WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PPG Industries Ohio, Inc. v. sk
Case No. D2011-0785
1. The Parties
The Complainant is PPG Industries Ohio, Inc. of Cleveland, Ohio, United States of America, represented by Ladas & Parry LLP, United States of America.
The Respondent is sk, of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ppgpaints.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
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 May 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on June 21, 2011. 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.
Given that the Disputed Domain Name was set to expire on May 27, 2011, the Complainant was offered the option to renew or restore the Disputed Domain Name under the same commercial terms as the Respondent (pursuant to Paragraph 126.96.36.199. of the ICANN Expired Domain Deletion Policy) and renewed it on May 18, 2011.
4. Factual Background
The Complainant is a global coatings and specialty products and services company, serving customers in construction, consumer products, industrial and transportation markets and after markets which has manufacturing facilities and equity affiliates in more than 60 countries around the globe.
The Complainant is the owner of many trademarks including the distinctive letters “PPG” (“the Trademarks”) in various classes, including for paints and other similar coatings, in the United States of America (“US”) particularly US trademark registrations Nos. 0836988, 1735888, and 2101821; as well as in many other countries including in the European Union, for example, Community Trademark Registration No. 000051789.
The Disputed Domain Name was registered by the Respondent on February 3, 2009. The Respondent is using the Disputed Domain Name to direct Internet users to a website featuring pay-per-click links, most of which redirect to the Complainant’s direct competitors.
The Complainant sent a cease and desist letter to the Respondent, in which the Complainant informed the Respondent of its prior legitimate rights in the Trademarks. The cease and desist letter was returned citing that the addressee was “unknown” and that the listed address does not exist.
5. Parties’ Contentions
The Complainant’s contentions may be summarized as follows:
The Disputed Domain Name is confusingly to the Trademarks that it owns, whereby the addition of the term “paints” does not affect this finding because this term is descriptive;
The Respondent has no rights or legitimate interests in the Disputed Domain Name because without Complainant’s authorization or consent, the Respondent registered the Disputed Domain Name that is confusingly similar to the Complainant’s Trademarks and is using it to divert Internet traffic to a domain monetization website featuring pay-per-click links to third-party websites, which include the websites of Complainant’s direct competitors. In addition, the Respondent is not authorized or licensed to use the Trademarks because Respondent is not affiliated with or licensed by the Complainant, and has not been given permission to use any of the Trademarks by the Complainant; and it is not otherwise in any way connected with the Complainant or its affiliates. There is further no evidence that the Respondent is commonly known by the Disputed Domain Name;
The Respondent registered and is using the Disputed Domain Name in bad faith because he was clearly aware of Complainant’s rights in the Trademarks when he acquired the Disputed Domain Name as the Disputed Domain Name incorporates, in its entirety, the Trademarks and appends the directly related term “paints”. The Respondent further registered the Disputed Domain Name, which is confusingly similar to Complainant’s Trademarks, and used the Disputed Domain Name to divert Internet users to a domain monetization website, through which the Respondent likely garners click-through fees for each Internet user who selects one of the links, whereby several of the links available through the Disputed Domain Name redirect Internet users to the Complainant’s direct competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant both raises the equitable doctrine of laches, and claims that this cannot negatively affect the Complainant’s position. Even if this argument had been raised by the Respondent (who did not participate in these proceedings) it is questionable whether this Panel would have to make a decision on this issue at all as this Panel “does not accept that there is meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name”. See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; and Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods, WIPO Case No. D2008-0832. On this basis, the Panel finds that the Complainant is in a position to invoke the protection granted under the Policy irrespective of the passing of time since the registration of the Disputed Domain Name by the Respondent.
The Panel also notes that there is no indication whatsoever that the Respondent suffers any prejudice from such delay in taking action. As noted by another UDRP panel, this case “is not a case where a complainant sits idly by before objecting while an unsuspecting respondent builds a valuable business”. Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877. Further, panels have recognized that the doctrine of laches as such does not apply under the UDRP (see paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Consequently, the Panel finds that the Complainant’s position in these proceedings cannot be affected by the passing of time since the registration of the Disputed Domain Name by the Respondent.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the Trademarks in various jurisdictions including in the United States of America and in the European Union, where the Respondent is based.
A comparison between the Disputed Domain Name and the Trademarks shows that the Disputed Domain Name is clearly confusingly similar to the Complainant’s Trademarks. Here, the addition of the descriptive term “paints” after the letters “PPG”, which correspond to the distinctive part of the Trademarks of the Complainant does not affect this finding of confusing similarity. Quite to the contrary, the addition of the descriptive term “paints” to the letters “PPG” can rather increase the risk of confusion, given that this generic term directly relates to the Complainant’s business activities.
As a result, based on the rights of the Complainant in the Trademarks and on the confusing similarity between the Trademarks and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which replicates the distinctive element of the Trademarks owned by the Complainant (i.e. the letters “PPG”) and uses it in connection with a pay-per-click landing page pointing to products of competitors of the Complainant in the painting industry.
The Complainant has also established that the Respondent has no rights in the Disputed Domain Name (i.e. he is not the owner of any trademark corresponding to the Disputed Domain Name), that he is not authorized or licensed to use the Trademarks by the Complainant and that the Respondent has not been commonly known by the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of a right to or legitimate interests in the Disputed Domain Name, which has not been done given Respondent’s absence of participation in these proceedings.
In addition, the Panel notes that the Respondent has used the the Disputed Domain Name in connection with a link farm parking page advertising the products of third parties which are in competition with the Complainant. As recognized by many UDRP panels, it is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368; and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademarks are distinctively identifying the Complainant and the Complainant’s products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademarks of the Complainant. This particularly results from the combination between the trademark PPG and “paints”, which is descriptive of the Complainant’s business activities. The Respondent’s bad faith in the registration and use of the Disputed Domain Name is further confirmed by the fact that the Disputed Domain Name is used in connection with a pay-per-click parking page pointing to products of Complainant’s competitors. Such use has consistently been held as a bad faith registration and use of a domain name. See, e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-0147; Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Roust Trading Ltd. v. AMG LLC, WIPO Case No. D2007-1857; Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright, WIPO Case No. D2007-0267; Sports Saddle, Inc. v. Johnson Enterprises., WIPO Case No. D2006-0705.
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.
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 <ppgpaints.com> be transferred to the Complainant.
Jacques de Werra
Date: July 4, 2011