Ecolab USA Inc. v Domain Privacy, Domain Name Privacy Inc
WIPO Case No. D2025-1628
•11-06-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Ecolab USA Inc. v. Domain Privacy, Domain Name Privacy Inc
Case No. D2025-1628
1. The Parties
The Complainant is Ecolab USA Inc., United States of America, represented by Greenberg Traurig, LLP,
United States of America.
The Respondent is Domain Privacy, Domain Name Privacy Inc, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <ecolab.site> is registered with Communigal Communications Ltd. (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2025.
On April 24, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On the same day, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name,
which differed from the named Respondent (Not provided) and contact information in the Complaint. The
Center sent an email communication to the Complainant on April 29, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the
Complaint. The Complainant filed an amended Complaint on May 2, 2025.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2025.
page 2
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 28, 2025. 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
The Complainant is a global sustainability leader offering water, cleaning, hygiene, and infection prevention products and services, serving millions of customers in the food, energy, healthcare, life sciences, industrial, hospitality and retail markets industries. The Complainant operates in more than 170 countries, where the
Complainant has employed more than 48,000 associates. The Complainant owns numerous trademark registrations across the world, including:
Date of
| Trademark | Registration No. | Jurisdiction | Registration | Class |
| ECOLAB | 017584426 | European Union | April 20, 2018 | Class 42 |
| United States of |
page 3
member of (and cites Janus International Holding Co. v. Rademacher, WIPO Case No. D2002-0201; and
Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217).
| Complainant’s corporate name) in full, by only adding the generic Top-Level Domain (“gTLD”) “.site”, and | That the disputed domain name incorporates the Complainant’s ECOLAB trademarks (and the v. ASD, Inc., WIPO Case No. D2001-0903; Lego Juris A/S v. Oleg Budak, WIPO Case No. D2023-4950). |
| II. Rights or Legitimate Interests | |
| That the Respondent registered the disputed domain name without having the Complainant’s authorization or consent and that the Respondent is not commonly known by the disputed domain name, nor has the said Respondent used the disputed domain name in connection with a bona fide offering of goods or services. | |
| That the Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a protected noncommercial or fair use of the disputed domain name. That, on the contrary, the Respondent is using the disputed domain name to divert Internet traffic to websites containing PPC or affiliate advertising links which redirect to the websites of competitors of the Complainant. | |
| That said PPC links are related to “Cleaning Solutions”, “Disinfectant Products”, and “Water Treatment direct compdetition with the Complainant’s products. | |
| That previous panels have held that the use of a disputed domain name for PPC advertising purposes cannot constitute a bona fide offering of goods or services, or a legitimate noncommercial, fair use of the disputed domain name under the Policy (and cites Combined Insurance Company of America v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, PrivacyDotLink / Zhichao Yang, Moniker Privacy Services / Zhichao Yang, Whois Agent, Domain Protection Services, Inc. / Zhichao Yang, and Super Privacy Service LTD c/o Dynadot / Zhichao, WIPO Case No. D2020-0863; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753; FXCM Global Services, LLC v. Ai Lin, WIPO Case No. D2021-0689). | |
| That the Respondent has listed the disputed domain name for sale for USD 1,438.99 on a website specialized in domain name purchases and auctions, and that the Respondent’s attempts to sell the disputed domain name in excess of its costs while being aware of the disputed domain name containing the Complainant’s ECOLAB trademarks does not create rights or legitimate interests under the Policy (and cites BolognaFiere S.p.A. v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars, WIPO Case No. D2004-0830; CONOCO Inc. v. RDH Computer Solutions/Ronald D. Harris, WIPO Case No. D2000-0960; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102). | |
| That, to the Complainant’s knowledge, there are no prior trademark applications or registrations in the name of the Respondent, relating to any trademark incorporating the Complainant’s ECOLAB trademark anywhere in the world, which demonstrates that the Respondent is not commonly known by the disputed domain name and thus has no legitimate reason to use it (and cites Charles Jourdan Holding AG v. AAIM, WIPO Case NO. D2000-0403; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020). | |
| III. Registered and Used in Bad Faith | |
| That the Respondent acquired the disputed domain name long after the Complainant established its rights in its ECOLAB Trademarks, and is using it to redirect Internet traffic to competitive websites comprising PPC links, which demonstrates bad faith registration and use under the Policy, because the Respondent is using the disputed domain name to attract Internet users to the Respondent’s website and PPC advertisements for commercial gain, causing disruption to the Complainant’s business by creating a likelihood of confusion |
page 4
regarding source, sponsorship, affiliation or endorsement (and cites Combined Insurance Company of
America v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang, PrivacyDotLink / Zhichao Yang,
Moniker Privacy Services / Zhichao Yang, Whois Agent, Domain Protection Services, Inc. / Zhichao Yang,
and Super Privacy Service LTD c/o Dynadot / Zhichao, supra; Dr. Martens International Trading GmbH, Dr.
Maertens Marketing GmbH v. Private Whois Service, supra; FXCM Global Services, LLC v. Ai Lin, supra).
| Respondent’s investment in the disputed domain name, and that this constitutes bad faith registration and | That the Respondent has listed the disputed domain name for sale for a price which clearly exceeds the v. Mike Pearson, WIPO Case No. D2000-0001). |
| That, at the time of registration of the disputed domain name, the Respondent had knowledge of the the disputed domain name. That the fact that the disputed domain name incorporates a well-known trademark is sufficient to give rise to an inference of bad faith (and cites Singapore Airlines Limited v. P&P Servicios de Communicacion S.L., WIPO Case No. D2000-0643). | |
| That the Respondent had constructive knowledge of the Complainant’s ECOLAB trademarks, arising from the registrations relating to its ECOLAB trademarks before the United States Patent and Trademark Office (and cites Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 [S.D. Fla. 2001]; and Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384). | |
| That the Complainant is not aware of any use of its ECOLAB trademarks in connection with any services other than those provided by the Complainant. That the disputed domain name is so obviously connected to the Complainant and its services, that the use of said trademarks by someone with no connection to the Complainant suggests opportunistic bad faith (and cites The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc, WIPO Case No. D2006-0800 and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492). | |
| That the disputed domain name has active MX records, which indicates that the disputed domain name could be used in relation to email functionalities, which evidences the possibility of additional bad faith conduct relating to fraudulent email or phishing communications (and cites Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472; Ares Management LLC v. juandaohanjing (上海锐思 人力资源有限公司), WIPO Case No. D2020-3254). The Complainant also states that the MX records were | |
| provided by a different online services provider rather than the Registrar, which demonstrates that the Respondent took active and intentional steps to configure the MX records for email use. | |
| That, under the Policy, the Respondent’s pattern of prior bad faith registration of domain names using well- known trademarks in which the Respondent had no rights or legitimate interests provides further evidence of the Respondent’s bad faith registration and use (and cites Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128 and Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338). | |
| That the Respondent has been a party to 51 UDRP decisions in cases involving the bad faith registration and use of domain names incorporating famous and well-known trademarks. | |
| That the Respondent used a proxy service or falsely set its information to be a privacy service in an attempt to evade enforcement, which demonstrates bad faith use and registration (and cites Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Service, WIPO Case No. D2007-1743). |
page 5
That the Complainant sent to the Respondent a cease and desist letter which was never answered, which
further provides that the disputed domain was registered and is being used in bad faith (and cites WhatsApp
Inc. v. WhoisGuard Protected, WhoisGuard, Inc./Mohsen Moussawi, WIPO Case No. D2021-0032; The
Procter & Gamble Company and Braun GmbH v. Domain Admin, FBS INC, Whoisprotection.biz / Erol Çakir,
WIPO Case No. D2020-1959; Signature Bank v. Registration Private, Domains By Proxy, LLC / Carolina
Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1081; Ebay, Inc. v. Ebay4sex.com and
Tony Caranci, WIPO Case No. D2000-1632).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to successfully request remedies:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark to which
the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in connection to the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Given the Respondent’s default and therefore, failure to specifically address the case merits as they relate to
the three UDRP elements, the Panel may decide this proceeding based on the Complainant’s undisputed
factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Joseph Phelps Vineyards LLC
v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292; Encyclopaedia
Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; see also
WIPO Overview 3.0, section 4.3).
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of the ECOLAB trademarks for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The disputed domain name entirely reproduces the Complainant’s ECOLAB trademarks. The Panel finds standard registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.
that the Complainant’s ECOLAB trademark is recognizable within the disputed domain name.
Accordingly, the disputed domain name is identical to the Complainant’s ECOLAB trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel finds the first element of the Policy has been established.
page 6
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Specifically, the Respondent has failed to submit evidence of bona fide or legitimate noncommercial or fair use of the disputed domain name. No evidence has been filed in connection with the Respondent being commonly known by the disputed domain name.
The Panel notes that the disputed domain name is being used to resolve to a website with PPC links to websites that offer services that directly compete with the Complainant. Therefore, no rights or legitimate interests can be found in favor of the Respondent. WIPO Overview 3.0, section 2.9.
Furthermore, the Panel considers that the composition of the disputed domain name carries a high risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.
Therefore, the Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Complainant has ascertained its rights over the ECOLAB trademarks. The dates of registration of said trademarks significantly precede the date of registration of the disputed domain name. Additionally, the Panel agrees with decisions rendered by previous panels in the sense that the ECOLAB trademarks are well known (see, for example, Ecolab USA Inc. v. wangchao hui, WIPO Case No. D2025-0688).
Previous panels appointed under the Policy have found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can in itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. This is so in the present case because the Complainant’s ECOLAB trademarks are well known and have been extensively used worldwide.
In the present case, the Panel notes that the fact that the Respondent registered the disputed domain name which is identical to the Complainant’s ECOLAB trademarks shows that the Respondent, more likely than not, has targeted the Complainant, which constitutes opportunistic bad faith (see WIPO Overview 3.0, section 3.2.1).
page 7
The Panel also notes that the disputed domain name resolved to a parked website comprising PPC links to websites that offer services that compete with those of the Complainant. Therefore, the Panel considers that the Respondent is trying to capitalize on the reputation and goodwill of the Complainant by misleading Internet users, for commercial gain, to the website to which the disputed domain name resolves (and the websites to which the PPC links redirect) by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of said websites, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see WIPO Overview 3.0, section 3.1.4; see also Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598). In the circumstances of this case, the use of a privacy service and activation of MX records further support an inference of bad faith.
Based on the available record, the Panel finds that the Complainant have established the third element of the
Policy.
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 disputed domain name <ecolab.site> be transferred to the Complainant.
/Kiyoshi Tsuru/
Kiyoshi Tsuru
Sole Panelist
Date: June 11, 2025
1538857 May 16, 1989 Class 5
| America |
Class 1, Class 3, Class 4, Class 5,
International Class 7, Class 8,
| ECOLAB | 1005780 | April 6, 2009 | Class 9, Class 11, |
trademark
Class 21, Class 35, Class 37, Class 41, Class 42
<ecolab.com>, <ecolab.eu>, <ecolab.net>, <ecolab.help>, <ecolab.jobs>, <ecolab.ai>, and <ecolab.online>.
The Complainant is the owner of more than 150 domain names, including, among others, the following: registered on January 25, 1996.
The disputed domain name <ecolab.site> was registered on June 3, 2024. The disputed domain name
<ecolab.site> resolves to a parked website with pay-per-click (“PPC”) links.
5. Parties’ Contentions
A. Complainant
Notably, the Complainant contends the following:
I. Identical or Confusingly Similar
That the continuous and broad use of the Complainant’s ECOLAB trademarks has brought widespread fame and has rendered the ECOLAB trademarks well known and widely recognized in the water, cleaning, hygiene, and infection industries, and that the well-known status of the ECOLAB trademarks extends to the European Union, specifically Cyprus where the Respondent is reportedly located.
That the Complainant owns valid trademark registrations for its ECOLAB trademarks, which fact demonstrates the Complainant’s rights under the Policy, and that the Complainant owns trademark registrations in the European Union, to which Cyprus (where the Respondent is purportedly located), is a
0
0
0