WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BEHR Process Corporation v. Ryan Rupke

Case No. D2012-1908

1. The Parties

The Complainant is BEHR Process Corporation of Santa Ana, California, United States of America, represented by SafeNames Ltd, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ryan Rupke of Beaverton, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <behrpaintcoupons.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2012. On September 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 28, 2012, 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 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on November 2, 2012. 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 based in California and is a manufacturer of paint products. The Complainant was founded in 1947 and today is one of the largest suppliers of architectural paint and exterior wood care products in the United States and Canada. The Complainant manufactures paints, decorative finishes, primers, stains and surface preparation products.

The Complainant has held trade mark registrations for marks containing the word “Behr”, either as a word mark or a figurative mark with the addition of a bear, since at least 1995. It holds a word mark for BEHR (the “BEHR Mark”) in Canada, the location of the Respondent, which has been registered since 1989. The Complainant also maintains an official website at “www.behr.com”.

The Domain Name <behrpaintcoupons.net> was created on November 17, 2010. The Domain Name redirects to a website (“Respondent’s Website”) that refers to itself as “Your sorce for behr paint coupons, rebates and paint reviews”. The Respondent’s Website contains numerous references to the Complainant and photos of the Complainant’s products. The Respondent’s Website also includes references to products that compete with the Complainant’s products and various Google AdSense links which are essentially pay-per-click (PPC) links provided by Google and which lead to other websites for companies in the painting industry.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s BEHR Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the BEHR Mark. It owns a trade mark registration for the BEHR Mark in Canada, the location of the Respondent.

The Domain Name consists of the BEHR Mark in its entirety with the addition of the words “paint coupons”. The word “paint” does not distinguish the Domain Name from the BEHR Mark as Internet users will interpret the addition as referring to one of the core products that the Complainant manufactures. The addition of the generic dictionary word “coupons” further reinforces the connection between the Domain Name and the Complainant. Thus the addition of the words “paint coupons” is not sufficient to avoid a likelihood of confusion.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “behr” or any similar trade mark. The Respondent is not an authorised user of the BEHR Mark nor is the Respondent authorised or affiliated with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

The Respondent does not use the Domain Name for a bona fide offering of goods and services. The Respondent’s Website clearly demonstrates an awareness of the Complainant’s product. The Respondent’s website is not authorised by the Complainant and contains various references to the Complainant’s competitors and various Google AdSense links, from which the Respondent receives a financial return.

The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name in bad faith because it was registered with the knowledge of the Complainant’s rights in the BEHR Mark. The Respondent uses the Domain Name to mislead customers who are searching for products produced by the Complainant by re-directing them to competitors’ sites for which it receives a financial return. The Respondent has also engaged in a pattern of such conduct having registered similar domain names incorporating such well-known trade marks as MAXWELL HOUSE, GARNIER and HUGGIES.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the BEHR Mark, having registrations for BEHR as a trade mark in Canada.

The Domain Name consists of the BEHR Mark and the words “paint coupons”. The words “paint coupons” are descriptive of discount coupons for the Complainant’s paint products. The Domain Name suggests that the related website offers coupons for the Complainant’s paint products. As noted in LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753, the addition of a term that is generic or descriptive is likely to produce confusion since it creates an association with the Complainant. As such the addition of the words “paint coupons” does not distinguish the Domain Name from the BEHR Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s BEHR Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BEHR Mark or a mark similar to the BEHR Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.

The Respondent uses the Domain Name for a site that purports to provide information about and discount coupons for the Complainant’s products. However the Respondent’s Website contains links to other websites associated with discount coupons and multiple Google AdSense links, from which the Respondent presumably receives revenue. By registering the Domain Name the Respondent clearly intended to divert Internet users interested in the Complainant’s products for his own personal gain. This type of use in the present circumstances does not constitute a bona fide offering of goods or services.

There have been two previous UDRP cases involving the Respondent engaging in nearly identical conduct, and both cases have resulted in findings that the Respondent’s conduct does not generate rights or legitimate interests in the domain names the subject of those proceedings, see Revlon Consumer Products Corporation v. Ryan Rupke, WIPO Case No. D2011-1533 and Johnson & Johnson v. Ryan Rupke, WIPO Case No. D2011-1196.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 the Respondent’s website or location.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the BEHR Mark at the time the Domain Name was registered. The Respondent’s Website contains extensive references to the Complainant and its products, clearly indicating a knowledge of the Complainant. Furthermore, there appears to be no alternative explanation for the registration of the Domain Name, absent knowledge of the Complainant and its BEHR Mark.

The registration of the Domain Name in awareness of the Complainant’s BEHR Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent is using the Complainant’s mark to create a site that contains Google AdSense links as well as related links to third-party sites. The Respondent is obviously deriving income from such links on a pay-per-click basis, which constitutes bad faith use. See ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649; Six Continents Hotels, Inc. v. NA InterMos, WIPO Case No. D2006-1313.

The factual record also shows that the Respondent has engaged in a pattern of registering domain names that consist of a consumer product trade mark and the word “coupon”. The Respondent (or an entity connected to the Respondent) has registered, at the minimum, the domain names <maxwellhousecoffeecoupons.net>, <huggiescouponsprintable.com>, and <garniercouponsite.com>. Moreover, previous UDRP panels have found at least eight other domain names registered by the Respondent to be identical or confusingly similar to another entity’s trademark and registered and used in bad faith: see Revlon Consumer Products Corporation v. Ryan Rupke, supra, and Johnson & Johnson v. Ryan Rupke, supra. This pattern of conduct clearly demonstrates bad faith on the part of the Respondent.

On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name <behrpaintcoupons.net> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Dated: November 5, 2012