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and Mediation Center
Imperial Chemical Industries PLC v. 1sitename.com
Case No. D2006-0375
1. The Parties
The Complainant is Imperial Chemical Industries PLC, Redcar, United Kingdom, represented by Venable, LLP, United States of America.
The Respondent is 1sitename.com, Cleveland, Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <duluxpaintcenters.com> is registered with Wild
West Domains, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2006. On March 24, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On March 24, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 31, 2006. The Center verified that the Complaint together with the amendment to 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 April 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2006. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2006.
The Center appointed Vinod K. Agarwal as the sole
panelist in this matter on May 1, 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.
4. Factual Background
From the Complaint and the various annexure to it, the Panel has found the following facts:
The Complainant Imperial Chemical Industries PLC, commonly known as ICI, is a leading manufacturer and distributor of paints and related goods and services. It also has a large number of retail stores. ICI creates, develops and markets paints and related goods, foods, fragrances, and personal care products. The ICI Group employs more than 33,000 people worldwide with over 50,000 products. ICI Paints is part of the ICI Group. ICI Paints is headquartered in the United Kingdom and manufactures paints in 26 countries including the United States. In North America, the Complainant produces decorative coatings such as Gildden, Dulux, Ralph Lauren, Devoe, Fuller O’Brien, Sinclair and adhesives. DULUX is the Complainant’s registered trademark.
Respondent’s Identity and Activities
The Respondent did not reply to the Complainant’s
contentions. Hence, the Respondent’s activities are not known.
5. Parties Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that it is known amongst consumers worldwide as DULUX. The DULUX mark is used in the United States and in many countries in connection with paints and paint stores. The disputed domain name is <duluxpaintcenters.com>. It is likely to be confusing with Complainant’s distinctive mark DULUX. The Complainant owns more than 680 trademark registrations worldwide for marks containing the word DULUX. Further that, the Complainant uses the trade name ICI DULUX PAINT CENTERS throughout the United States.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the mark DULUX. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant.
Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <duluxpaintcenters.com> by the Respondent is to earn profit and to mislead the general public and the customers of the Complainant. The Complainant has stated that the use of a domain name that appropriates a well known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”. Further, the Respondent has offered to sell the disputed domain name to the Complainant. This indicates bad faith registration.
The Complainant has relied on a number of UDRP decisions in support of its aforesaid contentions.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles to be used in rendering its decision. It says that “[a] panel shall 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”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or 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; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s trademark DULUX is registered in many countries including Benelux countries, the Czech Republic, Hong Kong SAR of China, the United States, the United Kingdom, etc. The Complainant’s other registered domain names are <www.icipaints.com>, <www.iciduluxpaintws.com>, <www.icipaints.co.uk>, <www.dulux.com>.
The present dispute pertains to the domain name <duluxpaintcenters.com>. The Complainant has many retail stores and uses the trade name ICI DULUX PAINT CENTERS in many countries including the United States. As such, consumers looking for ICI DULUX PAINT CENTERS may instead reach the Respondent’s website. The domain name <duluxpaintcenters.com> is confusingly similar to the Complainant’s trademark. The addition of the expression “paint centers” to the trademark DULUX does not alleviate the risk of confusion.
In support of its contention that the disputed domain
name is confusingly similar to the trademark of the Complainant, the Complainant
has rightly relied on the cases of International Data Group, Inc. v. Lingjun,
WIPO Case No. D2004-0398; Nokia
Corporation v. Nokiagirls.com WIPO Case
No. D2000-0102; and Louis Vuitton Malletier v. Enrico Villa, WIPO
Case No. D2000-0721.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(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 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 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 has not filed any response in this
case. There is no evidence to suggest that the Respondent has become known by
the disputed domain name anywhere in the world. Based on the default and the
evidence adduced by the Complainant, it is concluded that the above circumstances
do not exist in this case and that the Respondent has no rights or legitimate
interests in the disputed domain name. See also Pavillion Agency Inc.
Cliff Greenhouse and Keith Greenhouse v. And Glenn Greenhouse,
WIPO Case No. D2000-1221. DULUX is the
name and mark of the Complainant. Further, the Complainant has not licensed
or otherwise permitted the Respondent to use its name or trademark or to apply
for or use the domain name incorporating said name. The Panel finds that the
Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 documented out of pocket costs directly related to the domain name; or
(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the above circumstances. There are circumstances indicating that the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web sites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. Further, the domain name apparently offered links to websites featuring information about a variety of topics and linked back to Respondent’s own website via a link saying “Visit New Metropolis Partners LLC”. Currently, the Respondent’s web sites show a list of other web sites and advertise them as “sponsored links”.
The Complainant has also stated that the Respondent offered to sell the disputed domain name back to the Complainant for US $15,000.
The foregoing circumstances lead to the factual presumption
that the domain name in dispute was registered and used by the Respondent in
bad faith. As the Respondent has failed to rebut this presumption, the Panel
concludes that the domain name was registered and used in bad faith.
In light of the foregoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with Paragraph 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name <duluxpaintcenters.com> be transferred to the Complainant.
Vinod K. Agarwal
Dated: May 15, 2006