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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Imperial Chemical Industries PLC, The Glidden Company v. Spiral Matrix

Case No. D2006-1311

 

1. The Parties

The Complainants are Imperial Chemical Industries PLC, and The Glidden Company, of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Blake Lapthorn Linnell, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Spiral Matrix, of Eldoret, Kenya.

 

2. The Domain Name and Registrar

The disputed domain name <pinturasglidden.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2006. On October 13, 2006, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On October 17, 2006, Intercosmos Media Group, Inc. d/b/a directNIC.com 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. 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 October 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2006.

The Center appointed Guillermo Carey as the sole panelist in this matter on December 5, 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

In accordance with the information provided in the Complaint, and as verified by the Registrar of the Domain Name, the Respondent, Spiral Matrix, registered the Domain Name <pinturasglidden.com> on January 14, 2006.

The Respondent is using the Domain Name <pinturasglidden.com> to provide a portal site directing Internet users to third party sites. Additionally, the Respondent has included in the site the wording “under construction” on a prominent way.

The Complainants have submitted documents evidencing that GLIDDEN is a trademark registered in the United Kingdom and a list of the GLIDDEN trademark registered in over 58 jurisdictions, including registrations in Kenya, where the Respondent is based, as well as registrations in Spanish speaking countries. The cited registrations protect goods in international class 2, which includes paints, among other goods. This information was not contested by the Respondent.

The Complainants have submitted evidence of extended use of the mark GLIDDEN in the United States of America, information on the owner of the mark GLIDDEN and scope of operations of this company. This information was not contested by the Respondent.

The Complainants have submitted evidence to prove that most of the trademark registrations were granted and used prior to the registration of the domain name <pinturasglidden.com> by the Respondent. Some of these registrations were granted on 1933. In addition, the Complainants have evidenced their use of different domain names which includes the trademark GLIDDEN, such as <glidden.co.uk> and <glidden.com>.

 

5. Parties’ Contentions

A. Complainant

The Complainants contend that they have registered trademark rights to the trademark GLIDDEN in Kenya and over 58 countries. The trademark registrations predate the registration of the disputed Domain Name.

The Complainants state that the disputed Domain Name only differs with the Complainants’ registered trademark in the word “pinturas” used as a suffix to the word GLIDDEN. “Pinturas” is the Spanish word for “paint”. This difference does not serve to negate the dominant impression created by the word “glidden”, taking into account that GLIDDEN is a brand name for paint products made by the Complainants. The use of the word “pinturas” as a suffix to the word “glidden” reinforces the impression of the word “glidden” as a generic term as “pinturas” is clearly related to the Complainants’ activities. The aforementioned will confuse consumers and internet users.

Furthermore, the Complainants currently own trademark registrations in Spanish speaking countries, which justifies the same possibilities of confusion in those markets. The mark is registered in:

Trademark

Country

Proprietor

Classes

Registration Date

Next renewal

GLIDDEN

Argentina

The Glidden Company

2

September 30, 1999

September 30, 2009

GLIDDEN

Chile

The Glidden Company

2

September 14, 1995

September 14, 2015

GLIDDEN

Mexico

The Glidden Company

2, 3, 16

December 17, 1990

December 17, 2010

GLIDDEN

Peru

The Glidden Company

2

October 2, 1992

October 2, 2012

GLIDDEN

Spain

The Glidden Company

2

January 18, 1996

January 18, 2016

The Respondent has no association with either of the Complainants, as well as the Complainants have not granted any license to the Respondent allowing the use of their trademarks. The Respondent is not known under the names “glidden” or “pinturasglidden”.

The Respondent’s use of the Domain Name is not in accordance with the requirements of good faith: the Domain Name simply provides a portal directing Internet users to third party sites.

Finally, the Complainants affirm that the Domain Name was registered and is used in bad faith. Considering the worldwide reputation of the Complainants’ trademarks, the Respondent must have been aware that in the registration and subsequent transfer of the disputed Domain Name to the Respondent exists a misappropriation of intellectual property rights of the Complainants. There is no relationship between the Respondent and the Complainants, and the use of the Domain Name is an intentional attempt to attract Internet users for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainants must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainants have rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainants must establish is that the Domain Name is identical or confusingly similar to the Complainants’ trademarks. It has been established that when a domain name incorporates entirely a complainant’s registered trademark, with the addition of a descriptive term, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The Complainants have provided uncontestable evidence indicating their ownership of the GLIDDEN trademark, in the Respondent’s country and worldwide, dating back the first registration of the trademark as early as 1933.

The Complainants have demonstrated undisputed rights over the trademark GLIDDEN, due to different registrations of such trademark throughout the world.

Additionally, this Panel considers that the use of the Spanish suffix “pinturas” does not obviate the similarity of the disputed Domain Name with the Complainants’ trademark, taking into account that GLIDDEN is a well known paint brand, with presence in Spanish speaking countries. Thus, the disputed Domain name immediately evokes the products and trademarks of the Complainants.

By virtue of the foregoing, this Panel finds that the disputed Domain Name is confusingly similar to the Complainants’ registered trademarks. Consequently, the Complainant’s have satisfied the requirements under paragraph 4(a) (i) of the Policy.

B. Rights or Legitimate Interests

No evidence has been provided in order to demonstrate the existence of any kind of relationship between the Respondent and the Complainants, or that the Respondent is a licensee of the Complainants. Therefore, is clear to this Panel that the Respondent has neither rights nor legitimate interests regarding the disputed Domain Name.

In addition, the Complainants have provided undisputed evidence in connection with their rights over the trademarks, which predate the registration of the disputed Domain Name by the Respondent.

No proof has been provided by the Respondent in order to prove that it is known as “glidden”or “pinturasglidden”.

This Panel considers that the Respondent is not using the disputed Domain Name in connection with the requirements of bona fide. The disputed Domain Name simply provides a search engine which diverts Internet users to third party sites (mostly sites which offer paint products) and appears to be intentionally attempting to attract those users for commercial gain.

Based on the above, the Panel finds no rights or legitimate interest for the Respondent in the disputed Domain Name. Therefore, the Complainants satisfy the requirements of Paragraph 4(a) (ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a) of the Policy, if the use of the domain name is executed as an attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location, this shall be considered as an evidence of registration and use of a domain name in bad faith.

In this case, it is evident that the Respondent is attempting to attract Internet users to its website. As confirmed by this Panel, the disputed Domain Name provides links to different websites. Most of these websites are paint product sites.

The purpose of registering and using a domain name that entirely incorporates a registered trademark and a suffix which makes reference to paintings clearly creates or tends to create a possibility of confusion among Internet users, whom will be misled into thinking that the Domain Name belongs to the Complainants.

Due to the aforementioned exploitation of the confusion of Internet users, this Panel finds that the Respondent has registered and uses the Domain Name in bad faith, satisfying Paragraph 4(a)(iii) of the Policy.

 

7. Decision

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, <pinturasglidden.com> be transferred to the First Complainant Imperial Chemical Industries PLC (ICI).


Guillermo Carey
Sole Panelist

Dated: December 28, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1311.html

 

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