WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation
Case No. D2015-1208
1. The Parties
The Complainant is Occidental Chemical Corporation of Dallas, Texas, United States of America ("U.S."), represented by Renner, Kenner, Greive, Bobak, Taylor & Weber, U.S.
The Respondents are Contact Privacy Inc. Customer 0126942866 of Toronto, Canada and Paolo Martin, Oxychem Corporation of Mandaluyong, Republic of the Philippines ("Philippines"), internally represented.
2. The Domain Name and Registrar
The disputed domain name <oxychemcorp.com> (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2015. On July 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 14, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint (adding the second Respondent to the Complaint) on July 17, 2015.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceeding commenced on July 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 12, 2015.
On August 16, 2015, the Center received a response from Oxychem Corporation ("Second Respondent"). On August 17, 2015, the Center acknowledged the Second Respondent's late Response and correctly informed the Second Respondent that the Panel, once appointed, would decide whether to admit and consider the Response.
The Center appointed John Swinson as the sole panelist in this matter on August 26, 2015. 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 Occidental Chemical Corporation, a North American manufacturer of chemical products necessary for a variety of products such as plastics, pharmaceuticals and water treatment chemicals. The Complainant has manufacturing facilities in the U.S., Canada and Latin America. It is a wholly owned subsidiary of Occidental Petroleum Corporation ("Complainant's controlling entity"), a large international oil and gas exploration and production company publicly traded on the New York Stock Exchange (under the designation "OXY") since 1964 with operations in the U.S., Middle East region and Latin America.
The Complainant is the owner of trade mark registrations in over 50 countries for the term "OXYCHEM" for various chemical products and associated services (the "Trade Mark"). The first Trade Mark registration was filed on October 3, 1986 and registered in September 22, 1987 (U.S. Registration Number 1457861).
The Complainant's controlling entity also owns trade mark registrations in many countries for the term "OXY", including a Registered Community Trademark No. 000804625 for the following logo (the "OXY Logo"):
The Complainant's controlling entity owns domain name registrations for <oxy.com> (created February 17, 1992) and <oxychem.com> (created September 7, 1995). The Complainant and Complainant's controlling entity's principal websites are associated with these domain names.
The First Respondent is the privacy service, Contact Privacy Inc. Customer 0126942866 and the Second Respondent is Paolo Martin, Oxychem Corporation of Mandaluyong, Philippines. Hereafter, the Second Respondent will be referred to as the Respondent. The First Respondent took no active part in this dispute.
The Respondent is a corporation registered under the laws of the Philippines. The Respondent asserts that it is a manufacturer and distributor of cleaning and industrial chemical products for use by small to medium size businesses (such as restaurants, laundry services and water stations) and in connection with sanitation and preventive maintenance in the institutional and industrial sectors. The Respondent states that it operates approximately a dozen outlets and distribution centers, all located in the Philippines.
The Disputed Domain Name was created on March 19, 2009. The Disputed Domain Name currently resolves to a website advertising cleaning chemical solutions for small and medium industries ("Associated Website").
5. Parties' Contentions
The Complainant's contentions are as follows.
Identical or confusingly similar
The Complainant claims both registered and common law rights in the Trade Mark. The Complainant submits it coined the distinctive term "OXYCHEM" and first adopted the Trade Mark on or about September 1968.
The Complainant claims the Disputed Domain Name is identical or confusingly similar to the Trade Mark as it incorporates the entirety of the Trade Mark and the generic abbreviation "corp". The Complainant submits that the common abbreviation "corp" is insufficient to distinguish the Disputed Domain Name from the Trade Mark. The Complainant refers to the principle applied in Six Continents Hotels, Inc. v. Asia Ventures, WIPO Case No. D2003-0659; and Museum of Science v. Asia Ventures, Inc., WIPO Case No. D2003-0691 that "when a domain name wholly incorporates a Complainant's mark and adds a generic word, that is sufficient to establish confusing similarity for the purposes of the Policy".
The Complainant also submits that the generic Top-Level Domain (gTLD) suffix ".com" is equally unable to be relied upon for distinction as it is well established that ".com" has no relevant distinguishing function.
Not only are the Disputed Domain Name and Trade Mark confusingly similar, but the Disputed Domain Name is associated with a website that advertises industrial chemicals. This, together with the prominent display of the Trade Mark and a logo that is confusingly similar to the OXY Logo on the Associated Website significantly heighten the likelihood of confusion.
Rights or Legitimate Interests
The Complainant submits that that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the reasons below.
- The Disputed Domain Name is not used in connection with a bona fide offering of goods or services
To make out this claim, the Complainant refers to the facts that the Associated Website's homepage includes prevalent click advertising; that no products can be purchased on the Associated Website; and that the only legitimate services the Associated Website appears to advertise are the retail environments referred to under the brand name "Power Clean Chemicals," not Oxychem Corporation.
- It cannot be said that the Respondent is commonly known by the Disputed Domain Name
The Complainant states that the actual brand name and moniker under which the goods or services are provided is "Power Clean Chemicals" and that the name "Oxychem Corporation" appears to be merely an ancillary term that is most likely employed on the Associated Website by the Respondent to draw upon the fame, goodwill and reputation of the Complainant.
- The Respondent has not made legitimate noncommercial or fair use of the Disputed Domain Name
The Complainant states the use of the Complainant's registered marks on the Associated Website is not authorized. Further, given the Respondent registered the Disputed Domain Name only after the Complainant had established significant fame and goodwill throughout the world, it is submitted that it is unlikely the Disputed Domain Name was selected by accident, instead it was aimed at intentionally creating ambiguity with the Trade Mark.
The Complainant has also annexed a decision of the Philippines Intellectual Property Office (Occidental Chemical Corporation v. OxyChem Corporation, IPC No. 14-2011-00285, dated December 5, 2014) which upheld an opposition by the Complainant to an application of the Respondent for the following stylized trade mark:
The Complainant asserts that while the Complainant's Philippines' trade mark registration referred to in that decision lapsed in 2013, the sustained opposition is further evidence that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Registration and use in bad faith
The Complainant submits that because of its global trade mark portfolio and international presence in the chemical industry for over two decades, the Respondent must have been aware of the Complainant and the Trade Mark when it registered the Disputed Domain Name and that it was undoubtedly chosen by the Respondent in an effort to garner a free-ride off of the fame and goodwill associated with the Trade Mark.
The Complainant submits that the Respondent has registered and maintained the Disputed Domain Name in bad faith for the following reasons:
- The Respondent knew or should have known of the Complainant's trade mark rights prior to registering the Disputed Domain Name. The Complainant has had an Internet presence since at least 1995, has operated to provide chemical products via the Internet since at least October 25, 2000, and owned registrations for the Trade Mark throughout the world prior to the Respondent's registration of the Disputed Domain Name.
- The Respondent's use of the Disputed Domain Name is an intentional attempt to misdirect and/or divert, for commercial gain, Internet users to the Associated Website or other on-line location, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name.
- The Disputed Domain Name is used by the Respondent to display prevalent click-type advertising and thus earn commissions for advertising-type fees based on the (false) association with the Trade Mark.
The Respondent has made a number of submissions which are not relevant to the elements of the Policy. Only those which are relevant to the Panel's consideration are set out below.
Identical or Confusingly Similar
The Respondent submits that while the Respondent is the leading cleaning and industrial manufacturer and distributor in the Philippines, there is no evidence that the Complainant is known in the Philippines.
In any event, the word "OXYCHEM" cannot be directly attributed to the Complainant because the word "OXY" cannot be associated with the word "OCCIDENTAL". Rather the word "OXY" is an abbreviation of the word "OXYGEN" and is used as a prefix or a combining form denoting sharpness (the Respondent refers to Dictionary.com). In addition, the word "CHEM" is a generic abbreviation of the word "Chemical" and also cannot be owned exclusively by the Complainant.
The Disputed Domain Name <oxychemcorp.com> is an abbreviation taken from "OXYCHEM CORPORATION" which is the business name of the Respondent (while the Response states that it annexes a copy of a Philippine Securities and Exchange Commission Certificate of Registration, the Respondent has not in fact provided this document. In any event the Panel is willing to accept that such a document exists).
The logo displayed on the Associated Website does not lead to confusion as it differs "in color, sketch and wordings" from that of the Complainant.
The Trade Mark is being used by the Complainant to denote a product whilst the Disputed Domain is being used as the business name of the Respondent.
Rights or Legitimate Interests
The Respondent claims that the Disputed Domain Name is being genuinely used in reference to the Respondent's business name "OXYCHEM CORPORATION". It submits it is a duly registered domestic corporation existing under and by virtue of Philippine laws and that it maintains a legitimate business of manufacturing and distributing basic cleaning chemicals, specialty cleaning chemicals and preventive maintenance chemicals in the Philippines.
Registration and Use in Bad Faith
The Respondent claims its business name and goodwill was established in the Philippines since as early as 2002 and that the Complainant's products are unknown in the Philippines. The Respondent therefore submits it is not the case that the Disputed Domain Name was registered or acquired primarily for the purpose of transferring to the Complainant for valuable consideration, or to misdirect and/or divert, Internet users to the Associated Website and ride upon the alleged fame and goodwill of the Complainant.
The Respondent claims that its acquisition of the Disputed Domain Name was made in good faith because it had no knowledge of and did not participate in the creation of the Disputed Domain Name, rather it acquired it at a later date. The Respondent states that it acquired the Disputed Domain Name on March 24, 2015 (which is supported by the Disputed Domain Name WhoIs record that states that it was updated on March 24, 2015).
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
Notwithstanding the Respondent's failure to submit his Response in a timely fashion, the Panel considers it appropriate to exercise its discretion under Paragraph 10 of the Rules to admit and consider the Response.
The Response was received by the Center prior to the appointment of the Panel and was properly transmitted to the Complainant. The Response was filed five days late due to what appears to have been a misunderstanding by the Respondent as to the time limits applicable under the Rules. The Panel considers that ordinarily the circumstances that must be shown for a late submission to be accepted are strict and require an "exceptional case" (as expressed in HQUK Limited v. Head Quarters, WIPO Case No. D2003-0942). Although the Panel does not consider that a party's misunderstanding as to the applicable time limits would usually satisfy this requirement, the Panel believes that consideration of the Response will serve the interests of justice, by affording the Respondent a full opportunity to be heard, and that, in the circumstances, such consideration will neither prejudice the Complainant nor engender delay in the proceedings. Accordingly, the Panel exercises its discretion to admit the Response and its contents will be taken into account by the Panel.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Complainant's Trade Mark. The Trade Mark has been combined with common abbreviation "corp" and is wholly incorporated in the Disputed Domain Name. Given the Complainant's business name is "Occidental Chemical Corporation", this term can be readily associated with the Complainant and its business. It is also more likely than not that a person would interpret the abbreviation "corp" as subordinate to the Complainant's Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., Statoil ASA v. N/A Alex, WIPO Case No. D2013-0713).
It is well established that the gTLD ".com" is typically not sufficient to separate a domain name from a mark under the Policy.
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to demonstrate that it has rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case and that the Respondent has not refuted this case.
The Disputed Domain Name was not used in connection with a bona fide offering of goods or services
By using the Associated Website for the provision of information about chemical products and distributors, the Respondent does appear to have been using the Disputed Domain Name in connection with the offering of products or services. However the question is whether the use, before any notice of the dispute, has been in connection with a bona fide offering of those products or services.
Based on the very significant degree of renown of the Complainant and the Respondent's failure to explain the circumstances in which its business name was chosen, or to demonstrate legitimate use prior to the date of the dispute, the Panel concludes that the Respondent's use of the Disputed Domain Name was not in connection with a bona fide offering of goods or services.
This conclusion is supported by the following observations regarding the Respondent's use of the Associated Website: (a) from the photographs of the "distribution outlets" depicted on the Associated Website, it appears the actual brand name associated with the Respondent's goods or services is "Power Clean"; (b) the Associated Website's homepage includes prevalent pay-per-click advertising, including one that recites "Advertisement click earn money" (thus increasing the Respondent's incentive to obtain high traffic on the Associated Website); (c) the display on the Associated Website of the logo below, which is strikingly similar to the OXY Logo; and (d) the fact that the Respondent must have been aware of the Complainant's pre-existing rights in the Trade Mark (as found by the Panel in Part D below).
It cannot be said that the Respondent is commonly known by the Disputed Domain Name
The Complainant claims that, based on the Associated Website, the actual brand name and moniker under which the Respondent provides goods and services is "Power Clean Chemicals".
The Respondent has offered no evidence to rebut this contention except to assert that it is entitled to use the "OXYCHEM" name as it has registered it as a business name in the Philippines. However, the fact that a respondent has registered a business name does not, of itself, establish that the Respondent has used the business name or that it has become commonly known by it.
The Respondent claims it has established its business and goodwill since as early as 2002 and that it is the "leading cleaning and industrial manufacturer and distributor in the Philippines". However, the Respondent has not provided any evidence in support of such reputation generally, and more importantly, demonstrating that the Respondent's business reputation is commonly associated with the Disputed Domain Name. The Panel would have expected the Respondent to provide evidence such as records of sales, advertisements, business records and the like under the name "Oxychem Corporation", but no such evidence was provided.
In the case of Sanderling Pty Ltd trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385, it was said:
"The Panel is mindful of the need to take care when considering claims by respondents that they have 'been commonly known' by an at-issue domain name. It is a claim which is very easily made, and of course if the claim is upheld it is sufficient on its own to defeat a complainant's complaint under the Policy. The Panel agrees with the approach adopted by the Panel in Banco Espirito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, where the Panel said:
'Since a 'legitimate interest' is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has 'been commonly known' by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been 'commonly known' by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname 'Red Bull' since childhood because Respondent did not provide any evidence to support contention. See also, e.g., DIMC, Inc. & The Sherwin-Williams Company v. Mr. Q Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname 'Krylon' due to absence of evidence when alleged nickname was adopted and how it was used.'"
Applying a careful approach in this case, the Respondent's evidence falls well short of showing that the Respondent's business is commonly known by the Disputed Domain Name. Use of the term "Oxychem Corporation" on the Respondent's website does not of itself prove that the Respondent is "commonly known by that name". Most of the Respondent's website suggests that the Respondent is operating a business under the trading name "POWER CLEAN".
Quite apart from those considerations, which relate generally to the quality of the evidence which is necessary to establish the "commonly known by" defense, the Panel has come to the view that the Disputed Domain Name was registered by the Respondent in bad faith (the reasons for that view are set out in part D below), and accordingly, it is difficult in such circumstances for a respondent to establish a defense under policy Paragraph 4(c)(ii). Compare Neteller plc v. Prostoprom, WIPO Case No. D2007-1713, where the panel stated that it cannot be the case that a cybersquatter who registered a domain name in bad faith should be able to "create" a defense under policy Paragraph 4(c)(ii) "by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy. In the Panel's view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration".
The Respondent has simply provided no evidence of that it was commonly known as "Oxychem Corporation" as at the date at which it acquired the Disputed Domain Name.
The Respondent has not made legitimate noncommercial or fair use of the Disputed Domain Name
There is nothing in the record to suggest that the Respondent might have rights or a legitimate interest under paragraph 4(c)(iii) of the Policy. The Respondent's website is commercial in nature, so the Respondent cannot bring himself within the "without intent for commercial gain" wording of paragraph 4(c)(iii) of the Policy. Further, the Panel's finding of bad faith (below) also means that the Respondent's use of the Disputed Domain Name cannot be regarded as "fair", or "legitimate", for the purposes of Policy paragraph 4(c)(iii).
For the reasons set out above, the Panel considers that the Respondent has not rebutted the prima facie case made out by the Complainant. The Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Names in bad faith.
The Complainant commenced operating in the 1960s. The Complainant's name and Trade Mark has considerable renown attaching to it worldwide and was long established prior to the creation of the Disputed Domain Name or the acquisition by the Respondent of the same. It has held registered trade marks for OXYCHEM since 1987 and has had an Internet presence since 1995. The Complainant's official website is hosted at a domain name which is, aside from the Respondent's use of the descriptive abbreviation "corp", identical to the Disputed Domain Name. The Complainant currently owns trade mark registrations in over 50 countries for "OXYCHEM". The Complainant has evidently spent a great deal of time and money on protecting its brands.
The Respondent asserts it acquired the Disputed Domain Name in March 2015 and is not responsible for use of the Disputed Domain Name prior to that date.
As at March 2015, the decision of the Philippines Intellectual Property Office (dated December 5, 2014) had been delivered. Therefore there is no doubt that the Respondent knew of the Complainant and the Trade Mark. The Philippines Intellectual Property Office refused to allow the Respondent's Trade Mark Application for a stylized logo comprising of the term "OXYCHEM" on the basis that the Complainant had, as at July 23, 2009, a trade mark registration in the Philippines for "OXYCHEM" for (amongst others) industrial chemicals which it was using or intending to use. In support of its opposition, the Complainant had annexed evidence showing it had sold products bearing the Trade Mark in the Philippines.
Further, in light of the significant reputation of the Complainant and the Trade Mark it is more than likely that the Respondent had knowledge of both the Complainant and the Trade Mark even prior to the date it acquired the Disputed Domain Name. In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Names in bad faith.
As discussed in relation to bona fide use above, the Respondent's subsequent use of the Associated Website has not been in good faith. Rather the Respondent appears to have been (and to currently be) using the Disputed Domain Name predominantly as an attempt to misdirect and/or divert Internet users to the Associated Website, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name.
For these reasons, the Panel finds that the Respondent has registered and subsequently used the Disputed Domain Name in bad faith and the Complainant also succeeds under this element 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 <oxychemcorp.com> be transferred to the Complainant.
Date: September 9, 2015