Procter & Gamble guilty of Reverse Domain Name Hijacking as Marchex’s Swash.com is saved in UDRP

A UDRP complaint for the domain name Swash.com, that belongs to Marchex was denied by a 3 member panel at the World Intellectual Property Organization (WIPO). The Panel also made a finding of reverse domain name hijacking (RDNH) against the Complainant.

Procter & Gamble lied to the Panel and tried to cheat it’s way into stealing the domain name but the company was outed by the Complainant and ultimately the 3 member Panel.

The Panel (by a majority) concluded that the Complainant must have known that, once the relevant facts of this case were uncovered, a UDRP panel could not possibly find that the disputed domain name was registered in bad faith. To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner.

The entire Panel found it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.

The Panel found that the Complainant abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also found the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.

Complainant, The Procter and Gamble Company, filed a complaint for the domain Swash.com owned by Marchex Sales, Inc., represented by John Berryhill, Pennsylvania, USA.

The Center appointed Dennis A. Foster, Andrew F. Christie and Tony Willoughby as panelists in this matter on January 10, 2013.

The Complainant is a United States of America (“USA”) company that manufactures and sells many consumer products, including household cleaning and washing products. One brand under which the Complainant has produced such goods is the dictionary word “Swash”, and the Complainant has registered its SWASH trademark with, among other authorities, the United States Patent and Trademark Office (“USPTO”) (Registration No. 3568231; registered January 27, 2009) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Registration No. 6492177; registered November 6, 2008). Indirectly, through a subsidiary or associated company, the Complainant also appears to have an interest in a WIPO international registration of the mark under the Madrid System, which was acquired in 2008. The original owner of that registration, the German company Henkel, registered the mark in 1993.

The Respondent is the owner of the disputed domain name <swash.com>. The disputed domain was originally registered by Ultimate Search Inc. in March of 2000. Respondent has owned the Swash.com domain name since November 2004 after Respondent acquired it in an asset purchase. Prior to initiation of these proceedings, the disputed domain name resolved to a website that provided links to third-party websites that offered cleaning/washing products. Presently, the name hosts a website that provides links to third-party websites of a more general nature.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

By supplying the Panel with evidence (Complaint, Annex C) of its SWASH trademark registrations with the USPTO and OHIM, the Complainant has convinced the Panel that it has rights in that mark that satisfy the requirements of UDRP paragraph 4(a)(i).

Upon simple visual inspection, the Panel determines that the disputed domain name, <swash.com>, is identical to the Complainant’s SWASH trademark. The inclusion of the generic top-level domain, “.com”, in the disputed domain name is deemed by the Panel to be inconsequential in making such a determination.

As a result, the Panel finds that the Complainant has satisfied the first element of the Policy.

However, the Panel notes that it can only determine that the Complainant has trademark rights by registration beginning with the European Union OHIM registration in 2008 and in the USA in 2009. Based on the information the Complainant has provided, the Panel is unable to determine with any confidence the scope and extent of the 1993 WIPO registration. And in any case, according to the Complainant’s own Supplemental Filing, the 1993 WIPO filing was never valid in the USA, the domicile of the Complainant and the Respondent, and the mutual jurisdiction for these proceedings.

B. Rights or Legitimate Interests

In this case, the Respondent asserts that it is in the business of registering domain names composed of common words or short phrases for use in websites that provide keyword advertising relating to the meaning of those words or phrases. Thus, as “swash” is a dictionary word that alludes to “washing in turbulent water”, and the website to which the disputed domain name initially resolved contained advertising links to third-party produced washing products, the Respondent possesses a legitimate interest in that name. The Respondent argues that it is irrelevant that those washing products might, as alleged by the Complainant, compete directly with products sold by the Complainant under the SWASH trademark because the Respondent began using the “swash” name in the USA before the Complainant.

However, the Panel is not entirely convinced by the Respondent’s contentions and actions that it has used the disputed domain name for the name’s dictionary meaning. The Complainant contends and provides evidence (Complaint, Annex F), which the Respondent does not contradict, that recently the website found at the disputed domain name has been changed to incorporate third-party links of a more general nature than those related solely to washing products. The Complainant asserts that this change resulted from its transfer demands directed at the Respondent, and reflects the illegitimacy of the Respondent’s position. The Respondent contends that the change occurred as a natural “drift” occasioned by the Respondent’s reliance on an automated link selection system. Both explanations undercut the Respondent’s claim of rights or legitimate interests in the disputed domain name. The Complainant’s explanation implies that the Respondent sought to mitigate an admitted infringement of the Complainant’s trademark; the Respondent’s explanation implies that the Respondent is not intent upon using dictionary-word domain names for their plain meaning because the Respondent is willing to rely on an automated service which it cannot control. In short, the Panel wonders how the Respondent can maintain that it has used or intends to use the disputed domain name for its dictionary meaning when the Respondent concedes that it does not manage meaningfully the content placed on the website at the disputed domain name.

The Panel believes that the Respondent’s citation on its behalf of the prior UDRP case, Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. 567039, is misplaced. In that case, the panel found that the respondent used the disputed domain name, <teensmart.com>, for paid advertising links to websites of interest to teenagers, which aligns closely with the plain description suggested by that domain name. As the Respondent noted, that panel did conclude that “It is irrelevant that the site consists largely of paid advertising rather than original content.” However, in the present case, the disputed domain name, <swash.com>, now resolves to an altered website that offers PPC links to third-party sites that are general in nature and have little to do with washing products or the plain meaning of “swash”.

The foregoing analysis leads the Panel to conclude that the Respondent has failed to supply sufficient evidence for its contentions in rebuttal to the Complainant’s prima facie case on this issue.

As a result, the Panel finds that the Complainant has satisfied the second element of the Policy.

A minority of the Panel does not agree with the Panel majority’s finding on the Respondent’s “Rights or Legitimate Interests”. The Complainant has failed to satisfy the minority Panelist that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has been making bona fide commercial use of the disputed domain name for 8 years or more and there is nothing before the Panel to suggest that the Respondent’s use of the disputed domain name has been in bad faith; nor has the Panel made any such finding. The Panel has found the Respondent to be the legitimate owner of the disputed domain name and in the view of the minority Panelist a legitimate owner of a domain name, which has been making continuous bona fide commercial use of the domain name over such an extensive period has a legitimate interest in respect of it. However, due to the finding regarding bad faith below, the division amongst the Panel on this issue is not critical to the outcome of this case.

C. Registered and Used in Bad Faith

In this case, there is no evidence in the record to suggest that the Respondent acquired the disputed domain name later than 2004. The Complainant, in its Complaint and Additional Submission, furnishes no evidence that it sold products under its SWASH trademark prior to 2009. Moreover, the Complainant has not proved any registration for the SWASH trademark before 2008. In view of the sequence of these dates, the Panel agrees with the Respondent that, when it acquired the disputed domain name <swash.com> in 2004, it cannot have been aware of the Complainant’s then non-existent rights in the SWASH mark. Furthermore, as the Complainant has also admitted that the third party 1993 WIPO registration for that mark was not valid in the USA – the domicile of the Respondent – the Panel finds that it is also very unlikely that the Respondent would have been aware of that registration at all. This lack of opportunity for actual, or even constructive, knowledge on the part of Respondent concerning ownership of the SWASH trademark leads the Panel to conclude that there is no evidence that the Respondent registered and is using the disputed domain name in bad faith. Since the Respondent had no knowledge of any Complainant rights in the disputed domain name, the Respondent was not using the disputed domain in bad faith when it connected the disputed domain name to web sites related to the word “swash” and later to general interest websites. The Panel believes that this is not a UDRP paragraphs 4(b)(i-iv) bad faith scenario and that this is not even a close call.

As a result, the Panel finds that the Complainant has failed to satisfy the third element of the Policy with regard to bad faith.

Reverse Domain Name Hijacking

The Respondent has requested that the Panel issue a finding of abuse of this UDRP proceeding or “reverse domain name hijacking” per the UDRP Rules at paragraph 15(e). The Panel notes that panels do not usually issue such a finding in a case where a complainant has prevailed with respect to two (in the present case not unanimously) of the three elements required under the Policy.

However, the Panel does not believe that the present Case represents a normal circumstance. The Panel notes that the Complainant, The Procter & Gamble Company, is a premier marketer and advertiser of consumer products in the United States of America and in many other countries. It is impossible to believe that the Complainant, who employs ultra-sophisticated marketing methods, was not aware that the disputed domain name, <swash.com>, had been registered and used by other entities for some years when the Complainant introduced its SWASH product line in 2009.

The Complainant and its legal counsel are not strangers to the UDRP process.

Therefore, the Panel (by a majority) concludes that the Complainant must have known that, once the relevant facts of this case were uncovered, a UDRP panel could not possibly find that the disputed domain name was registered in bad faith. To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner.

The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.

In all of the circumstances present here, the Panel finds that the Complainant has abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also finds the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied. The Panel also made a finding of reverse domain name hijacking against the Complainant.