WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wattyl Australia Pty Limited v. Moniker Online Services, Inc./ Registrant [2109691], DNS Admin, Direct Navigation Associates Case No. D2009-1587 1. The Parties
The Complainant is Wattyl Australia Pty Limited of New South Wales, Australia, represented by Banki Haddock Fiora, Australia.
The Respondent is Moniker Online Services, Inc./ Registrant [2109691], DNS Admin, Direct Navigation Associates of Pompano Beach, United States of America and Panama City, Panama, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2009. On November 25, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 12, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 18, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2009.
The Center appointed J. Christopher Thomas as the sole panelist in this matter on January 15, 2010. 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 is a wholly-owned subsidiary of Wattyl Limited (ACN 008 412 173) (“Wattyl”). Wattyl is an Australian paint manufacturer that sells paints, varnishes, lacquers and special purpose protective coatings across the Asia-Pacific region.
According to the Complaint, Wattyl has operations in Australia and New Zealand, and has acquired a substantial reputation for providing quality paint and coating products in those countries as well as in a number of others in which its products are sold. It develops specialist products such as high performance marine coating systems, UV-cured timber finishes and protective coatings with long term exterior durability. The Complaint notes that Wattyl has a number of well known brands including SOLAGARD, ESTAPOL, KILLRUST, i.d., PASCOL and SOLVER, and TAUBMANS in New Zealand.
According to the Complaint, the trade mark WATTYL, under which the company has traded since at least 1929, is a made up word without an ordinary English meaning developed by the founder of the company, H.R. Walters.
The Complainant (or another related entity within the Wattyl group of companies) is the owner, and Wattyl the authorised user, of numerous trade mark registrations comprising the word WATTYL around the world, including 17 registrations in Australia and one in the United States. These trade marks are primarily used in relation to paints and coatings in their respective countries, as well as associated promotional material and interior design advice services. Many comprise the word “wattyl” alone. A schedule listing WATTYL trade mark registrations owned by the Complainant (or another related entity within the Wattyl group of companies) was provided as an Annex to the Complaint.
The Complainant (or another related entity within the Wattyl group of companies) is also the holder of a number of domain names comprising the word “wattyl”, including , , and .
According to the Complaint, the trade mark WATTYL is unique to Wattyl, and the Complainant is unaware of any other person using or having rights in the trade mark anywhere in the world. An Internet search for “Wattyl” revealed only references to Wattyl and the Complainant. (This search was also submitted with the Complaint.) 5. Parties' Contentions A. Complainant
With respect to the element of confusing similarity between the disputed domain name and the mark(s) in which the Complainant has rights, the Complainant points out that the addition of the generic top level domain “.com” is the only part of the disputed domain name that differs from the Complainant's trade mark registrations for WATTYL. Given that top level domains do not constitute distinctive elements, or eliminate any possibility of confusion, it is submitted that the disputed domain name is identical to the Complainant's trade mark, corporate name and trading name, Wattyl.
The Complainant notes that it became aware of use and registration of the disputed domain name in April 2007, at which time the corresponding website at “www.” contained a search function, but no material that was of particular concern to the Complainant. The Complainant was however interested in obtaining the disputed domain name, because of its rights in the made up word “wattyl” and to prevent confusion for potential customers searching for its website. Accordingly, it made an offer to purchase it. When this was ignored, the Complainant registered its interest in the disputed domain name in case it was not renewed and set up a monthly watch to monitor any changes to the website to which the disputed domain name resolved, and to ensure it was not used to promote goods and services similar to those of interest to the Complainant.
In July 2007, this watch revealed that the website at the disputed domain name had changed and included links to paint related websites, including paint manufacturers and retailers in Australia that are competitors of the Complainant and Wattyl. This appeared to be a “sponsored links” website, where the registrant receives payments from traders who advertise on the website, often each time their advertisement is clicked on by a viewer.
This shows, in the Complainant's view, that the Respondent has used the Complainant's trade mark to divert Internet users to a parked website with links to commercial websites offering paint related goods and services that are in direct competition with the Complainant and Wattyl. This has occurred without license or permission from the Complainant, nor is the Complainant in any way connected to the website at the disputed domain name.
The Complainant therefore submits that the Respondent's use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services.
Since April 2008, the Respondent has been on notice of the Complainant's rights in the trade mark WATTYL, and its rights to the disputed domain name. A bundle of correspondence was provided with the Complaint. This included correspondence from Banki Haddock Fiora to the Respondent regarding the identity of the true registrant of the disputed domain name, a letter of demand to the registrant of the disputed domain name dated April 23, 2008, and confirmation from the Respondent that this letter had been sent to the true registrant.
The Complainant notes further that the Respondent is not commonly known in Australia by the name WATTYL nor by the disputed Domain Name.
With respect to the third element of bad faith, the Complainant submits that the Respondent registered and has used the disputed domain name only for commercial gain and, with the sole intention of attracting Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the website or of the links and products provided on that website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel has reviewed the Complaint and supporting evidence and finds that the Complaint is made out. A. Identical or Confusingly Similar
There is no doubt that the addition of the suffix “.com” does not serve to vary a mark. The Complainant has shown that it has rights in the WATTYL mark and that the disputed domain name incorporates that mark and simply adds “.com” to it. The disputed domain name is thus confusingly similar to a mark in which the Complainant has rights and the first element of the Policy is made out. B. Rights or Legitimate Interests
The evidence before the Panel is that the Respondent has not been authorized to use the mark, nor is it commonly known by the mark. The Panel is therefore satisfied that the Complainant has made out a prima facie case, which the Respondent has not rebutted with evidence, that the Respondent lacks rights or legitimate interests in the disputed domain name. This element of the Policy is accordingly made out. C. Registered and Used in Bad Faith
The Panel is satisfied on the evidence that this Respondent has used the disputed domain name to attract Internet users for commercial gain with the intention of attracting Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the website or of the links and products provided on that website. It has included links to paint related websites, including paint manufacturers and retailers in Australia that are competitors of the Complainant. This is bad faith under the third element 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 disputed domain name, be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Sole Panelist
Dated: February 2, 2010
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