The Complainant is ChemRite CoPac, Inc. of Lannon, Wisconsin, United States of America, represented by Donald J. Ersler, S.C., United States of America.
The Respondent is Isaac Goldstein of Hong Kong SAR of China, represented by himself.
The disputed domain name <raceglaze.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2010. On February 23, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On February 23, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2010. However, due to a typographical error in the use of the email address of the Respondent, the Response due date was reset to April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2010. The Response was filed with the Center on April 14, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on April 23, 2010. 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.
The Complainant is a US Corporation that produces liquid, crème, lotion and chemical foam lotions for various industrial and other purposes, including automotive appearance products, such as car wash, window cleaning fluids and car wax.
The Complainant is the registered proprietor of several trademarks which identify these products as mentioned in paragraph A1. of section 5 below.
The Complainant makes the following contentions:
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complaint is based on the following trademark registrations owned by the Complainant:
Race Glaze, Reg. No. 3,261,062;
Race Glaze Simply The Best, Reg. No. 3,622,811;
Race Glaze Simply The Best. Reg. No. 2,678,450; and
Race Glaze, Reg. No. 1,221,368.
Registration No. 1,221,368 includes the goods of automobile polish and paint sealant.
Registration Nos. 3,261,062, 3,622,811 and 2,678,450 include the goods of preparations for washing, cleaning, polishing, sealing, shining, and/or protecting the exterior surfaces of land vehicles, marine craft, and aircraft; and preparations for cleaning rubber, vinyl, leather, wood and plastic surfaces.
Evidence of the above trademark registrations has been provided to the Panel.
The disputed domain name is identical or confusingly similar to the Complainant's trademark registrations, because the words “race glaze” are contained in the Complainant's four trademark registrations referred to above. The mark RACE GLAZE is well established, having been first used by the Complainant in commerce on March 18, 1980.
The Complainant owned the disputed domain name from November 23, 1998 to November 22, 2009 (evidence suggesting this has been provided to the Panel). The Respondent is now using the domain name to advertise automobile goods and services. The Respondent took advantage of the Complainant's missing the renewal date of the disputed domain name, because of a paperwork oversight.
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
The Respondent has no rights or legitimate interests in respect of the disputed domain name, because there is no evidence that the Respondent had a bona fide offering of goods or ever did offer.
The Respondent is using the domain name to operate a pay-per-click web page (evidence of which has been provided to the Panel). The Respondent is taking advantage of the good will created by the Complainant's four RACE GLAZE trademarks to draw people, who are looking for the Complainant's products, to divert them to another product or service.
The Respondent has no trademark or service mark rights in the RACE GLAZE name or mark.
The Respondent does not make a legitimate non-commercial or fair use of the disputed domain name, but is only making a commercial use of the domain name to operate a pay-per-click web page, as mentioned above.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The disputed domain name is being used in bad faith, because the Complainant owned the domain name from November 23, 1998 to November 22, 2009. The Complainant owns four RACE GLAZE registered trademarks as mentioned above.
The Complainant used the disputed domain name to advertise RACE GLAZE products. The Respondent is intentionally using the domain name to attract, for commercial gain, Internet users to the Respondent's web site, thereby creating a likelihood of confusion with the Complainant's Race Glaze trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. The Respondent is using the domain name to operate a pay-per-click web page, as previously mentioned.
The Respondent makes the following contentions in response to the Complaint:
1. The Respondent has never heard about any product named “Raceglaze” -there are no products sold in Hong Kong with name “Raceglaze”. Therefore, the Respondent could not have acquired the disputed domain name in bad faith.
2. The domain name <raceglaze.com> has been registered in 1998. The Complainant registered <raceglaze.co.uk> in 2001, 3 years after. So the domain name as such could not have been registered in bad faith.
3. The Respondent bought the domain name in a namejet.com auction January 1, 2010. Everyone could enter this auction via backorder, including the Complainant. But the Complainant instead chose to save money and tried to blackmail the Respondent into giving him the domain name for free. That is the first proof of bad faith of the Complainant.
4. The Complainant was sending emails to obviously mistyped email address yet added the bounced email into its Complaint to make the Respondent look bad. That is the second proof of bad faith of the Complainant.
5. The Respondent spends every month considerable amounts in auctions buying generic domain names like <raceglaze.com>, then parks them and adds them into inventory for sale for reasonable amounts. According to the Respondent this has been declared in many UDRP decisions as bona fide business conduct.
To qualify for cancellation or transfer of the Disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates in its entirety the Complainant's well-established trademark RACE GLAZE.
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is identical to the Complainant's trademark RACE GLAZE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and extensive commercial use of the same. The first element of the Policy has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's well-established trademark RACE GLAZE. Indeed, in the view of the Panel, the adoption by the Respondent of a domain name identical to the Complainant's trademark RACE GLAZE inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities and services (see further on this point below) and the consequential tarnishing of the Complainant's trademark RACE GLAZE and also the goodwill that the Complainant has established in this trademark through its extensive commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. (see in this respect the Panel's findings under the following section). Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain name, is trading on the Complainant's valuable goodwill established in its well-established trademark RACE GLAZE.
Again, by registering and using the disputed domain name incorporating the Complainant's trademark RACE GLAZE, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes, without any modification, the trademark RACE GLAZE of the Complainant, held and used in commerce by the Complainant for many years prior to the date the Respondent became the registrant of the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name would typically be used in good faith only by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
The Panel further holds that the Respondent's registration and use of the disputed domain name also constitutes an infringement of paragraph 4(b)(i) of the Policy in the particular circumstances of this case and as mentioned in paragraph 5 of the Respondent's contentions set out in section 5.B.above.
Furthermore, the particular circumstances, in which the Respondent came to register the disputed domain name, as mentioned by the Complainant in the final paragraph of section 5. A1. above, also, in the opinion of the Panel, indicate bad faith on the part of the Respondent, in view of the length of time that the Complainant had previously registered and used the disputed domain name, namely, eleven years.
As regards bad faith use of the disputed domain name, the sponsored links on the resolving website to competitors of the Complainant is also an indication of bad faith as the Respondent is unfairly gaining a benefit at the expense of the Complainant through the ‘click-through' income generated as a result of these links. See Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273. See also Compart AG v. Compart.com/Vertical Axis, Inc., WIPO Case No. D2009-0462, in which case the Panel held that: “The Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gains through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.”
Also, even though not conclusive, the failure of the Respondent to reply to the Cease and Desist Letter issued on behalf of the Complainant by its Lawyer on January 25, 2010, (apparently sent by post) a copy of which has been provided to the Panel, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <raceglaze.com> be transferred to the Complainant.
Dated: May 7, 2010