Analysis of WIPO Case D2012-2179: The Procter & Gamble Company v. Marchex Sales, Inc.

Overview

The WIPO Case D2012-2179 involved a dispute over the domain name “swash.com.” The complainant in this case was The Procter & Gamble Company, a well-known American corporation that manufactures and sells consumer products, including household cleaning and washing products. The respondent was Marchex Sales, Inc.

Factual Background

Complainant: The Procter & Gamble Company (USA), known for its household cleaning and washing products.

Respondent: Marchex Sales, Inc.

Domain Name: “swash.com.”

Registration Date of Domain: March 2, 2000.

Acquisition by Respondent: 2004.

Panelists: Dennis A. Foster, Andrew F. Christie, and Tony Willoughby.

Timeline of Proceedings

Complaint Filed: July 10, 2013.

Proceedings Commenced: November 9, 2012.

Response Due Date: November 29, 2012.

Decision Date: February 22, 2013.

Complainant’s Contentions

The Procter & Gamble Company argued that “Swash” is one of their brand names under which they have produced goods and that they have registered the SWASH trademark with various authorities, including USPTO and OHIM.

They claimed that the respondent had no rights or legitimate interests in “swash.com” and that the domain was registered and being used in bad faith.

Respondent’s Defense

Marchex Sales, Inc. maintained that they had been using “swash.com” since its acquisition in 2004 to promote various products and had no intention of trading unfairly on the reputation of Procter & Gamble’s SWASH trademark.

They contended that the domain name was registered for its descriptive quality relating to washing and not in connection with the complainant’s trademark.

Panel’s Decision

The panel found that while the domain name “swash.com” is identical to the Procter & Gamble’s SWASH trademark, the registration of the domain name by the respondent predates the complainant’s trademark rights.

It was determined that the respondent could not have registered the domain name in bad faith as they could not have contemplated Procter & Gamble’s then non-existent rights.

The panel concluded that the complainant failed to prove that the respondent registered and used the domain name in bad faith.

The complaint was denied, and the domain name remained with Marchex Sales, Inc.

Conclusion

This case highlights the importance of the registration date of a domain name in relation to the establishment of trademark rights. The decision underscores the need for a complainant to prove bad faith registration and use, especially when the domain name predates the complainant’s trademark rights.

For more detailed information, you can visit the WIPO Case Summary.

Overview The WIPO Case D2012-2179 involved a dispute over the domain name “swash.com.” The complainant in this case was The Procter & Gamble Company, a well-known American corporation that manufactures and sells consumer products, including household cleaning and washing products. The respondent was Marchex Sales, Inc. Factual Background Complainant: The Procter & Gamble Company (USA),…