WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema, Inc. v. Ivan Kenneth Wang
Case No. D2016-1150
1. The Parties
The Complainant is Arkema, Inc. of King of Prussia, Pennsylvania, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is Ivan Kenneth Wang of San Juan City, Philippines.
2. The Domain Name and Registrar
The disputed domain name <kynarpanel.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2016.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on July 12, 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
The facts relevant to the decision in this case are that:
(1) the Complainant produces industrial chemicals;
(2) since 1960 the Complainant has used the trade mark KYNAR in relation to resin based (“PVDF”) coatings;
(3) PVDF resins have a variety of commercial uses and are known to be used with buildings materials including aluminum composite panels;
(4) the trade mark is the subject of, inter alia, United States Patent and Trademark Office (“USPTO”) Registration No. 723,719 filed December 23, 1960 and registered November 14, 1961;
(5) the disputed domain name was registered on June 8, 2010;
(6) the disputed domain name has, in the past, resolved to the website of a Philippines company offering building services and the sale of building products by reference to the trade mark;
(7) pre-Complaint correspondence failed to resolve the dispute; and
(8) there has been no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in KYNAR and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of registration of the trade mark with the USPTO and other national authorities2 and the Panel accepts that the Complainant has trade mark rights.
For the purposes of testing confusing similarity, the generic Top-Level Domain “.com” can be disregarded. The disputed domain name takes the trade mark and adds the ordinary, descriptive word “panel” which is not of source distinguishing value. The trade mark remains the distinctive part of the disputed domain name and so the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(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 a 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.”
There is no evidence that the Respondent has trade mark rights in the disputed domain name. The publicly available WhoIs database identifying the Respondent as registrant does not support any conclusion that the Respondent might be commonly known by the disputed domain name.
Before notification to the Respondent of this dispute the disputed domain name resolved to the website of a Philippines company, incorporated 2004,4 by the name of Kynar Panel Philippines Corporation. That website included the following statement:
“Kynar Panel Philippines Corporation is the exclusive distributor of HUAERTAI Aluminum Composite Panel in the Philippines. Founded in 2004 by a group of businessmen dedicated to providing new age aluminum decorating materials to Philippines, Kynar Panel Philippines Corp. has now grown to be one of the leading suppliers of aluminum composite panel in the country.”
When the Panel attempted to visit that website it was taken down and now appears to resolve from a different domain name.
There is no relationship between the parties, the Complainant has not authorized the Respondent to use its trade mark and in the absence of a Response there is no evidence supplied by the Respondent before the Panel to support a finding that the Respondent was commonly known was the disputed domain name.
Further, there is no evidence that the Respondent has used the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or that there has been legitimate noncommercial use of the name. The resolving website existed for commercial purposes and in the absence of a reasoned Response there is no basis on which the Panel can in this case find that use of the disputed domain name was bona fide. On the contrary, the Respondent appears to have adopted the trade mark both in the disputed domain name, and in its apparent business name, without the authority of the Complainant in order to draw the attention of Internet users to its own services and the building products it distributes under the Huaertai brand.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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.”
The Panel finds that the Respondent’s conduct falls under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The Panel finds that a likelihood of confusion as to source or affiliation is inevitable. Paragraph 4(b)(iv) of the Policy requires an intention for commercial gain on the part of the Respondent. The website resolving from the disputed domain name exists for commercial gain.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant’s request, the Panel orders that the disputed domain name <kynarpanel.com> be transferred to the Complainant.
Debrett G. Lyons
Date: July 23, 2016
1 See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
2 Exhibit K to the Complaint is a schedule of international registrations for KYNAR and KYNAR prefixed trade marks. The list of registrations includes Philippines Trade mark No. 050627 for KYNAR. Otherwise Exhibit K includes a certificate of renewal of that Philippines registration. When the certificate is cross-referenced with the list it corresponds with Philippines Application No. 69915 made on November 6, 1989. The renewal certificate has no filing date information on it, but indicates that the Philippines registration originally claimed convention priority from USPTO reg. no. 723719. That USPTO registration was filed on December 23, 1960 according to the full list. The Philippines renewal certificate incorrectly states December 23,1961, but apart from that discrepancy the convention claim could not be correct. Since nothing seems reliable about the trade marks rights in the Philippines the Panel has instead made a check of online USPTO records and has based this decision on verified rights in USPTO reg. no. 723719.
4 As shown by official government records exhibited to the Complaint.