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and Mediation Center
Imperial Chemical Industries PLC v. RareNames
Case No. D2006-0124
1. The Parties
The Complainant is Imperial Chemical Industries PLC, Wilton Redcar, United Kingdom of Great Britain and Northern Ireland, represented by Venable, LLP, Washington, DC, United States of America.
The Respondent is RareNames, Washington, DC, United States of America, represented
by ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <icidulux.com> is registered with Nom Infinitum,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2006. On January 31, 2006, the Center transmitted by email to Nom Infinitum, Incorporated a request for registrar verification in connection with the domain name at issue. On February 8, 2006, Nom Infinitum, Incorporated 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2006. The Response was filed with the Center on March 13, 2006.
The Center appointed Derek Minus as the sole panelist in this matter on March 30, 2006. 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.
On March 13, 2006, the Center received a Supplemental Filing from the Complainant with comments on the Response and requesting “an issued opinion confirming a finding of bad faith.” The parties were advised by the Center that the decision as to whether or not the Supplemental Filing will be accepted and/or considered, was in the sole discretion of the Panel. No response to the Supplemental Filing was received from the Respondent. On April 1, 2006, the Center provided by email, two documents comprising the Supplemental Filing which the Complainant had insisted that the Center forward to the Panel.
The Panel was originally obliged to issue a decision
in the English language, on or prior to April 13, 2006. On April 21, 2006, the
Center advised the parties by email that the Panel has, pursuant to paragraph
10(c) of the Policy requested an extension of time to further evaluate the case
and the documents submitted.
4. Procedural Determination
As well as the Complaint and Reply filed in this matter, the Panel was provided with Supplemental submissions of the Complainant, which were sent to the Panel at the insistence of the Complainant.
Communication between Parties and the Panel is provided by the Rules, specifically paragraph 8 which states that:
No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider’s Supplemental Rules.
The Supplemental Rules, which have been in force from December 1, 1999, provide in paragraph 6, for the appointment of a Case Administrator, as follows:
(a) Notification. The Center shall advise the Parties of the name and contact details of a member of its staff who shall be the Case Administrator and who shall be responsible for all administrative matters relating to the dispute and communications to the Administrative Panel.
(b) Responsibilities. The Case Administrator may provide administrative assistance to the Administrative Panel or a Panelist, but shall have no authority to decide matters of a substantive nature concerning the dispute.
The Rules also provide for the general powers of the Panel. These are set out at paragraph 10, as follows:
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
In this matter, the Respondent seeks to have the matter summarily determined, on the basis that it stipulates a transfer of the domain name to the Complainant. In contrast, the Complainant seeks an issued opinion finding that the Respondent acted in bad faith. The Complainant has insisted that the Case Administrator appointed by the Center to manage the communications between the parties and the Panel, forward Supplemental material to the Panel, even though the Panel has not requested the material.
As provided by the Rules, the Panel is required to ensure that the Parties are treated with equality. Rules, paragraph 10(a) provides for the Panel to have control of the administrative procedure by which the proceedings are conducted. The Panel is of the view that the Supplemental filing by the Complainant should not be taken into consideration for the purposes of this determination as the need for the Supplemental filing by the Complainant did not arise out of any additional material filed in the Response and the Respondent has not provided a response to the Supplemental filing.
However, the Panel also considers that once a complainant has filed a complaint
according to the Rules that the Center’s procedure is enlivened and the
matter should proceed to determination with the panel required to consider the
elements of the Policy. Of course, where the respondent stipulates that the
domain name be transferred without contest, the complainant can withdraw the
complaint and finalise the acquisition of the domain name. But otherwise, the
panel should consider the matters raised before it and proceed to carry out
its function in making a determination according to the Policy.
5. Factual Background
The following uncontested and unchallenged facts appear from the Complaint and the supporting documents submitted with it.
The Complaint is based on Complainant’s well known trademarks ICI and DULUX for paint, retail paint stores and other goods and services. The Complainant’s ICI and DULUX trademarks are used and registered in numerous countries, including United States Registration Numbers 2055436, 3009834, for the mark DULUX and 2988434, 1314134, and others for the mark ICI.
The Complainant owns more than 680 trademark registrations worldwide for marks
consisting of, or containing as the dominant feature, the word DULUX, and over
2600 containing the letters ICI. The ICI mark has been in continuous use in
the United States since at least 1986, and the DULUX mark since at least 1995.
In previous proceedings under the UDRP, they have been found to be famous marks
in connection with the sale of paints and related goods and services including
paint stores. See Imperial Chemical Industries PLC v. Maxi services,
WIPO Case No. D2006-0156 and Imperial Chemical
Industries, PLC v. Oxford University, WIPO
Case No. D2001-0292.
6. Parties’ Contentions
The Respondent’s registration of the domain name is likely to be confused with the Complainant’s distinctive trademarks, ICI and DULUX. The Complainant has extensive rights in these marks that predate the Respondent’s registration of the domain name.
The ICI and DULUX marks are famous because the Complainant makes extensive use of the marks, which enhances the likelihood of confusion. The domain name is a combination of the mark ICI and the mark DULUX, both of which are used and registered by the Complainant. Consumers are likely to believe that any domain name incorporating the ICI and DULUX names, is associated with the Complainant. A domain name that is a combination of two trademarks is considered to be confusingly similar to those trademarks for the purposes of the UDRP.
The Respondent had constructive notice of Complainant’s trademark rights by virtue of the extensive use and promotion of the Complainant’s company identity and well known brands. The Respondent has no rights or legitimate interests in respect of the domain name and it is being used for goods and services similar to Complainant’s with an intent to confuse consumers. Clicking beyond the home page of the Respondent’s website leads to commercial link farms. Other panelists have found that using paid link farm services is proof of bad faith. The home page of the Respondent’s website prominently displays a notice indicating that the domain name is for sale.
The Respondent denied that it had registered the domain name in bad faith. The Respondent claimed that it had no knowledge of the Complainant or its trademark at the time it registered <icidulux.com>.
It further stipulated that in the interest of saving
the cost involved in defending its rights to the disputed domain name, that
the Panel should transfer the disputed domain name to the Complainant. The Respondent
submitted that, where a Respondent stipulates to transfer a domain name to a
Complainant, the panel need simply transfer the domain name, without issuing
an opinion on the merits of the case, Boehringer Ingelheim International
GmbH v. Modern Limited - Cayman Web Development, NAF Case No. FA133625 (National
Arbitration Forum, January 9, 2003).
7. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities each of the following three elements:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith by the Respondent.
The Respondent has submitted a Response that the domain name be transmitted to the Complainant without a determination of the Complaint.
The Complainant has provided a Supplemental filing requesting that a determination be made, irrespective of the Respondent’s decision not to challenge the request, but stipulated that the domain name should be transferred.
A. Identical or Confusingly Similar
The Complainant has provided extensive evidence of its trademarks ICI and DULUX and their use throughout the world. The Panel is satisfied on the basis of this material, that the Complainant is the owner of the trademarks ICI and DULUX, which the Panel finds are famous marks.
The domain name <icidulux.com> although not identical to a trademark
owned by the Complainant, is a simple combination of the trademark names owned
by the Complainant. The combination, represents a particularly powerful association
both with the parent company, ICI and one of its major products DULUX. A domain
name that is a combination of two trademarks is considered to be confusingly
similar to those trademarks for purposes of the UDRP. See Saab Automobile
AB v. Joakim Nordberg, WIPO Case No. D2000-1761,
regarding similarity of the domain name <saabopel> with the trademarks
SAAB and OPEL.
The domain name being a simple combination of the parent company name and one of its major product names, the Panel finds that it is confusingly similar to the existing trademarks of the Complainant.
B. Rights or Legitimate Interests
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proven, shall demonstrate the Respondent’s rights or legitimate interests 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 Respondent in its formal response has not identified any legitimate usage or rights or interests in this domain name.
According to the submission of the Complainant, the Respondent is using the
disputed domain name for a website that provides links to suppliers of home
improvement products for commercial gain. When the Panel attempted to examine
the use made of the disputed domain name, it was unable to access it because
the server for “www.icidulux.com”, could not be found.
The Panel finds that none of the conditions outlined in paragraph 4(c)(i) to (iii) have been made out. Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative 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 Complainant claims that Respondent’s website prominently displays a notice indicating that the domain name <icidulux.com> is for sale with links to a website asking the user to request a price, but indicating that the price is at least $888.00. However, the Panel was not able to confirm this and there is insufficient information that this was the primary purpose of the registration. However, a search of “www.archive.org” showed that at May 25, 2004, and other times in 2004, the domain name resolved to a website featuring links for paint, painting home, cad, auto paint and ringtones. This confirms the Complainant’s contention that clicking beyond the Respondent’s home page leads to commercial link farms. The use of the domain name was clearly for the purpose of attracting traffic to sites offering products similar to those of the Complainant, for commercial gain, by indicating an endorsement to the Complainant’s well known marks, which in fact did not exist. The Panel therefore considers that the Respondent’s conduct in respect of the domain name is in breach of (iv) above.
The Panel also considered the Respondent’s conduct could have been in breach of (ii) above. Attached to the Response was a declaration from the legal manager of YesDirect, Inc, the parent company of the Respondent, wherein she stated that; “We had no knowledge of the Complainant’s trademark when we registered <icidulux.com>.” The Panel considers that the pairing of these two unique and famous marks, and the use to which the domain name was put, in attracting Internet users through confusion with the Complainant’s trademarks, reflects an intimate understanding of the Complainant’s business and products. It is impossible to conclude other than that the domain name was registered with knowledge of the Complainant’s trademark rights for the purpose of preventing the Complainant from having use of the corresponding domain name. The Panel finds this behaviour to be an indication of use in bad faith. However there is insufficient evidence that the Respondent has engaged in a pattern of such conduct, which is required to establish a breach of 4(b)(ii).
The Panel therefore finds that the domain name was registered and is being
used in bad faith. The Complainant has made out each of the three elements that
it is required to prove.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <icidulux.com> be transferred to the Complainant forthwith.
Derek M. Minus
Dated: May 4, 2006