The Clorox Company v. Marble Solutiohs

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Clorox Company v. Marble Solutiohs a/k/a Adam Schaefer

Case No. D2001-0923

1. The Parties

The Complainant in this administrative proceeding is The Clorox Company, a

corporation duly organized and existing under the laws of the State of Delaware,

U.S.A and having a principal place of business located in Oakland, California,

U.S.A.

The Respondent is Marble Solutiohs, located at Duncan Sleigh Square, Marblehead,

Massachusetts 01945, U.S.A.

2. The Domain Name and Registrar

The domain name in dispute is as follows: <clorox.org>. The domain name

was registered with Network Solutions, Inc. (NSI) on August 25, 1998.

3. Procedural Background

On July 18, 2001, the WIPO Arbitration and Mediation Center received from Complainant

a complaint for decision in accordance with the Uniform Policy for Domain Name

Dispute Resolution, adopted by the Internet Corporation of Assigned Names and

Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform

Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999

("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (Supplemental Rules).

The Complaint was filed in compliance with the requirements of the Rules and

the Supplemental Rules, payment was properly made, and the three-member administrative

panel was properly constituted. Each of the members of the panel submitted the

required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on August 8, 2001.

Respondent filed a Response on August 29, 2001.

The decision of the Panel was due to WIPO on or before November 20, 2001.

4. Factual Background

Complainant Clorox makes and sells home cleaning and laundry products throughout

the world. Clorox and its predecessors have sold and distributed bleach under

the mark CLOROX since 1912. Complainant owns numerous U.S. trademark registrations

for the mark CLOROX (see Complaint, Exhibits 4-10), as well as registrations

in other countries, including Canada, China, and Venezuela. See Complaint, Exhibit

17. Complainant also owns the registration for the domain name <clorox.com>

As noted above, Respondent registered the disputed domain name <clorox.org>

on August 25, 1998. At that time, Respondent Adam Schaefer was 17 years

old and involved in his high school's LAN/Internet service, a student organization

that was designated by the school as "Marble Solutions" (mistyped on the registration

certificate as "Marble Solutiohs").

On December 15, 1998, Clorox's legal department sent Adam Schaefer a "cease

and desist" letter. A follow-up letter was sent on March 12, 1999. On June 23,

1999, Adam Schaefer's father, Dennis Schaefer, wrote to the CEO of Clorox Co.

explaining that, for many years, his son had used the nickname "clorox" in on-line

game rooms and in a succession of Internet URLs and that such sites had always

carried a disclaimer of any association with Clorox Co. The letter also expressed

anger over what Mr. Schaefer deemed Clorox's program of harassment and intimidation

of his son at his son's school. In the letter, Mr. Schaefer related a telephone

conversation with a Ms. Verdi, of Clorox, during which he explained that the

<clorox.org> domain name was not being used for commercial purposes. According

to Mr. Schaefer, Ms. Verdi then offered to buy the domain name, stating that

the "Clorox Foundation" wanted the option to use the name. As related in the

letter, Mr. Schaefer, after discussing the matter with his son, offered to let

Clorox purchase the name if it would stipulate that the name would only be used

for charitable purposes. The letter indicates that Ms. Verdi exploded in anger

over the charitable stipulation and shouted an offer of "500 bucks -- take it

or leave it!"

On July 16, 1999, Clorox's general counsel, Mr. Bewley, wrote Mr. Schaefer

indicating that, upon further investigation, it was the company's position that

his son's web site infringes and dilutes Clorox's CLOROX mark and that Clorox

did not harass his son at school. Mr. Bewley explained that the domain name

registration for <clorox.org> listed the school as the contact address

and that Clorox did not realize this until Federal Express reported it. Mr.

Bewley attached to his letter a copy of an ad found on the <clorox.org>

web site advertising for sale "luscious, tasty Clorox Liquid Bleach." See Complaint,

Exhibit 18.

5. Parties' Contentions

Complainant contends that the domain name <clorox.org> is identical to

or confusingly similar with the CLOROX mark and the trade names "Clorox" and

"The Clorox Company."

Complainant further argues that Respondent has no rights or legitimate interests

in the disputed domain name because Complainant's name and CLOROX mark is very

famous and Respondent's use of the mark constitutes dilution and infringement

under the Lanham Act and violates the terms of the Anticybersquatting Consumer

Protection Act, 15 U.S.C. 1125(d). Clorox also maintains that the

domain name in issue has no connection with Respondent or its business and that

the "Clorox" name has no other meaning or significance other than the name of

Complainant and its famous mark. Complainant further argues that Respondent

makes no use of the domain name in the bona fide offering of goods or services,

is not commonly known by the domain name, and is not making a legitimate noncommercial

or fair use of the domain name.

With respect to the issue of "bad faith" registration and use, Clorox argues

that "Respondent's only purpose in using this domain name was to trade upon

the fame of Complainant's name and mark to intentionally attempt to attract

for commercial gain, Internet users to its web site by creating a likelihood

of confusion with complaint's [sic] mark and name as the source, sponsorship,

affiliation or endorsement of its web site as the product or service of such

site." Clorox also appears to contend that Respondent registered the domain

name primarily for the purpose of selling it for consideration in excess of

its out-of-pocket costs directly related to the domain name.

In its Response, Respondent contends that <clorox.org> is not identical

or confusingly similar to the CLOROX mark. In support of this assertion, Respondent

points out that, during the three years he has had the name, no visitor to the

site has asked where to find the Clorox Co. and that the site carried a disclaimer

of any affiliation with Clorox Co. Respondent also maintains that the term "Clorox"

is not subject to protection because it has become generic for bleach.

The Response further indicates that Adam Schaefer has rights and legitimate

interests in respect of <clorox.org> in that he began using the nickname

"clorox" around 1991 in online activities and that he had friends all over the

U.S. who knew him by that name. At that time, according to the Response, the

term "clorox" evoked the image of acid-washed, stone-washed, and bleached out

clothes. Adam Schaefer, apparently, used the email address clorox@ix.netcom.com

around 1993 and the url http:\www\shorenet.com\clorox for several years in the

mid-1990's. The record includes an undated e-mail from a Ms. Diane Woods

to Dennis P. Schaefer in which Ms. Woods recounts that, in 1996, she inquired

as to why Adam Schaefer used Clorox as his email name. See Response, Attachment

3.

Respondent also argues that he did not register or use the domain name in bad

faith. According to the Response, "[t]he fact that the Clorox Company offered

to buy the name and that [in] subsequent conversation with Adam Schaefer and

Dennis Schaefer declined the terms does not prove for purposes of the UDRP that

my registration of the domain name was in order to sell it." Respondent further

maintains that he did not register the domain name to attract users to his site,

for commercial gain. The disputed site is purely noncommercial, Respondent contends.

Respondent seeks a determination that Clorox Co. is guilty of attempted reverse

domain name hijacking. In support, Respondent argues that, as a generic word

meaning bleach, the nickname "clorox" was his to register as a noncommercial

domain name and that Clorox Co. has engaged, for almost three years, in a pattern

of coercive and abusive behavior through: (1) claiming privileges it did not

possess at law; (2) harassing him at school; (3) accusing him of violating

federal civil and criminal laws; and (4) luring him into an offer to sell by

alleging that Clorox Co. had a charitable purpose for the site.

6 . Discussion and Findings

The Panel has carefully reviewed the evidence [1]

presented and determines that Complainant has not met all the requirements set

forth in para. 4(a) of the Policy.

As an initial matter, the Panel concludes that Clorox has established rights

in its CLOROX mark through its registrations in the U.S. and in other countries.

In view of these registrations, the Panel does not credit Respondent's contention

that the term "Clorox" has become generic for bleach.

It is also clear that the domain name <clorox.org> is identical or confusingly

similar to Clorox's CLOROX mark [2]. The addition

of the top-level designator "org" in the disputed domain name is of no legal

significance from the standpoint of the issue of confusing similarity.

The Panel further concludes that the evidence does not support a determination

that Respondent has legitimate rights or interests in the <clorox.org>

domain name. While Adam Schaefer argued that he is known by the nickname "clorox,"

the Panel finds the evidence, both from a quantitative and qualitative standpoint,

insufficient to conclude that he was "commonly" known by such nickname. Respondent,

for example, did not present any evidence of his allegedly widespread use of

his nickname on game networks. While Respondent, in an effort to establish use

of "clorox" as a nickname, did submit an email from Diane Woods, the Panel determines

that such evidence is not sufficient to support a finding that Adam Schaefer

is commonly known by the nickname "clorox."

The Panel concludes, however, that Complainant has failed to establish that

the domain name was registered and is being used in "bad faith." The Panel notes

that the UDRP is designed to prevent clear cases of cybersquatting and is not

designed to address all types of claims concerning the use of another's mark

on the internet, including claims for trademark infringement, dilution, or violations

of the Anticybersquatting Consumer Protection Act.

In the Panel's view, the evidence does not support a determination that Respondent

offered to sell the domain name to Complainant, within the meaning of the applicable

Policy. The evidence indicates that any offer to sell was prompted by Clorox's

initial offer to purchase. Under such circumstances, the Panel concludes that

the domain name was not registered "primarily" for the purpose of selling the

domain name.

While Complainant argued that Respondent, by using the domain name, intentionally

attempted to attract, for commercial gain, internet users to its web site, the

Panel finds the evidence does not support a determination that Respondent' site

was motivated by commercial gain [3]. The

Panel finds that insufficient evidence was presented to prove there was anything

other than personal, non-commercial use."[4]

Finally, the Panel concludes that Clorox Co. has not engaged in reverse domain

name hijacking. Under the relevant Rules, "reverse domain name hijacking" means

using the Policy in bad faith to attempt to deprive a registered domain name

holder of a domain name. Clorox's actions, in this case, do not rise to the

level of "bad faith." As the owner of the registered, if not famous

[5], CLOROX mark, Clorox Co. was entitled to take whatever

reasonable steps it deemed necessary to protect its trademark rights. This is

not a case where there was clear evidence of legitimate rights or interests

or lack of bad faith on the part of Respondent. Clorox' actions in contacting

Adam Schaefer at his school were motivated not by an attempt to harass and intimate,

but, rather, by an attempt to establish contact using the contact address provided

in the domain name registration form for <clorox.org>.

7. Decision

In view of the above, the Panel denies Complainant's request for transfer to

it of the domain name <clorox.org>.

Jeffrey M. Samuels

Presiding Panelist

Barbara A. Solomon

Panelist

Diane Cabell

Panelist

Dated: November 20, 2001

Footnotes:

1. The Panel notes that much of Clorox's

Complaint focuses on the elements necessary to state a claim under the U.S.

dilution statute, 15 U.S.C. 1125(c), and the U.S. Anticybersquatting Consumer

Protection Act, 15 U.S.C. 1125(d). Suffice it to say, that the instant proceeding

is being decided pursuant solely to the Uniform Domain Name Dispute Resolution

Policy. Nothing in our decision should be read to suggest that Clorox does not

necessarily have a claim for trademark infringement, unfair competition, dilution

or under the Anticybersquatting Consumer Protection Act.

2. To the extent Respondent may be arguing

that the mark and domain name are not confusingly similar because no likelihood

of confusion exists, the Panel emphasizes that likelihood of confusion is not

the standard upon which a determination of confusing similarity is to be made

under the UDRP.

3. While the evidence includes a copy of

an alleged phony ad that appeared on Respondent's web site consisting of an

image of "Luscious, Tasty Clorox Liquid Bleach for 99 cents," the Panel concludes

that such use constitutes a non-actionable parody under the Policy.

4. The Panel notes that Respondent's clorox.org

web site does not appear to be online.

5. This in no way implies that the Panel

concludes that the mark CLOROX is "famous" for purposes of establishing a claim

under the U.S. dilution statute.

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