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September 4, 2010 / Nate Harris

The Clorox Company v. Domains for sale

Summary of The Clorox Company v. Domains for sale, dba Netegg
(WIPO Case No. D2010-0831)
Filed May 25, 2010; Decided August 13, 2010 (Panelists: Christopher S. Gibson, Sandra J. Franklin, and Diane Cabell)

Domain Names: <cloro.com>

cloro.com

cloro.com

The Parties

Complainant the Clorox Company has made and sold bleach and cleaning products under the mark CLOROX since 1912. Since 1994, it has used the domain name <clorox.com> to advertise its products.

Respondent Domains for sale d/b/a Netegg (“Netegg”) registered the disputed domain name in 2000. Netegg has advertised the disputed domain as “your gateway to sites on the internet for clorox cleaning products!” and “your destination for Clorox Cleaning Products.” The site, the content of which has always been in English, also advertised products from Clorox’s competitors. Until Clorox contacted Netegg prior to filing this complaint, the title of the home page was “Cloro.com – Clorox cleaning products Resources and Information.” At times, the disputed domain has also pointed to pornographic sites. In the past, Netegg has registered other domain names that differ by one letter from well-known marks including Bug Bunny, Hot Mail, McDonald’s, Walt Disney, and Wendy’s.

Procedural Issue

Clorox attempted to file several supplemental filings, to which Netegg objected. The Panel noted that it had discretion to consider the supplemental filings, but noted that there were “no special circumstances in this case that justify doing so.”

Identical or Confusingly Similar

The Panel finds, and Netegg does not dispute, that the CLOROX mark is “long-established and widely well-known.”

Clorox argues that this is a case of typosquatting, as the disputed domain name is merely an “x” short of the CLOROX mark. Netegg, on the other hand, claims that it has registered hundreds of generic Spanish-language words as domain names, including “cloro”, the Spanish word for chlorine. “Cloro” is used in Spanish and Portuguese speaking countries to refer generally to cleaning products. Thus, the omission of the “x” so significantly transforms the CLOROX mark such that it no longer gives the same commercial impression.

The Panel agrees that this presents a closer case than some more blatant typosquatting cases, such as those involving domain names incorporating “edmundss” and “redbul”. Noting that the threshold for confusing similarity is a low one, a majority of the Panel finds the disputed domain name confusingly similar.

Rights or Legitimate Interests

“In all, the Domain Name has pointed to Respondent’s own website, third party adult content, mortgage lenders, chlorine products, the owner’s personal blog and an English language parked page displaying random links such as ‘Kamasutra positions’ and ‘Order pizza.’ [Sounds like quite a Saturday night.] Given this peripatetic history, the Panel is of the opinion that Respondent’s interest is not bona fide, but simply an opportunistic attempt to mislead consumers.” Accordingly, Netegg is unable to demonstrate rights or legitimate interests in the mark.

Bad Faith

The Panel finds that the incarnations of the site referring to Clorox products are undisputed evidence of bad faith use.

However, a majority of the Panel finds that there is no evidence of bad faith registration. They accept that Netegg had indeed pursued a strategy of registering Spanish-language words as domains, and so were unable to conclude that the disputed domain name itself was registered in bad faith. A majority of the Panel concludes:

Businesses are entitled to register domain names with generic meaning and value as an investment and decide what to do with them later. They may use them for any non-infringing use, or sell them, as they see fit. If a registrant later undertakes an infringing use, trademark holders have other recourse. They are not, however, entitled to the remedy provided by the UDRP, a streamlined process designed to thwart those who register domain names with the specific intent of benefitting from the use of another’s trademark. The word “cloro” is not Complainant’s trademark.

Thus, Clorox failed to prove that the disputed domain name was registered in bad faith.

Dissenting Opinion

Panelist Gibson dissents, writing to state his belief that the domain was registered in bad faith. In his view, this is a transparent case of typosquatting. As Panelist Gibson points out, the content on the website pointed to by the disputed domain name has always been in English. Netegg never used the domain name for a Spanish language website having anything to do with chlorine. Thus, “[t]his Panelist is inclined to view Respondent’s references to the Spanish-language meaning for ‘cloro’ as an after-the-fact justification.” Further, the fame the of the CLOROX mark is such that it is “hard to conceive” that Netegg was unaware of the mark, and the disputed domain’s similarity to it, at the time of registration.

Panelist Gibson also argues that Netegg registered several other obviously-typosquatted domain names (including “waltdisnet”, “bugsbuny”, and “mcdonals”) at around the same time as the disputed domain name, yet offers no valid explanation for doing so. In fact, a previous panel has ordered the transfer of a typosquatted domain name (“cablemagico.com”) owned by Netegg.

Thus, Mr. Gibson would find that the domain was both registered and used in bad faith.


Commentary

I’d have to say the dissent had the better part of the argument here. I have to give Netegg credit for the Spanish language argument, though, that’s a pretty clever way of weaseling your way out of a finding of typosquatting. [FYI: The Spanish word for weasel is comadreja.]

Epilogue

9/3/2010: cloro.com is still a click-through page, with references and links to chlorine as well as non-cleaning-related goods and services. However, the site steers clear of making any reference to clorox.com. Eso es una buena idea.

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