WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PPG Industries Ohio, Inc. v. Li Ci He Er Xin Ji (Suzhou) Tu Liao You Xian Gong Si
Case No. D2019-1050
1. The Parties
The Complainant is PPG Industries Ohio, Inc., United States of America (“United States”), represented by Ladas & Parry, United States.
The Respondent is Li Ci He Er Xin Ji (Suzhou) Tu Liao You Xian Gong Si, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <akzo-ppg.com> is registered with Xiamen 35.Com Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2019, 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 May 12, 2019, 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 amended Complaint in English on May 14, 2019.
On May 12, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on May 14, 2019. The Respondent requested that Chinese be the language of the proceeding on May 17, 2019.
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 in English and Chinese of the Complaint, and the proceeding commenced on May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. The Response was filed in Chinese on June 4, 2019. The Center notified the Parties of the Commencement of Panel Appointment Process on June 17, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 26, 2019. 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 a company incorporated in the United States, ranked No. 183 in the Fortune 500, and one of the leading manufacturers of paints and coatings, operating in nearly 70 countries worldwide. The Complainant is the owner of numerous registrations worldwide for the trade mark PPG (the “Trade Mark”), the earliest (United States) registration dating from 1947, which has since become abandoned. The Complainant’s trademark registrations include United States trademark registration No. 0836998 for PPG, registered on October 17, 1967.
The Respondent is a company incorporated in China and a producer of paints and coatings.
C. The Disputed Domain Name
The disputed domain name was registered on May 10, 2017.
D. The Website at the Disputed Domain Name
The disputed domain name is resolved to a Chinese language website, which is an almost identical copy (translated into Chinese) of the English language website of a competitor of the Complainant, AkzoNobel, at “www.akzonobel.com”, save that the “Contact Us” pages contain the contact details of, and promote the business of the Respondent, Li Ci He Er Xin Ji (Suzhou) Tu Liao You Xian Gong Si (利兹赫尔辛基（苏州）涂料有限公司), a paints and coatings producer with offices in China, including Suzhou and Beijing (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent contends that it purchased the disputed domain name properly and legally and that it possesses a registration certificate issued by the Registrar for the disputed domain name.
The Respondent contends that it does not offer for sale the Complainant’s paint products and does not use the Complainant’s logo on the Website.
The Respondent further avers that, if the Complainant is interested in buying the disputed domain name, it should negotiate with the Respondent, and that the purchase price should be high, to reflect the true value of the disputed domain name.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant requested that English be the language of the proceeding for the following reasons:
(1) English is the language most widely used in international relations and is one of the working languages of the Center;
(2) The disputed domain name is formed by letters in Roman characters and not in Chinese script; and
(3) In order to proceed in Chinese, the Complainant would have to retain specialized translation services at a cost likely to be higher than the overall cost of the proceeding.
The Respondent requested that Chinese be the language of the proceeding, as the Respondent is a Chinese enterprise, the official language of China is Chinese, the Respondent’s business scope is in China, and the Respondent does not have English staff.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel notes that the Respondent’s language request was submitted to the Center in both English and Chinese language. The Panel also notes that the Website, albeit a Chinese language website, has been copied from the English language website, “www.akzonobel.com”. The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel therefore determines, under paragraph 11(a) of the Rules, that it will:
(i) Accept the filing of the Complaint and the amended Complaint in English;
(ii) Accept the filing of the Response in Chinese; and
(iii) Render this decision in English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name contains the Trade Mark in its entirety, together with the moniker AKZO used by its competitor in the global paints and coatings business, AkzoNobel. Where a complainant’s trade mark is recognizable within a disputed domain name, the addition of other third party marks is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of nonexhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which is an almost carbon copy (translated into Chinese) of the website of the Complainant’s competitor, AkzoNobel, and which promotes paint products in direct competition with those of the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
The Panel further finds that bad faith has been made out, under paragraph 4(b)(i) of the Policy, in light of the submissions filed by the Respondent in the Response, inviting the Complainant to negotiate for the purchase of the disputed domain name from the Respondent for a high price.
The Panel further finds the Respondent’s flagrant reproduction of the website of the Complainant’s competitor (including the unauthorised use of the trade marks and copyright images used on the “www.akzonobel.com” website) amount to further strong grounds in support of a finding of bad faith as described in paragraph 4(b)(iii) of the Policy.
For the foregoing reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <akzo-ppg.com> be transferred to the Complainant, without prejudice to the rights of AkzoNobel in the moniker AKZO.
Sebastian M.W. Hughes
Dated: July 10, 2019