COLGATE PALMOLIVE marks and that the use of the Domain Name by the Respondent is in connection with a fake job listing phishing scam. Particularly, the Complainant alleges that the Respondent used the Domain Name to post a job listing on the Manhattan “CraigsL” web page and then corresponded with potential job applicants by email from an email server associated with the Domain Name in an attempt to fraudulently obtain personal contacts and other details from unsuspecting job applicants. In view of this, the Complainant asserts that the Respondent’s use of the Domain Name does not demonstrate either a bona fide offering of goods or services or a legitimate interest in the Domain Name.
The Complainant further asserts that the Respondent registered and is using the Domain Name in bad faith. The Complainant alleges that the Respondent is improperly commercially exploiting the Domain Name and the Complainant’s marks in the Domain Name in order to collect contact information from unsuspecting job applicants as part of a phishing scam and otherwise profiting from consumer confusion from the Respondent’s misappropriation of the Complainant’s COLGATE, PALMOLIVE and COLGATE PALMOLIVE marks. The Complainant also contends that, prior to the Domain Name being placed on hold by the Registrar, the Domain Name was not and is not currently associated with an active website and that this inactivity of the Respondent also constitutes bad faith use of the Domain Name. B. Respondent
The Respondent did not file a reply with respect to the proceeding. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider 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 domain name holder 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.
Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the marks COLGATE, PALMOLIVE, and COLGATE PALMOLIVE.
A review of the second-level domain “colgatepalmsolive” of the Domain Name shows that it fully incorporates the Complainant’s marks COLGATE, PALMOLIVE and COLGATE PALMOLIVE as well as its trade name and misspells the mark PALMOLIVE by adding the letter “s”. The Panel does not find that such use of the Complainant’s marks and trade name in the Domain Name in any way prevents a finding of confusing similarity. Rather in view of the Complainant’s longstanding rights in its marks and trade name, the combination and misspelling of such marks and trade name will invariably result in an association of the Domain Name with the Complainant. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s marks and trade name. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
No evidence has been presented that the Complainant’s marks were ever assigned, granted, licensed, sold, or transferred to the Respondent or that the Respondent was ever in any way authorized to register or use the mark or the trade name in any manner or form. Nor has any evidence been presented that might give rise to any right to or legitimate interest of the Respondent in the Domain Name. Rather based upon the uncontested and extensive evidence submitted, the Complainant clearly had and has well established rights in and to the COLGATE, PALMOLIVE and COLGATE PALMOLIVE marks and trade name, including trademark registrations in the United States and throughout the world, at the time of the Respondent’s registration of the Domain Name.
It is further confirmed from the submitted evidence that the Respondent had actual knowledge of the Complainant’s marks and trade name based its use of this Domain Name. Particularly, the evidence reveals the specific intent of the Respondent to trade on the reputation and fame of the Complainant’s COLGATE, PALMOLIVE, and COLGATE PALMOLIVE marks by using the Domain Name in a fraudulent manner via a fake job listing and email scam. The Panel accordingly finds that the Respondent has no rights or legitimate interests in or to the Domain Name in any fashion and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
The Panel finds that the Respondent had full knowledge of the Complainant’s COLGATE, PALMOLIVE, and COLGATE PALMOLIVE trademarks and trade name at the time of the registration of the Domain Name. The Panel further finds that the uncontested evidence supports and confirms that the Respondent attempted to be passed off as the Complainant by using the Complainant’s COLGATE, PALMOLIVE, and COLGATE PALMOLIVE marks and trade name in correspondence with potential job applicants via fraudulent emails transmitted through mail servers associated with the Domain Name. Moreover, the registration of the Domain Name by the Respondent using the name of “Andrew Hendry” (which appears to be the name of the Complainant’s Chief Legal Officer and Secretary) is not only evidence that the Respondent had knowledge of the Complainant’s marks and trade name but that the Respondent had actual knowledge of the Complainant’s corporate organization and structure. Based upon the confusing similarity of the Domain Name to the Complainant’s marks and trade name, no possible legitimate interest or right in the Domain Name by the Respondent, and the Respondent’s apparent and actual knowledge of the Complainant’s marks and trade name at the time of the registration of the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Complainant has also submitted undisputed and extensive evidence that the Respondent was using the Domain Name and associated email servers to post a job listing for an administrative assistant on the Manhattan “Craigsl” web page. The evidence further shows that the Respondent replied to potential job applicants using the email address [andrew-hendry@], which incorporated the name of the Complainant’s Chief Legal Officer and Secretary from an email server associated with the Domain Name and used the Complainant’s marks and trade name in its email correspondence as part of its phishing scam. The Panel therefore finds that the Respondent was clearly using the Domain Name in an attempt to pass itself off as the Complainant in order to fraudulently collect contact information from potential job applicants for financial gain. When considering such findings and the uncontested evidence in their entirety, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Date: June 20, 2013
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