WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DIMC, Inc. & The Sherwin-Williams Company v. Mr. Q. Phan
Case No. D2000-1519
1. The Parties
The co-Complainants are DIMC, Inc. ("DIMC"), a Delaware, USA corporation with a principal place of business in Wilmington, Delaware, USA and its parent corporation, The Sherwin-Williams Company ("Sherwin-Williams"), an Ohio, USA corporation with a principal place of business in Cleveland, Ohio, USA
The Respondent is Mr. Q. Phan, an individual, listed in WHOIS as residing in Pittsburgh, California, USA but shown by "P-Seek" to be residing in Antioch, California 94509-8328.
2. The Domain Names and Registrar
The disputed domain name is , registered with Dotster, Inc., currently located in Vancouver, Washington, USA.
3. Procedural Background
The co-Complainants filed their Complaint electronically with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on
October 20, 2000 and in hard copy on October 24, 2000. The co-Complainants filed an Amendment to their Complaint electronically on November 6, 2000 and in hard copy on November 6, 2000.
On November 13, 2000, at the Center's request, Dotster, Inc. submitted a verification confirming that it was the registrar of the contested domain name and that Mr. Q. Phan was the Registrant, as well as the Administrative, Billing, and Technical contact for this domain name. Dotster, Inc. also reported the Respondent's email and mailing address as found in its records. (Footnote 1)1.
On November 14, 2000, after verifying that the Complaint conformed with the technical requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the Center's Supplemental Rules for Uniform Domain Dispute Resolutions Policy, the Center sent the Respondent a formal Notification of Complaint and Commencement of Administrative Proceeding by email and by Federal Express to both locations provided in the WHOIS, where the documents were signed for on both occasions.
On December 5, 2000, the Center sent the parties by e-mail a Notification of Respondent Default and received a record of its transmission to both email addresses. See Rules, Paragraph 2(b). As requested by the Complainant, the Center proceeded to appoint the undersigned as the single Panelist and so notified the parties by email on December 29, 2000.
4. Factual Background
The allegations and evidence submitted by the co-Complainants show as follows:
Co-Complainant Sherwin-Williams has been in the business of manufacturing, distributing, and selling paints, coatings, and associated goods and services since 1868. Its wholly-owned subsidiary, co-Complainant DIMC, owns, and has granted to licensed to Sherwin-Williams the license to use, a number of registered trademarks and service marks based on KRYLON, which co-Complainants have used in connection with paints, coatings and associated goods and services throughout the world since 1948. In accordance with the United States federal law, 15 U.S.C. §§ 1065 and 1115(b), many of these registered marks are incontestable and the co-Complainants have established an exclusive right to use them in commerce. By virtue of their long and widespread use by Sherwin-Williams and DIMC's predecessors, the KRYLON-based marks have become famous throughout the world and have acquired a strong secondary meaning associated with the co-Complainants.
Co-Complainant Sherwin-Williams has also used KRYLON in two-registered domain names: , which has been registered since December 3, 1997, and . In addition to providing information about various of types of KRYLON goods available from Sherwin-Williams and other related business information, provides a link to a website maintained by Keep America Beautiful, Inc. as part of an anti-graffiti program funded by a grant from Sherwin-Williams.
The Respondent registered the contested domain name, , almost two and a half years after Sherwin-Williams registered . For a time, the Respondent's website was linked to the main page of a so-called piracy website, where Internet users would be provided with emulators and copies of ROMs for video games from companies such as Nintendo of America, a practice deemed illegal and vigorously opposed by the latter.
A registrant with the same name and the same email address as the Respondent has also registered the domain name for a website that at one time purported to provide "controversial content" for adult, "subjects related to the recreational use of marijuana" and was linked to a website , which purports to be a gallery of graffiti. The same individual also is the registrant of .
On August 2, 2000, counsel for co-Complainants wrote to the Respondent, at the address given in the registration of , a letter demanding that the Respondent immediately cease and desist from all activity under any domain incorporating KRYLON or any confusingly similar designation and that he abandon the contested domain name. In a response dated August 10, 2000 and signed Mr. Q. Phan, the Respondent informed the co-Complainants' counsel that he/she has disabled the link to the alleged "piracy" website but declined to abandon the domain name, claiming that it was based on the nickname by which he is known and which he had adopted from a classic video game, and that he intends to use for a personal homepage, "a place to call my own on the Internet." Subsequent to the co-Complainants' cease-and-desist letter, the Respondent removed the content from, and link between, and .
5. The Parties' Contentions
The co-Complainants contend that the contested domain name, , is identical to their KRYLON marks; that the Respondent has no rights or legitimate interest in that domain name because he does not conduct any legitimate commercial or non-commercial activity under it but, rather, has used it only to divert Internet users to one website offering illegal goods and another website associated with illegal drug use and graffiti, thereby tarnishing the co-Complainants' marks; and that the Respondent registered and has used the contested domain name in bad faith, as manifested by the fact that the Respondent registered the domain name in spite of his actual or constructive knowledge of the co-Complainants' marks and has thereby diluted the distinctive quality of the marks, impinged upon their ability to use their mark in the .net generic top-level domain, and diverted customers away from the co-Complainants' websites and to other websites that offer illegal goods and are associated with illegal drug use and graffiti, all for commercial, even if non-monetary, gain.
Because the Respondent failed to submit any response to the Complaint in this case, his contentions are technically unknown. However, some indication of the Respondent's contentions can be gleaned from his response to the co-Complainants' cease-and-desist letter and appear to be that his reasons and intentions for registering are innocent and that forcing him to abandon it would be unreasonable. The respondent has voluntarily disabled the link between and .
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect to the domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
The application of the first of these elements is quite straightforward here: aside from the legally immaterial top level domain suffix ".net," the contested domain name is identical to the KRYLON marks in which the co-Complainants, as their owner and licencee, have incontestable rights. However, the second and third elements present considerable difficulty. In the absence of any answer by the Respondent in this proceeding, the only evidence in the record on the issues of the Respondent's interest in the contested domain name and his motives for registering and using it consists of the now disabled links to other websites and the Respondent's answer to the co-Complainant' cease-and-desist letter, which, not surprisingly, paints a seemingly innocent picture of his reasons for registering the domain name and intentions for the associated website. Mindful of their burden of proof, the co-Complainants make a valiant effort to discharge it by drawing various adverse inferences from the arguably distasteful content of the websites to which the contested domain name was once linked and by impeaching the credibility of the Respondent's letter.
Considered in the abstract, the result is not entirely successful. The co-Complainants' contentions tend to be more in the nature of legal argument than factual inferences and go more to the effect of the Respondent's linking of the website with the contested domain name to other websites than to his interest in it and his motives for registering and using it. Moreover, the co-Complainants do not even allege, much less demonstrate, that the Respondent has ever made any effort to sell the contested domain name to them for profit or that he is a competitor using the contested domain name for the purpose of either diverting or harming their business. As a result, the co-Complainants' contentions, even if accepted as inferences, do not add up to conduct that either fits or is at least analogous to any of the types of abusive Internet practices expressly targeted by the Policy. See Paragraph 4.b. At the same time, however, the Policy's listing of these practices is expressly non-exclusive, leaving it open for panels to define other types of practices as violative.
Perhaps an even more serious problem facing the co-Complainants is that the Respondent's answer to their cease-and-desist letter alleges two out of three circumstances that the Policy recognizes as definitive evidence of legitimate interests in a domain name: being commonly known by the domain name, even without owning any trademark or service mark rights in it, and legitimate non-commercial use. The co-Complainants attack the credibility, not the legal sufficiency, of these allegations, on the grounds that the Respondent's alternative domain name based on his actual given name and surname is a more suitable one for a personal website and that his prior record of illegal use of the contested domain name renders him incredible. Neither line of attack is quite persuasive. It is perfectly plausible that one would register domain names reflecting both one's formal name and one's nickname. As to the illegality of the Emulator Playaz website to which the contested domain name was once linked, the co-Complainants have demonstrated that Nintendo views such websites as illegal but have cited no judicial finding to that effect. In the absence of such a finding, the determination of the legality of the practice at issue is surely beyond the scope of the authority of a panel in a UDRP proceeding and, thus, cannot form the basis for adverse inferences.
Consequently, if the Panelist were confined to the hard facts adduced by the Complainants, she would be inclined to conclude that they were unable to marshal sufficient evidence to meet their burden of proof. However, the relevant evidence is in the exclusive control of the Respondent and he has chosen to flout his obligations under Paragraph 5 of the Rules, which require a respondent to come forward with a sworn, specific response to the allegations of the complaint and to annex documentary and other evidence supporting the response. Although failure to respond does not permit a UDRP panel to enter a default judgment as such, failure of a party to comply with any obligation under the Rules does empower the panel to "draw such inferences therefrom as it considers appropriate."
In this case, the Respondent's answer to the co-Complainant's cease-and-desist letter shows that he fully understood the points he must make to defend his registration and use of their mark in his domain name, but he phrased his points in a manner so conclusory and devoid of concrete detail as to leave a strong impression that he simply had no such detail to offer and made up a story to "blow off" the co-Complainants. For example, he did not spell out when he adopted his alleged nickname, under what circumstances he uses it, and among how many people he is known by it. He also does not provide any explanation for many of the links he had created for the disputed domain name in the past or any description of what steps he has taken or intends to take to create the personal website for which he allegedly registered the contested domain name. Thus, the omissions in the Respondent's answer to the cease-and-desist letter constitute an implied admission that he has no rights or legitimate interests in respect to the domain name and had registered and was using it in bad faith. This implied admission, in turn, makes it fair and appropriate to infer that he failed to submit a response to the Complainant because he has no evidence with which to counter the allegations of the Complaint as required by Paragraph 5 of the Rules (and, indeed, is not even in the position to put the assertions of his answer to the cease-and-desist letter into a sworn pleading). Based on this inference, the Panelist takes the allegations of the Complaint as true and concludes that the Complainants have discharged their burden of proof.
7. Decision
For the reasons stated above, it is ordered that the domain name be transferred to the co-Complainants, DIMC, Inc. and The Sherwin-Williams Company.
Natasha C. Lisman
Sole Panelist
Dated: February 20, 2001
Footnote:
1. Although the Panelist is not entirely certain whether Mr. Q. Phan is the name of a man, or a woman, or an entity, for simplicity's sake the Respondent will be referred to as he.
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