WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Permatex, Inc. v. Mounir Mati / G and Mohammed Khalid
Case No. D2005-0954
1. The Parties
The Complainant is Permatex, Inc., of Hartford, Connecticut, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.
The Respondents are Mounir Mati of Amman, Jordan and G / Mohammed Khalid of Dubai, United Arab Emirates.
2. The Domain Names and Registrars
The disputed domain names and are registered with Go Daddy Software and eNom, respectively (herein “the domain names in dispute”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September�7,�2005. On September�7,�2005, the Center transmitted by email to Go Daddy Software and eNom requests for registrar verification in connection with the domain names at issue. On the same date, Go Daddy Software transmitted its verification response confirming that the Respondent Mounir Mati is listed as the registrant of the domain name and providing the contact details for the administrative, billing, and technical contact, while eNom transmitted it verification response on September�8,�2005, confirming that the Respondent G�/ Mohammed Khalid is listed as the registrant of the domain name 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 September�21,�2005. 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 Respondents of the Complaint, and the proceedings commenced on September�27,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October�17,�2005. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October�21,�2005.
The Center appointed Mr. J. Nelson�Landry as the sole panelist in this matter on November�7,�2005. 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
The Complainant has been using the trademark PERMATEX in association with its automotive repair and maintenance products since 1915, through a predecessor-in-interest and is the owner of hundreds of registrations for the trademark PERMATEX (hereinafter the “Trademark” or “PERMATEX Trademark”) in the world including United States, European Community (CTM), Japan, China, Pakistan, Turkey, Greece, and Iran.
The Complainant has, in 2004, sold throughout the world, in excess of US$ 111 million in products bearing the PERMATEX Trademark and has for many years sold its products throughout North, Central and South America, Asia, Africa, Europe, and the Middle East - in particular, it currently sells its products bearing the PERMATEX Trademark in the United Arab Emirates (over US$ 290,000 in the U.A.E. alone in�2001) and Jordan.
The Complainant is the owner of the domain name and a verification made on September�1,�2005, indicates that PERMATEX’s website receives thousands of hits each day.
According to the evidence, Annex I, verified on August�28,�2005, the domain name was registered by Respondent Mounir Mati on May�4,�2005, and the domain name was registered by Respondent Mounir Mati on June�28,�2005. Upon verification by the Center with the respective registrars after reception of the Complaint, the registrant for the domain name was then G / Mohammed Khalid.
The Complainant has not licensed or otherwise authorized the Respondent to use its Trademark in registering these two domain names.
The domain name leads to a website which shows a notice “Website coming soon!” and features trademarks owned by Complainant. The website at is titled “Permatex Middle East” and provides a link to a travel website at “”, offered by Al Safarat Group with whom the Complainant is not affiliated or has not endorsed.
The domain name features a website advertising Respondent’s own web hosting services. Nowhere on the site does the name or Trademark PERMATEX or Permetex appear. Rather, Respondent Mounir Mati is simply using the domain name .
Respondent’s website shows the “Permatex Brand Selector” from Complainant’s own website, and features other registered trademarks of Complainant.
The Complainant has received email correspondence from Respondent Mati from freelancer.uae@[email address] confirming his receipt of the Complaint.
5. Parties’ Contentions
A. Complainant
The Complainant contends that Mohammed Khalid as listed in the eNom WHOIS information for is a pseudonym or “front” for Mounir Mati, and that the domain name is in reality owned and controlled by Mounir Mati. The Complainant notes that at the time the Complaint was filed, the registrant for was listed as Freelancer-uae, Mounir Mati, with an address in Dubai, United Arab Emirates.
The Complainant also represents that both Mati and Khalid receive correspondence at post office boxes in Dubai, United Arab Emirates. Furthermore Complainant has received email correspondence from Respondent Mati after the Complaint was filed, in which Respondent Mati did not deny ownership of the domain name and that, according to the WHOIS information, both websites are hosted on the same server and that each website at and currently proclaims that the domain name is for sale and make an offer to Mounir Mati.
The Complainant submits that Respondent Mati changed the registrant information for upon receiving the electronic copy of the Complaint and before Registrar eNom locked the domain name.
The Complainant contends to be a well-known developer and distributor of automotive repair and maintenance products and has been using the Trademark PERMATEX in connection with such products and services since at least as early as 1915, through a predecessor-in-interest.
The Complainant alleges that the Trademark PERMATEX is not a descriptive word and has no meaning in English or any other language, thus being a distinctive Trademark, entitled to significant protection because it is extremely well-known both in the United States and throughout the world including in the United Arab Emirates, Jordan and Saudi Arabia where the Respondents appear to be located or doing business.
According to the Complainant the domain names in dispute consists of the Trademark PERMATEX followed by a hyphen and the letters “me” which the letters “me” referring to “Middle East”. Consequently the distinctive part “permatex” of this domain name is identical to the Complainant’s Trademark and the Complainant relies on Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, in which the domain name was considered confusingly similar.
In respect of the domain name , the Complainant represents that it consists of a misspelling of the Complainant’s PERMATEX Trademark, followed by a hyphen and the letters “me” and that the substitution of an “e” for the “a” in Complainant’s Trademark constitutes a minor difference phonetically and visually, and does not obviate a finding of confusing similarity. In this case, the Complainant relies on earlier UDRP decisions which have found in similar situations that the domain name was confusingly similar and refers to Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; B
