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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Imperial Chemical Industries PLC, The Glidden Company v. NOLDC, Inc.

Case No. D2006-1312

 

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 NOLDC, Inc., of New Orleans, Los Angeles, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <gliddenspaint.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, 006. 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 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on October 25, 2006. The Center verified that the Complaints as amended 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 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2006.

The Center appointed Guillermo Carey as the sole panelist in this matter on December 6, 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 is NOLDC, Inc, who acquired the registered the Domain Name <gliddenspaint.com> from Spiral Matrix. Spiral Matrix registered the Domain Name <gliddenspaint.com> on November 4, 2005.

The Respondent is using the Domain Name <gliddenspaint.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. 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 disputed Domain Name <gliddenspaint.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. Complainants

The Complainants sustain that they have trademark rights over GLIDDEN on a worldwide basis. GLIDDEN is a well known trademark in the United States of America, where the Respondent is based and the Complainants have submitted evidence of use prior to the Respondent’s registration for the disputed Domain Name.

The Complainants states that the disputed Domain Name only differs with the Complainants’ registered trademark in the word “paint” used as a suffix to the word GLIDDENS. 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 “paint” as a suffix to the word “gliddens” reinforces the impression of the word “glidden” as a generic term as “paint” is clearly related to the Complainants activities. The aforementioned will confuse consumers and Internet users.

Furthermore, the Complainants state that their trademark rights on the word GLIDDEN predate the registration of the disputed Domain Name.

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 “gliddenspaint”.

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 first registrant (Spiral Matrix) 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 first registrant, 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 Complainants have provided undisputed evidence indicating their ownership of the GLIDDEN trademark, in the United Kingdom, United States of America and worldwide, dating back the first use of the trademark as early as 1933, as indicated in the respective Patent and Trademark Office print outs provided by the Complainants.

Given that (i) the disputed Domain Name sounds and is nearly identical to the Complainants registered trademark (Glidden), and (ii) the suffix “paint” 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, the confusion between the Respondent’s Domain Name and the Complainants’ trademark and domain names is obvious. The addition of the letter “s” after the trademark GLIDDEN does not alter or change the essence of the trademark. The disputed Domain Name immediately evokes the products and brands of the Complainants.

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

B. Rights or Legitimate Interests

There is no evidence which shows that the Respondent has any neither rights nor legitimate interests regarding the Domain Name <gliddenspaint.com>, nor evidence that indicates that the Respondent is commonly known as “Gliddenspaint”. Furthermore, no evidence has been provided in order to prove that the Respondent is neither associated nor a licensee of the Complainants.

Considering the similarities between the Domain Name and the Complainants’ GLIDDEN trademark, the Respondent appears to be using the Domain Name in an attempt to attract Internet users to a website which contain the Complainants’ competitors and appears to be intentionally attempting to attract those users for commercial gain. This Panel considers that such use does not meet the requirements of good faith.

Based on the above, the Panel finds no rights or legitimate interests 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

The Complainants’ worldwide reputation, the fame of their trademark and brand GLIDDEN, and their presence on Internet indicates that the Respondent was probably aware of the trademarks prior to registering the Domain Name. The fact that the Respondent provides links to the Complainants’ competitor websites, as well as the use of the suffix “paint”, clearly indicates that the Respondent knew the scope of products provided under GLIDDEN brand.

By using the Domain Name, the Respondent is profiting from the recognition and prestige of the Complainants’ trademark, exploiting the confusion on Internet users by making them believe that the Respondent is related 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, <gliddenspaint.com> be transferred to the Complainant Imperial Chemical Industries PLC.


Guillermo Carey
Sole Panelist

Dated: December 28, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1312.html

 

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