WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Dow Chemical Company and E. I. du Pont de Nemours and Company v. Mario Rojas Serra

Case No. D2016-0595

1. The Parties

Complainants are The Dow Chemical Company (“Dow”) of Midland, Michigan, United States of America and E. I. du Pont de Nemours and Company (“DuPont”) of Wilmington, Delaware, United States of America, represented by The GigaLaw Firm, United States of America.

Respondent is Mario Rojas Serra of Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name is <dowdupontchemicals.com> which is registered with GoDaddy.com, LLC (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 name. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2016.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 6, 2016. This Panel finds that it was properly constituted. This 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

Dow has rights over the DOW and DOW and design trademarks for which it holds, among others, the following trademark registrations: (i) No. 0140588 with the United States Patent and Trademark Office (“USPTO”), registered on March 22, 1921 in classes 1, 2, 3, 4 and 5, with stated first use in commerce in 1895; (ii) No. 150740 with the People’s Republic of China Trademark Office (“PRCTO”), registered on September 30, 1981 in class 3; and (iii) No. 14307915 with the PRCTO, registered on June 7, 2015 in class 31.

DuPont has rights over the DUPONT and DUPONT and design trademarks for which it holds, among others, the following trademark registrations (i) No. 0367414 with the USPTO, registered on May 16, 1939 in class 4, with stated first use in commerce in 1926, and (ii) No. 3741509 with the USPTO, registered on January 26, 2010 in classes 1, 3 and 17.

DuPont is the registrant of the domain name <dupont.com> which was created on July 27, 1987.

Dow is the registrant of the domain name <dow.com> which was created on December 10, 1992.

On December 8, 2015, several media provided press coverage on the merger discussions of Complainants.

The disputed domain name was created on December 9, 2015.

On December 11, 2015, Complainants publicly announced their merger plan.

5. Parties’ Contentions

A. Complainants

Complainants’ assertions may be summarized as follows.

Dow, founded in 1897, is one of the world’s largest chemical companies, and its stock is publicly traded in the New York Stock Exchange. In 2015, Dow had annual sales of nearly USD 49 billion and employed approximately 49,500 people worldwide. Dow’s more than 6,000 product families are manufactured at 179 sites in 35 countries across the globe. Dow owns at least 1,845 registrations in at least 166 countries or geographic regions worldwide for trademarks that consist of or contain the trademark DOW.

DuPont, founded in 1802, is one of the most successful science and engineering companies in the world, and its stock is publicly traded in the New York Stock Exchange. In 2015, DuPont had annual sales of USD 25.1 billion and employed approximately 64,000 people worldwide with operations in about 90 countries. The trademark DUPONT has been used continuously since DuPont was formed, and today DuPont owns at least 955 registrations in at least 126 countries or geographic regions worldwide for trademarks that consist of or contain the DUPONT trademark.

On December 11, 2015, Dow and DuPont announced that their boards of directors approved a definitive agreement under which the companies will combine in an all-stock merger. Upon closing of the transaction, the combined company would be named DowDuPont.

On December 8, 2015, one day prior to Respondent’s registration of the disputed domain name, the Dow‑DuPont merger was widely reported by the media worldwide (The New York Times, The Wall Street Journal, Reuters, Bloomberg, USA Today, Fortune).

Two days prior to their public announcement of the merger, Complainants registered (via a third party to protect the confidentiality of the merger announcement) the domain name <dowdupontunlockingvalue.com>. This domain name is used by Complainants to provide information about their merger, including information about DowDuPont Inc. (f/k/a Diamond-Orion HoldCo, Inc.), a holding company jointly owned by Complainants to facilitate the merger.

Respondent registered the disputed domain name on December 9, 2015 - one day after Complainants’ merger discussions received extensive press coverage and the same day on which Complainants registered the domain name <dowdupontunlockingvalue.com>, and two days before Complainants publicly announced their merger.

Complainants have a common grievance against Respondent since the disputed domain name contains two trademarks, one owned by Dow and the other by DuPont; thus Respondent has engaged in a conduct that has affected Complainants’ individual rights in a similar fashion.

The disputed domain name is confusingly similar to either the DOW and/or the DUPONT trademarks. The disputed domain name contains the DOW and DUPONT trademarks in their entirety. The inclusion of two parties’ trademarks in the disputed domain name does nothing to dispel any confusing similarity. The inclusion of the word “chemicals” in the disputed domain name is irrelevant because the addition of such descriptive term to a trademark in a domain name is generally deemed insufficient in itself to avoid a finding of confusing similarity.

Respondent has no rights or legitimate interests in the disputed domain name. Complainants have never granted, licensed, sold, transferred or in any way authorized Respondent to register or use the DOW or the DUPONT trademarks in any manner. To Complainants’ knowledge, Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.

As numerous UDRP panels have established, the passive holding of a domain name does not constitute a bona fide offering of goods or services. By apparently failing to use the disputed domain name in connection with an active website, Respondent clearly has not used the disputed domain name “in connection with a bona fide offering of goods or services” and, therefore, cannot establish rights or legitimate interests.

The disputed domain name should be considered as having been registered and used in bad faith by Respondent.

Each of the DOW and DUPONT trademarks has a strong reputation and is widely known, as shown by Complainants’ substantial (and well-established) trademark portfolios, as well as the history of Complainants’ enforcement of their trademark rights through numerous proceedings under the Policy. Circumstances surrounding registration of the disputed domain name - contemporaneous with the merger announcement of Complainants - allow for an inference of bad faith.

The disputed domain name was created on December 9, 2015 - the same day on which Complainants registered the domain name <dowdupontunlockingvalue.com>, one day after merger discussions between Complainants received extensive press coverage and within two days of the day on which Complainants publicly announced their merger. Such timing is yet another indication of bad faith.

Considering that Dow’s first trademark registration in the United States of America for the DOW trademark was issued in 1921 and that DuPont’s first trademark registration in the United States of America for the DUPONT trademark was issued in 1939, Respondent had constructive notice of the DOW and the DUPONT trademarks and, accordingly, has acted in bad faith.

Given the global reach and popularity of each of Complainants’ services under the DOW and the DUPONT trademarks, respectively, it is inconceivable that Respondent chose the disputed domain name without knowledge of Complainants’ activities and the name and trademark under which each Complainant is doing business. Taking into account the fact that the disputed domain name is so obviously connected with Complainants, Respondent’s actions suggest opportunistic bad faith in violation of the Policy.

Complainants request that the disputed domain name be transferred to DowDuPont Inc. or, alternatively, to both Complainants jointly.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

This Panel considers that it is appropriate to have both Dow and DuPont as Complainants in this procedure since both argue having a common grievance against Respondent, as further shown below in this decision.¹

One of the remedies contemplated under paragraph 4(i) of the Policy is the transfer of the domain name registration to complainant. This Panel notes that such paragraph does not contemplate the transfer of the disputed domain name to a party other than complainant, regardless that this party may be owned directly or indirectly by complainant.

The lack of response from Respondent does not automatically result in a favorable decision for Complainants.² The burden for Complainants, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that 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

It is undisputed that Dow has rights in the DOW trademark and that DuPont has rights in the DUPONT trademark.

The disputed domain name incorporates such trademarks in their entirety, adding a suffix (“chemicals”). The fact that the disputed domain name incorporates two different trademarks is not enough to avoid confusion, nor does the addition of such suffix add anything to avoid confusing similarity with Complainants’ trademarks (see Sopra Group and Steria v. JSP, WIPO Case No. D2014-0673 and Bayer AG v. Privacy Protection Service INC d/b/a PrivacyProtect.org. / Domain Admin, Private Registration Aktien Gesellschaft, WIPO Case No. D2015-1879).

Thus this Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is undisputed that the DOW and DUPONT trademarks are well-known internationally, and that they have been in commerce for many years. Complainants assert that they have never authorized Respondent to use or register the DOW and DUPONT trademarks in a domain name or in any other manner, and that Respondent has never been known by the disputed domain name or acquired any trademark rights in the disputed domain name. Complainants further contend that the disputed domain name points to an inactive website, which cannot be deemed as a bona fide offering of goods or services.

This Panel considers that Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.³ In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainants contend that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.

Taking into consideration Complainants’ international presence, that Complainants’ registration and use of their DOW and DUPONT trademarks preceded the creation of the disputed domain name by a significant number of years, that such trademarks are well-known internationally, and the media coverage of their merger discussions on December 8, 2015, this Panel is of the view that Respondent should have been fully aware of the existence of Complainants, Complainants’ trademarks and merger discussions at the time Respondent obtained the registration of the disputed domain name on December 9, 2015. In sum, it seems that Respondent deliberately targeted Complainants and their DOW and DUPONT trademarks.⁴

Notwithstanding that the disputed domain name does not resolve to an active website, it seems to this Panel that there are no bases to conceive a legitimate use of it by Respondent.⁵ In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) Respondent is using Complainants’ trademarks at the disputed domain name without Complainants’ authorization; (ii) the registration of the disputed domain name took place on the day following the press coverage of Complainants’ merger discussions; (iii) the disputed domain name contains two different trademarks owned by two separate entities, publicly unrelated until Complainants’ merger discussions were the subject of said media coverage; (iv) the lack of Response, which is indicative that Respondent either has no interest in the disputed domain name or lacks arguments and evidence to support its holding of the disputed domain name.

Thus the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the intention to illegitimately benefit from Complainants’ merger and the reputation and goodwill of Complainants’ trademarks, which denotes bad faith registration and use.⁶

In light of the above, this Panel finds that Complainants have satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <dowdupontchemicals.com> be transferred to Complainants.

Gerardo Saavedra
Sole Panelist
Date: May 17, 2016

¹ See section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”).

² See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.

³ See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact.”.

⁴ See Sopra Group and Steria, Supra: “the Panel finds that the Respondent’s registration of the Disputed Domain Name constitutes an opportunistic act by the Respondent with a view to making a profit [...] The Panel finds it highly doubtful that the Respondent would have registered the Disputed Domain Name without having knowledge of the Complainants and/or their merger”.

⁵ See Section 3.2 of WIPO Overview 2.0. See also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Caso No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”.

⁶ In Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., WIPO Case No. D2000-0446, it was established: “the words [...] are so obviously connected with such well-known pharmaceutical companies that their very use by someone with no connection with either of these companies suggests opportunistic bad faith. Particularly so when the domain name registrations were effected so shortly after the merger of Monsanto Company and Pharmacia & Upjohn had been commenced [...] The inference from the Respondent’s joinder of the names of Monsanto and Pharmacia shows it was positioning itself to capitalize on the joinder of two multi-national giants”. In CGNU plc –v- Tess Caffrey/WIPPYWOW, WIPO Case No. D2000-0769, it was established: “Complainant stresses that the domain name was registered coincidental with the announcement of the proposed merger [...] The implication to be drawn by the Panel is that the Respondent was seeking to obtain and take a quick commercial advantage”. See also Shire Biochem Inc., Shire Pharmaceuticals Group plc and Shire International Licensing B.V. v. Syed Hussain, WIPO Case No. D2002-0453: “there is evidence that the Respondent acquired the domain name primarily for the purpose of selling the name to the Complainants [...] Evidence of such an intention might be found in the fact that the domain name was registered on the same day that the merger of Biochem Pharma Inc. and the Shire Pharmaceuticals Group plc was publicly announced”.