WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Greenply Industries Limited v. Matthew Poston
Case No. D2010-1748
1. The Parties
The Complainant is Greenply Industries Limited of Assam, India, represented by S. Majumdar & Company, India.
The Respondent is Matthew Poston of Liberty, Texas, United States of America, represented by Craft Chu PLLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <greenply.net> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2010. On October 14, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 14, 2010, the Registrar 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 October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Response was filed with the Center on November 4, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 17, 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.
It is not in dispute between the parties that the Respondent is the attorney for Impex Trading International, which is the trading name of a Texas corporation, Procurement Solutions Abroad, Inc. The Respondent asserts (and the Panel accepts) that the Respondent registered the Domain Name for his client. Hereinafter all references in this decision to the “Respondent” are also references to Impex Trading International, the beneficial owner of the Domain Name registration.
4. Factual Background
The Complainant is a substantial supplier of plywood and laminate to the Indian market. The business was founded in India in 1984. It was subsequently incorporated as a limited company and acquired its current corporate name, Greenply Industries Limited, in 1996.
The Complainant operates a website connected to its domain name, <greenply.com>, a domain name which it registered on February 9, 1999.
The Complainant is the registered proprietor of the following Indian trade mark registrations, namely:
No. 1252293 dated November 28, 2003 GREENPLY WOODWISE in class 19 for plywood, blockboard, etc.
No. 1268991 dated February 26, 2004 GREENPLY in class 19 for plywoods, blockboard, etc.
No. 1525695 dated January 29, 2007 GREEN GREENPLY (a device mark featuring the word “Green” set in a leaf above the word “Greenply”) in class 19 for laminates, plywood, etc.
The Complainant is also the registered proprietor of a number of other Indian and overseas trade mark registrations of marks comprising or incorporating the word “green”. However, the Complainant has no trade mark registrations for marks comprising or incorporating the word “Greenply” other than the Indian registrations cited above.
The Complainant asserts (and for the purposes of this decision the Panel accepts as fact) that the Complainant has a substantial international reputation and goodwill extending beyond India’s borders.
The Complainant asserts (and for the purposes of this decision the Panel accepts as fact) that the Complainant has been selling its products in the United States of America since 2005.
The Respondent, a Texas corporation, is engaged in the same line of business as the Complainant.
On February 27, 2008 the Respondent applied at the United States Patent and Trademark Office for registration of the mark GREENPLY in class 19 for building materials, namely hardwood boards, plywood and plywood board. The application was published for opposition on July 8, 2008 and, unopposed, matured into a registration on February 24, 2009.
The Domain Name was registered on October 16, 2008 and is connected to the Respondent’s trading website. The homepage features the Respondent’s trade mark GREENPLY (in stylised form with the double ‘e’ replaced by two leaf shapes), under which appears the text “PREMIUM ECO-FRIENDLY HARDWOOD PLYWOOD” and an “ENTER HERE” button.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical and/or confusingly similar to its GREENPLY trade marks, “Greenply” also being the predominant feature of its <greenply.com> domain name and its corporate name. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
The Complainant contends that the Respondent knew or ought to have known of the Complainant and its well-known brand when it registered the Domain Name and is to be taken to have registered the Domain Name with that knowledge and with the intention of either selling the Domain Name to the Complainant or taking a free ride on the back of the Complainant’s goodwill. The Complainant contends that the Respondent’s action in registering and using the Domain Name for its business has led to confusion.
The Respondent denies the Complainant’s allegations and asserts that it registered the Domain Name in good faith following receipt of an indication from the Unites States Patent and Trademark Office that its trade mark application had not been opposed and would be proceeding through to registration. It contends that it registered the Domain Name when it reasonably believed that it had a right to use its trade mark.
The Respondent attacks the quality of the Complainant’s evidence as being wholly inadequate to support the allegations made in the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the word “greenply” and the generic “.net” top-level domain suffix. It is now well-established that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for panels to ignore the top-level domain suffix.
As can be seen from the factual background in section 4 above GREENPLY is an Indian registered trade mark of the Complainant.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
It can also be seen from the factual background set out in section 4 above that the Respondent is the registered proprietor of a United States trade mark registration of a mark which is a stylized version of the word “greenply”. That will constitute a right or legitimate interest in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy unless the circumstances surrounding the adoption of the Respondent’s trade mark and the Domain Name lead the Panel to believe that the Respondent had knowledge of the Complainant and its trade mark rights and was seeking unfairly to target the Complainant.
In the Panel’s view, put at its strongest, the Complainant’s case against the Respondent might be as follows:
1. The Complainant and its “Greenply” brand are long-established.
2. Their reputation and goodwill extends to the United States.
3. When selecting the name “Greenply” for its brand the Respondent was aware of the Complainant.
4. The Respondent would have been aware of the Complainant because of the international fame of the Complainant and its brand and because from 2005 the Complainant had been trading in the United States.
5. When deciding upon the name, the Respondent would have opted first for the domain name, <greenply.com>, but would have found that it was registered to the Complainant. It would have visited the Complainant’s website and by that stage at least would have been very well aware of the Complainant and its business.
6. The fact that the Respondent’s trade mark (as it appears on the Respondent’s website) features the shapes of leaves indicates that the Respondent had in mind the Complainant’s device mark cited in section 4 above which also features the shape of a leaf.
7. While the Respondent denies that the Complaint is sufficient to establish Respondent’s knowledge of the Complainant, nowhere in the Response does the Respondent expressly deny knowledge of the Complainant.
However, the Respondent is correct in pointing out that there is nothing before the Panel to demonstrate that the Complainant’s business in the United States under the “Greenply” name prior to registration of the Domain Name was substantial. As the Respondent points out, all that the Panel has before him in relation to the Complainant’s business in the United States at that time are (a) some invoices dating back to 2005 in favour of a Texas consignee but without making clear what was the brand used (seems it may have been “Greenlam”) (b) a couple of 2010 invoices apparently relating to supplies to Puerto Rico and (c) the fact that in April 2008 the Complainant incorporated a subsidiary in Florida under the name of Greenlam (not Greenply). Even if the product covered by the 2005 invoices were branded “Greenply”, in this Panel’s view they would likely be insufficient on their own to establish common law rights for purposes of the Policy and are certainly insufficient to enable the Panel to conclude that the Respondent was likely to have been aware of the brand.
Another possible scenario is that the Respondent decided upon “Greenply” before it had heard of the Complainant and, as contended by the Respondent, awaited news from the United States Patent and Trademark Office that the Respondent’s “Greenply” trade mark application was proceeding to registration unopposed before registering the Domain Name, thereby leading the Respondent to believe that it was entitled to use the name in a domain name. Even if, as the Panel accepts may have been the case, the Respondent was aware of the Complainant’s business in India at that time, there is nothing before the Panel to show that the Respondent’s intention was to target that brand in a manner indicative of bad faith (or even to violate any local United States rights that the Complainant may have had at that time; indeed, as indicated, there is nothing before the Panel to demonstrate that the Complainant had acquired any rights in the United States by October 2008).
While the Panel is not entirely satisfied that the full story has been told regarding the Respondent’s choice of “Greenply” as a trade mark, in the face of the Respondent’s United States registered trade mark and the lack of any direct evidence to show that the Respondent was targeting the Complainant, the Panel is unable to conclude with any confidence that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, for completeness, the Panel records that (a) while the Complainant contends that there has been confusion, there is no evidence before the Panel supporting this contention; and (b) while the Complainant places much reliance upon the fact that it was the Respondent’s lawyer who registered the Domain Name and not the lawyer’s client, claiming that this is evidence of bad faith, the Panel is not so persuaded. In the Panel’s experience it is not uncommon for lawyers to register domain names on behalf of their clients and the Panel sees no reason to disbelieve the Respondent’s certificate to that effect.
D. Registered and Used in Bad Faith
By the same reasoning the Panel is unable to conclude that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: November 29, 2010