WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sherwin-Williams Company v. Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC
Case No. D2015-2052
1. The Parties
Complainant is The Sherwin-Williams Company of Cleveland, Ohio, United States of America, represented internally.
Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sherwinwilliamsautomotive.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2015. On November 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 Complainant on December 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 14, 2015
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on January 18, 2016. 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
Complainant is the largest coatings manufacturer in the United States, and the third largest in the world. Its various types of paints and coatings are used in many markets, including the automotive industry. Its Automotive Finishes Division manufactures and sells automotive finishes in North America, Europe, and Asia/Pacific, including Australia. The division made USD 765 million in 2014.
Complainant has used the mark SHERWIN-WILLIAMS on its products since 1871. Complainant or its subsidiaries own 118 trademark registrations dating back to 1968 and 24 pending applications in nearly 100 countries. The SHERWIN-WILLIAMS mark is well known throughout the world.
Complainant registered the domain name <sherwin-williams.com> as its principal website, and <sherwin-automotive.com> for its Automotive Finishes division.
Respondent registered the disputed domain name <sherwinwilliamsautomotive.com> on May 17, 2005; it expires on May 17, 2016.
Complainant sent to Registrar and Respondent a notice about Complainant’s marks and a request to cease and desist on August 13, 2015 and October 12, 2015. It did not receive a response.
5. Parties’ Contentions
Complainant asserts that it has rights in the SHERWIN-WILLIAMS trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s SHERWIN-WILLIAMS mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is that the hyphen has been deleted, and the common word “automotive” has been added. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns 118 trademark registrations for the SHERWIN-WILLIAMS mark.
The disputed domain name is confusingly similar to Complainant’s SHERWIN-WILLIAMS mark. It contains Complainant’s SHERWIN-WILLIAMS mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the common word “automotive”. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from Complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Additionally, numerous previous UDRP decisions have held that the addition or deletion of a hyphen cannot avoid a finding of confusing similarity. See, Hertz System, Inc., Hertz Equipment Rental Corp. v. Vasilina Fedotova, WIPO Case No. D2012-2526.
Accordingly, the Panel finds that Complainant has rights in the SHERWIN-WILLIAMS mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing that the respondent lacks rights or legitimate interests where there has been no response.
Complainant has exclusive rights in the SHERWIN-WILLIAMS mark and has not authorized Respondent to use its mark, register and use the domain name <sherwinwilliamsautomotive.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the SHERWIN-WILLIAMS mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name for a bona fide offering of goods or services. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, the SHERWIN-WILLIAMS marks are protected by 118 United States and international trademark registrations dating back several decades. Complainant has used the SHERWIN-WILLIAMS mark for its products since 1871. All of this obviously occurred well before Respondent registered <sherwinwilliamsautomotive.com> on May 17, 2005.
The disputed domain name reverts to a parked domain with links to other commercial sites, which relate to paint and to automotive products sold by competitors of Complainant. Further, Respondent’s Registrar requires its registrants to categorize the domain name to ensure that traffic from the domain name is directed to an advertiser dealing in goods and services that have a logical connection to the domain name. It seems obvious, or at least likely, that Respondent categorized the disputed domain name as relating to paint, including SHERWIN-WILLIAMS paint.
Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Respondent registered the disputed domain name with a pay-per-click (PPC) service provider, in order to generate revenue from the diverted traffic. The disputed domain name reverts to a landing page that displays links to third-party websites. Visitors to the disputed domain name are redirected to competitors in two ways. First, they may be redirected to an internal page of the Home Depot website, which displays paint and paint-related products of other paint manufacturers. Alternatively, they may be redirected to the website of the Registrar’s affiliate displaying a list of paint-related categories, including “Automotive Paint” and “Sherwin Williams Paint.” Clicking on a link redirects the Internet user to a list of PPC advertisements for other sites operated by third-party competitors. Further, Respondent’s categorization of its domain name as automotive or paint-related was intended to increase the likelihood that misdirected Internet users would click on those links, which would provide PPC revenue to the Registrar and to Respondent. Respondent’s website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant’s competitors sell similar goods and services. This creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a product or service. It has long been held that this type of click through revenue contravenes the Policy under paragraph 4(b)(iv). See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Additionally, Complainant sent Respondent notice about Complainant’s marks and a cease and desist letter on August 13, 2015, and on October 12, 2015. Respondent therefore was made aware of Complainant’s rights in the SHERWIN-WILLIAMS mark and Complainant’s demand that it transfer the disputed domain name to Complainant. A failure of a respondent to respond to a cease and desist letter has been further considered relevant in finding of bad faith (see, News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
The Panel finds that Respondent has used the domain name in bad faith under paragraph 4(b)(iv) 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 <sherwinwilliamsautomotive.com> be transferred to the Complainant.
Sandra A. Sellers
Date: February 1, 2016