WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Jung Chang Seap
Case No. D2016-0596
1. The Parties
The Complainants are The Dow Chemical Company ("Dow") of Midland, Michigan, United States of America ("United States") and E. I. du Pont de Nemours and Company ("DuPont") of Wilmington, Delaware, United States, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Jung Chang Seap of Jinjusi, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names, <dowduchemical.com>, <dowdu.net>, <dowdupontchemical.com>, <duchemical.com>, <dudowchemical.com>, <dudow.net>, and <dupontdowchemical.net>, are registered with Gabia, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
On April 1, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain names is Korean. On April 4, 2016, the Complainant requested for English to be the language of the proceeding. On April 8, 2016 and April 11, 2016, the Respondent requested in English for a "complaint form" to be sent in Korean, but did not otherwise request a language for the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Center received a total of five email communications from the Respondent on between the dates of April 7, 2016 and May 2, 2016.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on May 20, 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. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to June 29, 2016, and the Parties were so notified.
4. Factual Background
The Complainants Dow and Dupont are two of the largest chemical and engineering companies in the world, and shares of both Complainants are publicly traded on the New York Stock Exchange. Dow employs approximately 49,500 people in 35 countries, and had sales of nearly USD 49 billion in 2015. Dupont employs approximately 64,000 people in around 90 countries, and had sales of USD 25.1 billion in 2015.
On December 8, 2015, news of a possible merger between Dow and DuPont was widely reported by the media.
On December 9, 2015, the disputed domain name <duchemical.com> was registered, and on the next day, the disputed domain names <dowdu.net>, <dudow.net>, and <dudowchemical.com> were registered.
On December 11, 2015, Dow and DuPont announced the merger and the name of the new merged company: DowDuPont. On the same day, the disputed domain names <dowduchemical.com>, <dowdupontchemical.com>, and <dupontdowchemical.net> were registered.
The Respondent appears to be a Korean individual with a residence in the Republic of Korea.
5. Parties' Contentions
The Complainants contend that the disputed domain names are identical or confusingly similar to the marks in which the Complainants have rights. Specifically, the Complainant Dow notes that it has owned registrations for DOW since 1921, and the Complainant DuPont states that it has used DUPONT since 1802 and has owned registrations for the mark since 1939. The Complainants assert that the disputed domain names contain the DOW and/or DUPONT trademark in its entirety – or in the case of <duchemical.com>, an obvious abbreviation of the DUPONT mark, "du" – and therefore, the disputed domain names are confusingly similar to the trademarks of the Complainants.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names, and confirm that they have not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainants contend that the disputed domain names were registered and used in bad faith. The Complainants assert that the timing of the registration of the disputed domain names is compelling evidence of the Respondent's opportunistic bad faith.
The Respondent did not formally reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both Parties have had an opportunity to argue their position on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a Response.
The Respondent's emails to the Center show that he is quite proficient in the English language. Besides, both Parties were given the opportunity to submit arguments in the language of their preference, but the Respondent neither raised an objection as to language nor submitted any arguments whatsoever in these proceedings.
Under these circumstances, the Panel finds it proper and fair to render this decision in English in this case.
B. Identical or Confusingly Similar
The Complainant Dow has around 1,800 trademark registrations for DOW, THE DOW CHEMICAL COMPANY, and other DOW-based marks in 166 jurisdictions, including the Republic of Korea. Further, the Complainant DuPont has nearly 1,000 trademark registrations for DUPONT and DUPONT-based marks in around 126 jurisdictions around the world, including the Republic of Korea.
As the disputed domain names <dowdupontchemical.com> and <dupontdowchemical.net> contain "dow" and "dupont", they are confusingly similar to the Complainants' trademarks, and the name of the new company, "DowDuPont". The additional term "chemical" only increases the likelihood of confusion; first, the term is descriptive of the goods and services of the Complainants, and further, the Complainant Dow is known as and has trademark registrations for THE DOW CHEMICAL COMPANY. Therefore, there would likely be confusion should the Respondent be allowed to maintain registrations to these disputed domain names.
For similar reasons, the Panel also finds that the disputed domain names <dudowchemical.com>, <dowduchemical.com>, <dowdu.net>, and <dudow.net> are confusingly similar to the trademarks of the Complainant Dow. Each of these disputed domain names entirely incorporate the trademark DOW.
While the bad-faith intentions in the registration of <duchemical.com> are rather clear in view of the overall circumstances, each disputed domain name must be viewed and considered independently, and this disputed domain name cannot be said to be confusingly similar to the trademarks owned by the Complainants. DuPont's rights to DUPONT cannot be reasonably expanded to cover uses of DU alone, a term that can also be viewed as a simple French article. Further, there is no evidence that would suggest that DUPONT is commonly abbreviated or referred to as DU alone.
For the reasons mentioned above, the Panel finds that the first element has been established with respect to the disputed domain names <dowduchemical.com>, <dowdu.net>, <dowdupontchemical.com>, <dudowchemical.com>, <dudow.net>, and <dupontdowchemical.net>, but not for <duchemical.com>.
C. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainants have made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating his rights or legitimate interests in the disputed domain names. However, the Respondent in this case has chosen to file no formal response. In an informal email reply, the Respondent simply states that he has rights to the disputed domain names because he paid for them – an assertion that is entirely inadequate to defend on this point. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element has been established.
D. Registered and Used in Bad Faith
The Panel finds that there are more than sufficient reasons to find bad faith registration and use of the disputed domain names in this case.
First, given the fame associated with the DOW and DUPONT trademarks, it is highly unlikely for the Respondent to have registered the disputed domain names without being aware of the Complainants and their businesses. Rather, based on the timing of registrations for the disputed domain names, and the fact that the disputed domain names consist of various combinations of the Complainants' names, it is more likely that the Respondent learned of the impending merger and registered the disputed domain names with the intended purpose of selling them to the Complainants for a profit.
Further, in the Respondent's communications with the Center after receiving the Complaint, he offered to sell the disputed domain names to the Complainants for KRW 300 million (approx. USD 270,000). This amount is clearly well in excess of any out-of-pocket costs the Respondent may have reasonably incurred in registering and maintaining the disputed domain names, and yet another indication of the Respondent's bad faith (see, paragraph 4(b)(i) of the Policy).
For the reasons given above, the Panel finds that the third and final element has been sufficiently established.
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 names, <dowduchemical.com>, <dowdu.net>, <dowdupontchemical.com>, <dudowchemical.com>, <dudow.net>, and <dupontdowchemical.net> be transferred to the Complainants.
The Complaint is denied for the disputed domain name <duchemical.com>.
Date: July 13, 2016