WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imperial Chemical Industries Limited, The Glidden Company v. Buckeye Paintings & Decks, Inc.
Case No. D2008-0438
1. The Parties
The First Complainant is Imperial Chemical Industries Limited of London, United Kingdom of Great Britain and Northern Ireland and the Second Complainant is The Glidden Company of Cleveland, Ohio, United States of America. Complainants are represented by Blake Lapthorn Tarlo Lyons Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Buckeye Paintings & Decks, Inc., of Cleveland, Ohio, United States of America.
2. The Domain Names and Registrar
The disputed domain names are <gliddenpainter.biz>, <gliddenpainter.com>, <gliddenpainter.info>, <gliddenpainter.net>, <gliddenpainter.org>, <gliddenpainters.biz>, <gliddenpainters.com>, <gliddenpainters.info>, <gliddenpainters.net>, <gliddenpainters.org> all registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2008. On March 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On March 25, 2008 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. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed John Terry as the sole panelist in this matter on April 24, 2008. 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 Panel notes the factual background setout in the certified Complaint and notes no response from the Respondent.
The First Complainant is a private limited company, previously a public company known as in Imperial Chemical Industries PLC and is a successor in title, the second Complainant being a subsidiary of the First Complainant. The Complainants rely on having a common interest in the Domain Names in dispute. The Trade Mark Glidden has been registered variously by the Second Complainant and the First Complainant particularly in classes 2 and 35 in a very large number of countries, including the United States of America. The schedule of registrations comprises various marks characterised by the word “Glidden” in various forms and with various suffixes. Numerous websites are in evidence of use of the word “Glidden” by the first Complainant and/or the second Complainant. The uncontested Complaint asserts and the Panel accepts that “Glidden” is a Trade Mark which has become well known as a common law mark in the United States of America relating to paints.
All the Domain Names in dispute comprise the prefix being the work “Glidden” together with a suffix directly descriptive of the paint business. The uncontested Complaint establishes to the satisfaction of the Panel that accessing webpages (except <gliddenpainters.org>) direct internet users to a webpage listing a variety of websites in the “.co.uk” and “.com” domains. Access through “www.gliddenpainters.org” results in the internet user being automatically redirected to the Respondent’s website namely “www.buckeyepaintings.com” which advertises the Respondent’s services to residents particularly of Cleveland of the United States of America.
The Second Complainant states it has been known in the paint and coating industry for more than a century having been founded in 1875 by Frances Glidden in Ohio, United States of America. Following incorporation in 1917 the Glidden company is stated to have become one of the largest coatings manufacturers in the United States of America and has subsequently become a subsidiary of the First Complainant which is stated to be the world’s leading paint manufacturer and known under the business title “ICI Paints”. The Second Complainant employs over seven thousand people and has nineteen manufacturing sites in North America and the First Complainant has some six hundred and sixty company owned paint stores for professional painters and contractors in North America.
5. Parties’ Contentions
The Complainants contend that the disputed Domain Names are identical or confusingly similar to their registered trade marks and their common law trade marks particularly in the United States of America. Each of the Domain Names in dispute contains a trade mark and a generic term relating to the activities of users of the product sold under the Complainants’ Trade Marks. Specifically there is a contention that the facts sufficiently establish identity and confusing similarity for the purposes of the Policy and the Complainants refer to Magnum Piering Inc v The Mudjackers and Garwood S. Wilson Sr. WIPO Case No. D2000-1525.
Secondly, the Complainants contend that rights in the word “Glidden” predate the registrations of the disputed Domain Names and that the Respondent therefore has no rights or legitimate interests in respect of the Domain Names.
Thirdly, the Complainants contend that the Domain Names in dispute were registered and are being used bad faith and allege that the Respondent was aware that in registering the Domain Names in dispute it was misappropriating the variable Intellectual Property of the first Complainant and its subsidiaries including the second Complainant, and in support rely on the redirection of enquiries of internet users of websites relating to the Domain Names in dispute.
More specifically the Complainants contend that the Respondent’s use is intentionally attempting to attract for commercial gain internet users to the Respondent’s Domain Names or the Respondent’s website is creating a likelihood of confusion with the Complainants’ Trade Marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have established that they have rights in the registered Trade Mark GLIDDEN and the Domain Names in dispute are all characterised by this Trade Mark with a generic and non-distinctive suffix. Accordingly the Domain Names in dispute are all identical or confusingly similar to the Trade Mark in which the Complainants have rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) the Respondent has the opportunity to establish rights or legitimate interests and they may do so generally or by evidence which is within one or more of the non-limiting examples set out in paragraph 4(c). In this case the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests. The websites with the Domain Names appear to disclose sponsored links e.g. promoting products competing with the Complainants’ products. There has been no response and the Panel therefore finds the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The third element to be established by the Complainants is that the Domain Names have been registered and are being used in bad faith.
Paragraph 4(b) sets out four non-limiting circumstances which if established are evidence of registration and use of the Domain Name in bad faith.
Subparagraph (iv) is particularly relied upon by the Complainants, namely the conduct in both registering and using the Domain Names in dispute is such the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your website or location or the product or service on your website or location.”
The Panel is satisfied that because the Complainants have become widely known internationally and particularly in the United States of America in relation to the Trade Mark GLIDDEN relating to the paints industry, the Respondent must have been fully aware of that reputation and its motives in applying for the present Domain Names in dispute and their usage amounts to a clear example of bad faith within the meaning of the Policy and the Panel finds this third element is established.
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 names <gliddenpainter.biz>, <gliddenpainter.com>, <gliddenpainter.info>, <gliddenpainter.net>, <gliddenpainter.org>, <gliddenpainters.biz>, <gliddenpainters.com>, <gliddenpainters.info>, <gliddenpainters.net> and <gliddenpainters.org> all registered with GoDaddy.com, Inc., be transferred to the First Complainant, as requested in the Complaint.
Date: May 8, 2008