Colgate-Palmolive Company v Premium Domain [2005] DRS 2415 (25 April 2005)

Nominet UK Dispute Resolution Service

DRS 2415

Colgate-Palmolive Company -v- Premium Domain

Decision of Independent Expert

Parties:

Complainant’s Details

Complainant:		Colgate-Palmolive Company
Country:		USA

Respondent’s Details

Respondent:		Premium Domain
Country:		Germany

Domain Name:

colgate-palmolive.co.uk ("the Domain Name")

1.	Procedural Background:

The complaint was lodged with Nominet on 25 February 2005; hardcopies were received on 28 February 2005.  Nominet validated the complaint and notified the Respondent by letter dated 3 March 2005.  An electronic copy of the letter was attached to an email and sent by Nominet to the administrative contact email address and to postmaster@colgate-palmolive.co.uk on the same date.  The letter to the Respondent advised it that it had 15 working days to respond to the Complaint, that is, until 29 March 2005.  On 1 April 2005 Nominet noted that it had not received a Response and duly invited the Complainant to pay the appropriate fees by 15 April 2005 if it wished Nominet to refer the case to an independent expert for a decision.  The Complainant duly paid the fees on 4 April 2005 for a decision of an expert pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  

On 7 April 2005, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed on 14 April 2005 that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 12 April 2005.

2.	Outstanding Formal/Procedural Issues:

The Respondent has failed to submit a Response to Nominet in time in accordance with paragraph 5(a) of the Procedure.

Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15(c) of the Procedure provides that " If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration.  This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  

3.	The Facts:

1.	The Complainant is a Delaware USA Corporation operating worldwide in the field of manufacture and supply of products for oral care, personal care, household care, fabric care and pet nutrition.  The Complainant's business has its origins in the USA in the early years of the 19th century and its combined name “Colgate-Palmolive” arose in 1928 through a series of company mergers. 
2.	The Complainant's business comprises over 200 subsidiaries worldwide, including manufacturing and related commercial facilities in UK. It has approximately 39,000 employees worldwide, is listed on the New York Stock Exchange and had annual revenues for the last 3 reported financial years of US$9.1 billion, US$9.3 billion and US$9.9 billion, respectively.
3.	The Complainant is the registered proprietor of a large number of trade mark registrations worldwide of or comprising the words COLGATE-PALMOLIVE, including UK trade mark registrations No. 890326 COLGATE-PALMOLIVE, No. 890327 COLGATE-PALMOLIVE and No. 21291256 COLGATE-PALMOLIVE.  The first two of these trade marks date from 1966 and the last dates from 1986.
4.	The Complainant controls a number of other companies around the world which include "Colgate-Palmolive" as the distinctive part of their company names, notably Colgate-Palmolive (UK) Limited (UK Company No. 00178909), Colgate-Palmolive Holdings (UK) Limited (UK Company No. 04341834), Colgate-Palmolive Manufacturing (UK) Limited (UK Company No. 05206297) and Colgate-Palmolive Mennen Limited (UK Company No. 02804510). These companies are wholly owned subsidiaries of the Complainant.
5.	The Respondent registered the Domain Name on 21 August 2004.
6.	On or before 2 November 2004 the Complainant's Board of Directors received an email from a sender named Premium Domains <premiumdomains@gmail.com> (hereafter referred to as "Premium") which stated "In case you are interested to buy the domain name www.colgate-palmolive.co.uk please click on the domain name or enter it in your browser.   The price is 10000 Euros (negotiable).  In case you are not interested, please ignore this mail."
7.	On 2 November 2004 the Complainant's Associate General Counsel rejected Premium's offer of sale and requested a transfer of the Domain Name in return for out of pocket expenses of registration.
8.	Premium replied to the Complainant's Associate General Counsel by email that they were not the registrant of the Domain Name but were "marketing affiliates of Sedo.com".  Premium suggested that the Complainant make contact with the Respondent.
9.	On 4 November 2004 the Complainant's Trademark & Copyright Attorney sent an email to Premium advising that Premium appeared from the WHOIS to be the registrant of the Domain Name and again requesting transfer.
10.	At a later date which is not specified in the Complainant's email printouts Premium (through an individual named A. Arurkar) replied to the Complainant's Trademark & Copyright Attorney stating that Premium was not the registrant of the Domain Name and suggesting that the Complainant made for an informal approach to acquire the Domain Name from the registrant, failing which that the Complainant issue legal notices or a domain name complaint.
11.	Following A. Arurkar's email reply, the Complainant's Trademark & Copyright Attorney then issued an email to the Respondent's administrative contact email address which reported the terms of Premium's email correspondence with the Complainant and requested transfer of the Domain Name within five days.  The Complainant received no reply from the Respondent.
12.	The Complainant's screenshot of the website associated with the Domain Name dated 1 February 2005 shows that the home page is provided free as part of a domain parking service.  The heading states "colgate-palmolive.co.uk…Colgate palmolive – we recommend these sponsored links".  This is followed by a series of hyperlinks some of which relate to the retail of the Complainant's products and others of which seem irrelevant, such as one advertising a gaming website.
13.	Nominet's screenshot of the website associated with the Domain Name dated 3 March 2005 shows the same heading but with different hyperlinks some of which relate to oral hygiene products of the Complainant and others, online chemist/pharmacies and a search link directed at the auction site eBay.com.
14.	During the period allocated for the Expert to consider and issue his decision, the website associated with the Domain Name changed again, at some point prior to 20 April 2005.  The heading changed to: 'For Colgate palmolive try these sponsored links:'.   A disclaimer had been inserted at the bottom of the page in faint grey text (the six-digit hexadecimal code of the colour was BCBCBC): 'Disclaimer: Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation.'

4.	The Parties’ Contentions:

Complainant:

1.	The trade mark and corporate name COLGATE-PALMOLIVE is unique to the Complainant and its related and controlled companies and is not significant to the oral care, personal care, household care, fabric care and pet nutrition product activities of the Complainant (and its related and controlled companies) other than as a company name and trade mark. COLGATE-PALMOLIVE is accordingly properly and uniquely associated with the Complainant and its related and controlled companies. 

2.	The Complainant is aware of no legitimate 3rd party use of COLGATE-PALMOLIVE in the UK or elsewhere around the world, other than under its control or with its permission. The Respondent is not related to the Complainant, nor to its related or controlled companies, and does not have the permission of the Complainant or any of its related or controlled companies to use COLGATE-PALMOLIVE or variations thereof. As the Respondent is not related to the Complainant, nor any of its related or controlled companies, there is no apparent reason or justification for its adoption of the Domain Name. 

3.	The Complainant has rights by registration and common law in the name and trade mark COLGATE-PALMOLIVE in the United Kingdom (and equivalent rights elsewhere including in the United States of America), and as such has a legitimate basis to wish to register the Domain Name. There are no trade mark registrations or company name registrations anywhere of, or containing, Colgate-Palmolive, other than those owned by the Complainant  and its related and controlled companies. Searches on the Internet and on e.g. the UK Companies and Trade Mark registers would have made that apparent to the Respondent at the time of registration of the Domain Name. 

4.	The Respondent's use of the Domain Name to display 'sponsored links' indicates that it is making financial gain from this registration. The text stating "Colgate palmolive – we recommend these sponsored links" is made without the authorisation or agreement of the Complainant, or any of its related or controlled companies, and falsely associates the Complainant with activities such as gambling and finance. 

5.	Neither Premium nor the other parties mentioned in the email correspondence have any relationship to the Complainant.  They have no apparent legitimate basis for registering the Domain Name. It is notable though from the email correspondence that an entity with “Premiumdomain” in its email address has tried to get the Complainant to purchase the Domain Name, owned by the Respondent, for a high sum of money exceeding by far the cost of registering such a domain name. 

6.	It is evident that such use of the Domain Name registration by the Respondent shows that: (i) the disputed registration is a blocking registration; or (ii) the Domain Name has been registered for the purposes of selling, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the out-of-pocket expenses normally associated with acquiring or registering a domain name; or (iii) the Domain Name has been registered for the purpose of unfairly disrupting the business of the Complainant; or (iv) the Domain Name has intentionally been used by the Respondent in an attempt to attract for financial gain, Internet users to the registrant’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 Respondent's website or of a product or service on the Respondent's website. 

7.	The absence of any relationship between the Respondent and the Complainant, or any of its related or controlled companies, illustrates that there can be no legitimate or fair use of the domain name by the Respondent without confusing or misleading users or being an abuse of the Complainant's trade mark and common law rights. The confusion and misleading of consumers is likely to be amplified by the Respondent's use of statements falsely implying an endorsement, affiliation or association with the Complainant, or any of its related or controlled companies. 

8.	The Domain Name is a natural guess for a UK or other Internet user looking for the web site of the Complainant's UK operation. There is no other plausible reason to look for COLGATE-PALMOLIVE in an Internet browser than to locate web activities of the Complainant, and the ownership of the Domain Name by the Respondent may accordingly cause damage to the Complainant and disrupts their business. 

9.	On the basis of ownership by the Complainant of trade mark rights by registration and at common-law to COLGATE-PALMOLIVE, supported by ownership of numerous domain name registrations and registered companies, including "COLGATE-PALMOLIVE" or variations thereof, and in light of the foregoing reasons, the Domain Name is an abusive registration in that: (i) it was registered in a manner which, at the time when the registration took place, took unfair advantage of and was unfairly detrimental to the rights of the Complainant, and/or (ii) use of the Domain Name has taken, or will take, unfair advantage of, and be unfairly detrimental to, the rights and commercial interests of the Complainant. 

Respondent:

The Respondent has not responded.

5.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy (Version 2) the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

Paragraph 1 of the Policy provides that Rights "includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or term is identical or similar to the Domain Name.

Complainant's rights in the mark 'COLGATE-PALMOLIVE'

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  The Complainant asserts that it is the proprietor of more than one registered trade mark in the UK for the word 'COLGATE-PALMOLIVE', the earliest being registered in 1966, and has submitted evidence of this in the form of print outs from the UK Patent Office website.  In these circumstances, the Expert finds that the Complainant has Rights in the name or mark 'COLGATE-PALMOLIVE'.

Are the Complainant's rights in the mark 'COLGATE-PALMOLIVE' wholly descriptive of the Complainant's business?

The Complainant asserts that its business is the manufacture and supply of products for oral care, personal care, household care, fabric care and pet nutrition.  The Expert finds that the mark COLGATE-PALMOLIVE is not descriptive in whole or in part of such a business.

Is the mark in which the Complainant asserts Rights identical or similar to the Domain Name?

The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic.  This leaves a comparison between the mark 'COLGATE-PALMOLIVE' and the third level part of the Domain Name 'colgate-palmolive'.  On this comparison, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

	"a Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights."

The Complainant's submissions focus predominantly on the use of the Domain Name, together with the Respondent's possible motive in effecting the registration.  The Complainant asserts that (i) the disputed registration is a blocking registration; or (ii) the Domain Name has been registered for the purposes of selling, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the out-of-pocket expenses normally associated with acquiring or registering a domain name; or (iii) the Domain Name has been registered for the purpose of unfairly disrupting the business of the Complainant; or (iv) the Domain Name has intentionally been used by the Respondent in an attempt to attract for financial gain, Internet users to the registrant'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 Respondent's website or of a product or service on the Respondent's website.

With regard to blocking and unfair disruption, the Expert does not believe that there is any evidence to show that the Respondent registered the Domain Name primarily to block the Complainant from doing so or primarily to disrupt the business of the Complainant within the meaning of paragraph 3(a)(i)(B) and 3(a)(i)(C) of the non-exhaustive list of factors in the Policy which may be evidence that the Domain Name is an Abusive Registration.  It is clear, though, that the apparent endorsement of either gaming websites or of oral care products manufactured by third parties, could have a disruptive effect on the Complainant's business.  The website to which the Domain Name is pointed carries a range of so-called 'sponsored links'.  The Expert believes that the close connection between these links, over which the Complainant has no control whatsoever, with the prominent use of the Complainant's corporate name has the clear potential to cause difficulties for the Complainant and may falsely associate the Complainant with activities in which it does not engage.  The Expert accepts the Complainant's assertion that those who look for COLGATE-PALMOLIVE online are likely to be seeking to locate the web activities of the Complainant and that the presence of these links which the Complainant does not endorse might well cause damage to the Complainant's business or reputation.  The Expert is satisfied that this use is unfairly detrimental to the Complainant's Rights.

It is necessary then to give consideration to the change of wording on the website associated with the Domain Name as noted in paragraph 14 of the Facts section of this decision.  Both the removal of the express recommendation and the addition of the new disclaimer may go some way to reducing the potential for further disruption and/or unfair detriment.  However, a disclaimer at the foot of a website in faint grey text could hardly be described as prominent, and even if such a disclaimer were made more obvious to those browsing the website, it is unlikely, in the Expert's view, to dispel entirely the suggestion that there is some kind of connection with or endorsement by the Complainant, given the fact that the Domain Name itself constitutes the Complainant's corporate name and trade mark without any addition or qualification.  Furthermore, as this change was made following intimation to the Respondent of the Complainant's objections to the original use, the Expert believes that it should be accorded less weight in the overall consideration of the use to which the Domain Name has been put from registration to date.

In the Complainant's submission on sale, it candidly admits that it does not know whether Premium (the party who made contact with the Complainant to offer the Domain Name for sale) is the Respondent or not.  The Complainant points out, however, that the Respondent is named 'Premium Domain' on the WHOIS data and that this matches the first part of the email address of Premium.  Premium indicated in correspondence with the Complainant that it was a 'marketing agent' in respect of the Domain Name.  As such, the Expert believes that it is reasonable to infer, as a minimum, that Premium were acting upon the Respondent's instructions in making the offer of sale.  Had Premium made the approach without the benefit of, or contrary to, the Respondent's instructions, the Respondent might have sought the opportunity to submit a response in this DRS case addressing the issue.  

The offer of sale made by Premium sought 10,000 Euros for the Domain Name.  The Complainant states that this sum is likely to be far in excess of the Respondent's out of pocket costs directly associated with registration. It is worth noting that paragraph 3(a)(i)(A) of the Policy in fact calls for the Respondent's 'documented' out of pocket costs. It is not clear how a Complainant should address this point, but it would have been helpful to the Expert if the Complainant had indicated the likely costs, perhaps by basing these upon the current prices charged by the Respondent's registrar.  Nevertheless, it is abundantly clear to the Expert that 10,000 Euros (in the case of a Domain Name registered in August 2004) exceeds any reasonable estimate of out of pocket costs concerned in its registration.  The Expert also accepts the Complainant's submission that the name COLGATE-PALMOLIVE is the Complainant's corporate name and is properly and uniquely associated with the Complainant and its related and controlled companies.  In these circumstances, the Expert cannot conceive of any primary purpose which the Respondent might have had in registering the Domain Name other than to sell it to the Complainant in the manner anticipated by paragraph 3(a)(i)(A) of the Policy. This view is fortified by the Respondent's use of the Domain Name post-registration whereby the Respondent (1) employed the services of a domain name brokerage service and (2) made, or was on balance of probabilities concerned in the making of an offer of sale to the Complainant.

In terms of the above analysis, the Expert is satisfied that the Domain Name is an Abusive Registration.  For completeness, the Expert notes that the Complainant's submission in item (iv) appears to be derived not from the wording of the Policy but from ICANN's Uniform Domain Name Dispute Resolution Policy which relates to certain top level domain names not including .uk and as such is not applicable here.  While the submission is still competent and capable of consideration by the Expert  (given that the examples of Abusive Registration in the Policy are expressed to be non-exhaustive) the Expert believes it is unnecessary to deal with it since a finding of Abusive 
Registration has already been made on other grounds more directly applicable to the Policy.

6.	Decision:

The Expert finds that, on the balance of probabilities, the Complainant has Rights in a name or mark which is identical to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert therefore directs that the Domain Name be transferred to the Complainant.

______________________	25 April, 2005
Andrew D S Lothian 		Date