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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Imperial Chemical Industries, PLC v. Oxford University
Case No. D2001-0292
1. The Parties
The Complainant is Imperial Chemical Industries, PLC ("ICI"), a company organised and existing under the laws of England and Wales, with its registered office located at Imperial Chemical House, Millbank, London SW1 3JS, United Kingdom. It is represented by Mr. Andrew Lykiardopoulos of Bristows, London, United Kingdom.
The Respondent is "Oxford University," whose address is given as Topbanana, Piggabeen, 2486, New South Wales, Australia.
2. The Domain Names and Registrar
The domain names at issue are:
The domain name <dulux.org> was registered on December 7, 2000, in the name of OXFORDUNI. The domain names <ici-dulux.com>, <ici-dulux.org>, <ici-dulux.net> and <icidulux.com> were registered on February 8, 2001, in the name of "Oxford University-www.Domain-Man.com- -sites for sale :-)".
The Registrar with which all the disputed domain names are registered is Melbourne IT of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
On February 28, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. This Complaint was in respect of the domain name <www.dulux.org>.
On March 7, 2001, the WIPO Center received an amended Complaint from the Complainant disputing the following domain names:
On March 8, 2001, the Registrar responded to a request for Verification of the domain names <dulux.org>, <ici-dulux.com>, <ici-dulux.org> and <ici-dulux.net>confirming details of the Respondent, that the Policy applied to the domain names and that the current status of the names was "licensed." This confirmed that the domain names were still in active status.
On March 12, 2001, the WIPO Center received confirmation from the Representative of the Complainant that the domain names at issue in this case are:
and do not include the letters "www".
On March 12, 2001, the WIPO Center indicated to the Representative of the Complainant that the name of the Respondent as set out in the Complaint and the Amended Complaint was not shown exactly as set out under "Organisation Name" in the Registrar’s Verification. The WIPO Center requested an amendment accordingly.
On March 13, 2001, the WIPO Center received a Re-Amended Complaint amending the original Complaint and the Amended Complaint as requested.
On March 14, 2001, a Re-Re-Amended Complaint was received by the WIPO Center adding the domain name <icidulux.com> to the domain names in dispute.
On March 15, 2001, the Registrar responded to a request for Verification of the domain name <icidulux.com>, confirming details of the Respondent, that the Policy applied to that domain name and that the domain name was still in active status.
On March 20, 2001, the WIPO Center received notice from Internet Names WorldWide, a division of Melbourne IT Limited, advising that the Organisation Names for three of the disputed domain names had been changed recently, although the other details remained the same.
On March 19, 2001, the WIPO Center transmitted by courier and email a notification of complaint and commencement of administrative proceedings to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by April 7, 2001. The Respondent was also advised that any response should be communicated in accordance with the Rules by an original and four sets in hard copy and by email.
No formal response was received on behalf of the Respondent.
On April 11, 2001, a Notice of Default was sent to the Respondent.
On April 26, 2001, the WIPO Center invited Andrew Brown, barrister of Auckland, New Zealand to serve as sole panelist in the case. On April 26, 2001 Andrew Brown advised his acceptance and forwarded to the WIPO Center his Statement of Acceptance and Declaration of Impartiality and Independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On or about April 27, 2001, the WIPO Center forwarded to Andrew Brown by courier and email the relevant submissions and the Record. The electronic version was received by him on or about April 27, 2001. The hard copy with annexures was received on May 1, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by May 11, 2001.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The DULUX trademark is currently registered in the name of the Complainant in a number of countries around the world. In particular, the Complainant relies on its registered trademarks in the UK and for the European Community.
The Complainant also relies on the reputation of its sign DULUX for paint and paint related products as one of the world’s most famous brands of paint. The Complainant has manufactured paint and paint related products under its sign DULUX since 1932. Paint sold under the sign was first sold in the US and then was introduced in the UK in 1957. In the 1970s, the sign was a world wide brand indicating paint manufactured or sold by the Complainant. Today, DULUX paint and paint related products are sold in approximately 65 countries throughout the world.
Similarly, the ICI trademark is currently registered in the name of the Complainant in a number of countries around the world. In particular, the Complainant relies on its registered trademarks in the UK and the US.
Further, the Complainant relies on the reputation of its sign ICI and its use to denote the Complainant. The Complainant has traded throughout the world as ICI for many decades and is primarily known by its trading name. The Complainant’s UK registered trademark ICI was registered in 1941.
The sign DULUX is highly distinctive of the products of the Complainant and the sign ICI is exclusively associated with the Complainant.
The Complainant is not the registered proprietor of the trademark DULUX in Australia, being the location of the Respondent. Following a divestment in 1997 by ICI of its paint business in Australia to Orica Australia Pty Ltd ("Orica"), the rights to the trademark DULUX are now owned by Orica. However, the Complainant has provided evidence that Orica has consented to the Complaint and the remedy requested.
The Complainant’s first awareness of the registration of the domain name "dulux.org" was on December 7, 2000 when the Complainant received the following email from the Respondent:
Season’s Greetings from Australia, Mr. Paint Person |:-)
I remember "Dulux Magicoat" from the sixties, when I used it to paint my Ford thames van in bright colours…
…So www.Dulux.org was available and is now mine. But I have no money to develop it with and a stack of bills coming in, so basically, If either the famous paint company or Sega games or whoever, want to buy the domain from me, or do advertising in a joint manner perhaps, using my extensive network under
I’d really appreciate a rapid response/offer…
On February 7, 2001, the Complainant replied to the Respondent informing him that:
…The trademark DULUX is a registered trademark of Imperial Chemical Industries plc ("ICI") and ICI is the owner of valuable goodwill in relation to the name. ICI is the proprietor of trademark registrations for DULUX throughout the world…
The Complainant also offered to reimburse the Respondent for his out of pocket expenses in return for the transfer of the domain name <www.dulux.org>:
Thank you for your offer to sell the domain name www.dulux.org to us. In consideration of the transfer of www.dulux.org to ICI, ICI will reimburse you for your out-of pocket expenses. These comprise the fee for the registration of www.dulux.org and the fee for the transfer of www.dulux.org to ICI…
The letter also required that the Respondent respond within 14 days of the date of the email, or the matter would be referred to the Complainant’s lawyers.
On February 8, 2001, the Respondent sent an email to the Complainant querying the authority of the writer of the February 7, 2001, email.
On February 9, 2001, the Complainant contacted the Respondent and reiterated its offer to purchase the domain name for a reasonable sum, namely, the Respondent’s out of pocket expenses. The Complainant stated that it required a response by February 21, 2001. The Respondent did not respond to this email.
The Complainant has subsequently discovered that on February 8, 2001 (after the Complainant’s email of February 7, 2001, stating that the Complainant ICI has trademark rights in DULUX) the Respondent registered the domain names <ici-dulux.net>, <ici-dulux.com>, <icidulux.com>, and <ici-dulux.org>.
5. Parties’ Contentions
A. The Complainant
The Complainant claims that the domain name <dulux.org> is identical to its registered trademark DULUX. The Complainant also claims that the domain name <dulux.org> is identical to the sign DULUX in which the Complainant asserts it also has common law rights.
The Complainant further submits that the domain names <ici-dulux.com>, <ici-dulux.net>, <ici-dulux.org> and <ici-dulux.com> are confusingly similar to its registered trademarks DULUX and ICI. The Complainant also submits that the domain names <ici-dulux.com>, <ici-dulux.net>, <ici-dulux.org> and <icidulux.com> are confusingly similar to the signs ICI and DULUX in which the Complainant asserts it also has common law rights.
The Complainant claims that the use of both ICI and DULUX together in the same domain name greatly increases the likelihood that these domain names will be confused with domain names owned by and/or associated with the Complainant.
The Complainant provided extensive evidence of its trademarks ICI and DULUX and of use of the ICI and DULUX signs throughout the world.
In particular, the Complainant relies upon:
Paints, enamels, lacquers etc
March 19, 1931
February 15, 1999
| || || || |
Mixing machinery for paints
February 15, 1999
| || || || |
Decorating tools to use in painting
February 15, 1999
May 15, 1941
1, 2, 5, 13, 16, 17, 18, 19, 22
| || |
January 15, 1985
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain names in dispute. It claims that given the reputation and distinctiveness of the DULUX and ICI marks over many years, they are not marks that another trader would legitimately choose unless that trader sought to:
(a) create an impression of an association with the Complainant;
(b) create an impression of an association with DULUX and ICI products;
(c) attract business from the Complainant;
(d) misleadingly divert members of the public; and/or
(e) damage the reputation and business of the Complainant.
The Complainant submits that the domain names in issue were registered and are being used in bad faith by the Respondent. By virtue of the widespread use and reputation of the DULUX and ICI trademarks, the Respondent must have realised that members of the public around the world would mistakenly believe that the registrant of the <dulux.org>, <ici-dulux.com>, <ici-dulux.net>, <ici-dulux.org> and <icidulux.com> domain names was the Complainant or in some way associated with the Complainant.
The Complainant asserts that the only plausible reason why the Respondent registered the domain names was to attract the attention of the Complainant and to try to force the Complainant into making an offer to buy the domain names from the Respondent.
B. The Respondent
As noted, the Respondent did not file a formal Response, but he has sent a series of emails to the Complainant, the WIPO Center and the Panel.
The Panel does not propose to set out here all of the informal emails received from the Respondent. They are, for the most part, general attacks on the dispute resolution process (in somewhat abusive language) and do not specifically address the Complaint.
Of particular note, however, is a further email the Respondent sent to the Complainant on March 14, 2001, which indicated that the Respondent was aware of the DULUX brand before registering the domain names in dispute:
…I am aware of Dulux Paints and I was extremely pleased with their product when in the UK in the sixties I used their brightly coloured paint to liven up an otherwise drab looking Ford Thames van…
…I came to thinking of Dulux, as I still wanted to get that "gel" paint that I used in the UK in the 60’s, and is STILL not available here, so I typed in "Dulux.com"…and got the "Page not available" indicator….So, checking with the registry, I was amazed to find Dulux.org WAS available, so I secured it and wrote what was intended to be a cheerful and helpful letter to the company, after finding how to get into their site and contact a (unfortunately, ex-Oxford-University associate, it appears)…company representative, last year…
That email also gave some limited indication of the Respondent’s claimed intended use of the domain name:
…"Du" means "Of" in French, and "Lux" means light in French, If I am not mistaken – and that is the manner in which I intend to use it…"Of Light"…but it seems "Paint it Black" is more the current Dulux management motto…
…"It is a concatenation of "Du Lux" as the internet does not permit the "space" character. and you will note that the site displays the words "DuLux.org"…NOT just "DULUX" as per your trademark. Capitalization (and the .org) changes its meaning.
This Letter will appear on MY site shortly. And I suggest you change your Bullying attitude mister…"
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 in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is confusingly similar/identical to registered trademark
The Complainant has provided extensive evidence of its trademarks DULUX and ICI throughout the world, but has indicated that it no longer has the rights to the trademark DULUX in Australia (where the Respondent is domiciled). The Panel considers that the Complainant’s marks are associated with the Complainant and the Complainant’s products globally. It notes further that the Respondent, who resides in Australia, contacted the Complainant rather than Orica Australia Pty Ltd regarding the domain names in dispute.
Accordingly, the Panel finds that the domain name <dulux.org> is identical to the trademark DULUX in which the Complainant has rights and that the domain names <ici-dulux.com>, <ici-dulux.net>, <ici-dulux.org> and <icidulux.com> are (because they are combinations) confusingly similar to the trademarks in which the Complainant has both registered trade mark and common law rights.
No rights or legitimate interests in respect of the domain name
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
The Panel finds that none of the conditions outlined in (i) to (iii) have been made out. The Respondent has not provided any formal Response or in his informal emails any rights or interests in these domain names. The Panel therefore finds it appropriate to draw an adverse inference from the Respondent’s failure to respond to the Complaint: SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848.
Overall the Panel can find no evidence to demonstrate that the Respondent has legitimate rights or a legitimate interest in the domain names at issue. Indeed, the Respondent’s very first email to the Complainant after he had registered <dulux.org> specifically referred to the Complainant’s DULUX mark and showed his awareness of the Complainant’s rights to it. This was repeated in his email of March 14, 2001.
The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent’s conduct in respect of the domain name <dulux.org> is in breach of (i) above. It is clear from the Respondent’s email of December 7, 2000 (the same day as he registered the domain name <dulux.org>) that he was intending to sell the domain name to the Complainant. The Panel finds that the Respondent’s motivation for acquiring the domain name was primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant, being the owner of the trademarks or service marks.
The Panel also considers that the Respondent’s conduct is in breach of (ii) above. The domain names at issue were registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. The Respondent states that he was "amazed" to discover that the domain name <dulux.org> was available (presumably because he expected ICI to have registered it previously) and promptly secured it for himself. The Panel infers from the evidence that when ICI refused to compensate him as he expected for the domain name <dulux.org>, he retaliated by registering the additional disputed domain names – including for good measure, ICI’s name and trademark. Certainly the Complainant had put the Respondent on notice – prior to the registration of the subsequent four domain names- that DULUX was the registered trademark of ICI.
These subsequent registrations evidence the "pattern of conduct" required to establish a breach of (ii) above.
The Policy requires that the Respondent has registered/acquired and is using the domain names in bad faith. The Complainant has not provided any evidence of use of the domain names by the Respondent. However, the Panel has checked the domain names. The domain name <dulux.org> opens to a live site which contains various statements concerning the Complainant’s application to take back the site. It is plainly being used in bad faith. The domain names <ici-dulux.com>, <ici-dulux.org> and <ici-dulux.net> open to an index with links. These too are being used in bad faith since the use of the Complainant’s well known trademarks leads to a site which has no connection with the Complainant.
There is one domain name, <icidulux.com>, which does not open to any live site. However, the concept of a domain name being used in bad faith is not limited to positive action: CUX Inc v DomainNamesAvailable, WIPO Case No. D2000-0972.
The Panel concludes that the Complainant’s claim that the domain names have been registered and are being used by the Respondent in bad faith has been made out.
There is one procedural matter to record. Under section 8(a) of the Policy, the domain name holder is bound not to transfer the domain name registration to another holder during an administrative proceeding. The aim of this Policy is to prevent what has been referred to as "cyberflying" i.e. where a registrant of a domain name, when named as the Respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding: BBC v Data Art Corporation/Stoneybrook, D2000-0683.
In this case, it is plain that the change of organisation names for three of the domain names <ici-dulux.net>, <ici-dulux.com> and <icidulux.com>occurred after the service on the Respondent of:
(a) The amended Complaint on March 7, 2001, notifying the inclusion of the three latter domain names; and
(b) The Re-Re-Amended Complaint notifying the inclusion of the final domain name <ici-dulux.com>.
The Panel finds that the Complaints were properly served before these changes/transfers. The Registrar, Melbourne IT, is holding the disputed domain names pending the outcome of this proceeding (and subject to any court proceedings that may be commenced following this decision under paragraph 4(i) of the Policy). The Registrar is bound by any direction to transfer the disputed domain names. Therefore the changes in organisational name/transfers which have occurred will not in any way prevent implementation of the Panel’s decision.
For the foregoing reasons, the Panel decides that:
(a) the domain name <dulux.org> registered by the Respondent is identical to a trademark in which the Complainant has rights;
(b) the domain names <ici-dulux.com>, <ici-dulux.net>, <ici-dulux.org> and <icidulux.com> are confusingly similar to trademarks in which the Complainant has rights;
(c) the Respondent has no rights or legitimate interests in respect of any of the domain names in dispute;
(d) the Respondent’s domain names have been registered and are being used in bad faith; and
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <dulux.org>, <ici-dulux.com>, <ici-dulux.net>, <ici-dulux.org> and <icidulux.com> be transferred to the Complainant.
Dated: May 11, 2001