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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PPG Industries Ohio, Inc v. GY.Luciano (HK) Co.
Case No. D2001-0129
1. The Parties
The Complainant is PPG Industries Ohio, Inc, a Delaware corporation, with a principal place of business at 3800 West 143rd Street, Cleveland, Ohio, 44111, United States of America.
The Respondent is GY.Luciano (HK) Co., a Hong Kong Corporation, with a principal place of business at Rm. 1319, Blk. B, Wah Sang Ind Bldg., 14-18 Wong Chuk Yeung St., FoTan, Shatin, NT, Hong Kong S.A.R China.
2. The Domain Name and Registrar
The domain name, which is the subject of the Complaint, is <cr39.com> registered on May 30, 2000.
The Registrar of the domain name is Network Solutions, Inc. ("NSI").
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a Complaint, which was received by the WIPO Arbitration and Mediation Center ("the Center") via e-mail on January 26, 2001.
(b) On January 29, 2001, the Center transmitted via e-mail to NSI a Request for Registrar Verification in connection with the Complaint. On January 30, 2001, NSI transmitted to the Center, via e-mail, Response from Registrar stating that the registrant is Kim Gujung of the Respondent's address and that the administrative contact for the domain name is Kim Gujung and the Respondent of this address and NSI's 4.0 Service Agreement is in effect.
(c) The Center reviewed the Complaint to verify whether it satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of WIPO ("the Supplemental Rules") as required by Paragraph 4 (a) of the Rules and Paragraph 5 of the Supplemental Rules. The Center acknowledged receipt of the Complaint and notified the Complainant of the following deficiencies on January 31, 2001.
"[x] The Complaint does not include a submission by the Complainant to the jurisdiction of the courts and at least one specified Mutual Jurisdiction, which must be expressly identified, as required by Rules, Paragraph 3 (b) (xiii).
[x] NSI Service Agreement 4.0; According to information we have received from Network Solutions, Inc, the domain-name holder did not submit in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar (NSI) for adjudication of disputes concerning or arising from the use of the domain name(s). Accordingly, the Complainant must first submit, with respect to any challenges to our decision in the administrative proceeding, cancelling or transferring the domain name, to the jurisdiction of the courts at the location of the domain-name holder's address, as specified in Rules, Paragraph 1 and Paragraph 3 (b) (xiii).
According to the information received from the Registrar, the location of the domain name holder's address is Shatin, NT, Hong Kong."
The Complainant was informed that unless the deficiencies specified above were cured within five (5) calender days of the date of the notification, in accordance with the Rules, Paragraph 4 (b), the Complaint would be deemed withdrawn, without prejudice to the submission of a new Complaint by the Complainant.
(d) An amended Complaint was received by e-mail on February 1, 2001, and in hard copy of February 6, 2001 by the Center. The Complainant elected to have the dispute decided by a single member Administrative Panel.
(e) The Center verified that the amended Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules. Payment in the required amount to Center has been made by the Complainant.
(f) On February 6, 2001, the Center sent the Notification of Complaint and Commencement of Proceeding and Complaint to the Respondent by post/courier with enclosures in accordance with the admnistrative contact details for the domain name. The Center advised that the Response was due by February 25, 2001. On the same day, the Center transmitted by fax and by mail copies of the Complaint to the Respondent without the attachments.
(g) No Response was received from the Respondent by the due date of February 25, 2001, save for an e-mail from <email@example.com> which read "PLEASE INFORM US WHAT DO YOU EXACTLY WANT IN A SIMPLE WAY(?)" dated February 8, 2001, to which the Center replied on that date referring to the Center's website for response filing guidelines. On February 28, 2001, Notification of Respondent Default was sent to the Respondent using the same contact details and methods as were used for the Notification of Complaint. No reply by the Respondent to the Notification of Respondent Default was received.
(h) Having received a Statement of Acceptance and Declaration of Impartiality from the Panelist, the Center transmitted to the parties a Notification of Appointment of Administrative Panel on March 27, 2001. The Projected Decision Date was April 11, 2001. The Panelist sought an extension in accordance with Paragraph 15 (b) of the Rules.
(i) Having reviewed the communication records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ all reasonably available means calculated to achieve actual notice to Respondent". As such, the Panelist’s decision is based upon the Complaint, the Policy, the Rules and the Supplemental Rules without the benefit of any substantive Response from the Respondent.
4. Factual Background
The Complainant is PPG Industries Ohio, Inc. It is stated to be the owner of US Trademark Registration No. 708,599 registered on December 20, 1960, for the mark "CR-39" in old US class 6 (now International Class 1) for Allyl Diglycol Carbonate. The Complainant is stated to be the owner of the mark by assignment. A copy of the extract from the Principal Register of the United States Patent and Trademark Office ("USPTO"), the Renewal Certificate and the latest status information from the USPTO database in respect of the mark is provided as Annex 3 to the Complaint. This shows that the owner on December 20, 1980 was PPG Industries, Inc and that the letters and numerals of "CR-39" are in outline lettering.
The Complainant is also stated to own applications and registrations for the mark in 32 other countries set out in the Complaint.
The Complaint states that the mark has worldwide recognition, is distinctive and famous and that the product associated with the mark "CR-39" was a pioneer in the field of optical plastics, as demonstrated from its use starting in the 1940's.
According to the WHOIS database, the Respondent's domain name <cr39.com> was registered on 6 September 1999. The site appears to be inactive.
5. Parties' Contentions
The Complainant contends that the Respondent's domain name <cr39.com> is confusingly similar to the Complainant's trademark "CR-39" and, but for the absence of the ".com" and center dash, identical to the Complainant's mark..
The Complaint states:
"GY.Luciano has registered the domain name <cr39.com> with Network Solutions, Inc. intentionally attempting to attract, for financial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with PPG Industries Ohio, Inc's mark CR-39 as to the source, sponsorship, affiliation, or endorsement of the GY.Luciano <cr39.com> website or location or of optical lenses or equipment on <cr39.com>. Neither GY.Luciano nor its products have been commonly known by the "cr39" name. GY.Luciano intends to gain commercially by misleading and diverting consumers from PPG Industries Ohio, Inc., and its parent PPG Industries, Inc."
No further material is submitted in support of the above propositions.
B. The Respondent
There is no evidence from the Respondent.
6. Discussion and Findings
NSI indicates that the Respondent's domain name registration is subject to NSI Service Agreement Version 4.0 by which the Policy applies to the domain name. Paragraph 4.a. of the Policy requires the Complainant to make out three elements:
A. The "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights"
The domain name in issue is <cr39.com>.
The Complainant is the owner of the mark "CR-39" in the form described above by assignment. The Complainant has also used the mark in connection with optical plastic products and intermediates. The mark has been used with the product of that name since the 1940's.
In these circumstances, the Panelist finds that the domain name <cr39.com> is "confusingly similar" to a trademark in which the Complainant has rights.
B. The Respondent "has no rights or legitimate interests in respect of the domain name"
There is no evidence that the Respondent has rights or legitimate interests in respect of the domain name.
An Internet search by the Panelist of "CR39" with or without a hyphen between the letters "CR" and the figures "39" produced the following information:-
- CR39 was so-called because it was 39th Columbia Resin made by Columbia-Southern Chemical Corporation (the original trademark owner).
- There are a large number of manufacturers in various countries of "cr-39" optical lenses.
- There are a large number of suppliers of eyeglasses with "CR-39 lenses".
- "CR-39" is described as the "special polymer developed for use in eyeglasses", "optical quality plastic" and "CR-39 plastic lenses".
- The Panelist could only find one instance where the trademark was acknowledged (a specification for Homalite H-911 made from "CR-39 ® Monomer" references "*CR-39 as a registered trademark of PPG Industries").
The Panelist notes that the extent to which regard may be had to publicly available material is unclear (eg. Do The Hustle, LLC v. Tropic Web WIPO Case No. D2000-0624). As such, the Panelist has not had any regard to this material save to note that "cr-39" is commonly used to refer to the scratch resistant material from which spectacle lenses are made. No material has been advanced by the Respondent to explain why it has adopted the domain name in issue and, in particular, to clarify whether the use is intended to be descriptive rather than an indication of trade origin or association by using the Complainant's trademark.
If the Panelist finds any of the matters set out in Paragraph 4.c. of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests to the domain name. There is no evidence, before any notice to the Respondent of the dispute, of any 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 in terms of Paragraph 4.c. (i) of the Policy. Further, there is no evidence that the Respondent has been commonly known by the domain name, even if it acquired no trademark or service mark rights in terms of Paragraph 4.c.(ii) of the Policy. Lastly, there is no evidence that the Respondent is making a legitimate non commercial fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue in terms of Paragraph 4.c.(iii) of the Policy.
There is no other evidence on which the Panelist can rely suggesting that the Respondent has rights or legitimate interests in respect of the domain name.
On balance, a presumption in favour of the Complainant that the Respondent has no rights or legitimate interests in respect of the Complainant's registered trademark has not been rebutted.
C. The "domain name has been registered and is being used in bad faith"
If the Panelist finds evidence of any of the matters set out in Paragraph 4.b. of the Policy that shall be evidence of registration and use of a domain name in bad faith.
The matters set out in Paragraph 4.b. are as follows:-
(i) Circumstances indicating that the Respondent has registered or has acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. There is no evidence of any communication between the Respondent and the Complainant about the domain name.
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Complainant has engaged in a pattern of such conduct. Again, there is no such evidence.
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Again, there is no such evidence.
(iv) By using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website or location, or of a product or service on the Respondent's website or location. Again, there is no such evidence.
There is no positive evidence of any of these matters or any other evidence of the registration and use of the domain name in bad faith. The examples in Paragraph 4.b, however, are intended to be illustrative, rather than exclusive: see Telstra Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003. In that case, it was established that "inaction" can constitute bad faith use. Nonetheless, it is also clear that it is necessary to analyse the facts in each case. In a case where the domain name may have been adopted to describe a generic product and there is no evidence of any attempt by the Respondent to profit from the domain name, the Panelist finds that the Complainant has failed to prove that such inaction constitutes bad faith registration and use of the domain name in issue: see Do The Hustle LLC v. Tropic Web WIPO Case No. D2000-0624.
Accordingly, the Panelist finds that
(i) The Respondent's domain name <cr39.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
(iii) The Complainant has failed to establish that domain name has been registered and is being used in bad faith.
Accordingly, the Complaint is dismissed.
Dated: June 8, 2001