WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION RPM International Inc. v. Yang Fan Case No. D2010-0757 1. The Parties
The Complainant is RPM International Inc. of Medina, Ohio, United States of America, represented by Calfee, Halter & Griswold, United States of America.
The Respondent is Yang Fan of Foshanshi, Guangdong Province, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2010. On May 12, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On May 13, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 14, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On May 15, 2010, the Complainant submitted a request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date. The Center verified that the 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 May 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2010. The Response was filed with the Center on June 2, 2010.
On June 25, 2010, the Complainant filed Supplemental Evidence to the Center.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 17, 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.
The Panel notes the Complainant's request that English be the language of proceedings, and further that the Respondent, although provided with copies of the Center's case-related documents in both English and Chinese, has not objected to English being the language of proceedings. Based on the evidence in the case file, the Panel also notes that the website at the disputed domain name has an English version. In addition, the Respondent has chosen to file the Response partially in English. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English. 4. Factual Background
The Complainant, RPM International Inc., (“the Complainant”), is a multinational holding company incorporated in Delaware, United States. The Complainant's primary business location is Medina, Ohio, United States.
The Complainant holds more than 40 subsidiary companies that manufacture and market high-performance coatings, sealants and specialty chemicals, primarily for maintenance and improvement. The Complainant along it subsidiary companies employ approximately 9,700 people worldwide and operate 92 manufacturing facilities in 22 countries.
The Complainant began its activities as a seller under the trade name RPM in the year 1947. Today, the Complainant's and the Complainant's subsidiaries' products are sold under the RPM mark in approximately 150 territories around the world.
The Complainant is the owner of Community Trademark Registration No. 003238219 -RPM EUROPE (Logo), in classes 1, 2, 5, 16, 19, 27, 28, 37 and 40, with the registration date of March 11, 2005.
The Complainant has also developed a presence on the Internet and owns the domain name , which contain its RPM trade name. The Complainant is using this domain name in connection with its activities.
The disputed domain name was registered by the Respondent on November 18, 2009.
The disputed domain name resolves to a webpage that advertises RPM Smart Coatings Co., Ltd, and its products. This webpage also indicates that the company RPM Smart Coatings Co., Ltd is associated with the RPM International Group. 5. Parties' Contentions A. Complainant
The Complainant argues that it has gained common law rights in the RPM trade name, due to extensive and long term use of over sixty years, and that the RPM trade name is associated with it.
The Complainant further argues that it does not have a relationship with the Respondent nor has it authorized, licensed or gave the Respondent its consent to use the RPM mark as a trade name or trademark.
The Complainant further argues that the Respondent's purpose for registering the disputed domain name was to use and take advantage of the goodwill in the RPM mark and to fraudulently attract Internet users to the dispute domain name.
The Complainant further argues that the Respondent's lack of good faith is evident by its use of the disputed domain name to indicate on an affiliation to the Complainant.
The Complainant further argues that the Respondent has been causing consumer confusion by using Complainant's trade name and trademark in connection with Respondent's paints and coatings, which are the exact same types of products, sold by Complainant subsidiaries. The Complainant argues that this evidence the Respondent's lack of good faith.
The Complainant further claims that Respondent has a history of a systematically and wide ranging infringement of the Complainant's trade name and trademark.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent argues that it is known by the business name Foshan Rul PEL Mu Coating Co., Ltd or RPM INTL GROUP (USA) LIMITED.
The Respondent further argues that it has registered the trademark - Rul Pel Mu in China.
The Respondent further argues that its business name and product's acronym is spelled RPM. The Respondent argues that it therefore has rights in the RPM trade name.
The Respondent further argues that the disputed domain name did not exist before it registered it, and therefore it is legal and approved by the Chinese Trade and Industrial Bureau & Trademark Office.
For this reason the Respondent claims that its use of the RPM mark is legitimate and that the Complaint was submitted unjustly. C. Supplementary Evidence by the Complainant
The Complainant submitted Supplementary Evidence to the Center on June 25, 2010.
The Complainant claims that additional information was brought to its attention, which may be relevant to the Panel's decision. The Complainant argues that the Respondent had registered an additional domain name , which differs from the disputed domain name by only the gTLD “.com”. The new domain name was registered on June 13, 2010, after the Complaint has been filed with the Center.
In the Supplementary Evidence, the Complainant argues that registering the additional domain name after the Respondent was notified of the Complaint is an additional proof of the Respondent's bad faith.
The Complainant further stated that the trademark, which the Respondent claims to have registered, is in fact a trademark application that was yet to be approved by the Chinese Trademark Office.
The Rules do not include an express provision regarding Supplemental Filing of evidence by either party, other than at the request of the Panel.
However, paragraph 10(a) and (d) authorizes the panel to administrate the proceedings in a manner as it considers appropriate and determine the admissibility, relevance, materiality and weight of the evidence. Indeed, under the Rules, the Panel shall conduct the administrative proceeding in such as manner as it considers appropriate (See e.g. Al Ghurair Group LLC v. Ghurair Group,WIPO Case No. D2004-0532; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray,WIPO Case No. D2002-0624; Voigtländer GmbH v. John Voigtlander,WIPO Case No. D2003-0095).
The Respondent did not file or requested to submit a Supplemental filing on its behalf to respond to the Complainant's Supplementary Evidence.
After considering the evidence filed to the Center, the Panel notes that it would have reached the same conclusion in view of the evidence provided in the Complaint alone. Under these circumstances, the Panel decided not to allot the Respondent with additional time to respond to the Supplemental filing.
The Panel finds that accepting the Complainant's Supplemental filing does not prejudice either party, but merely serves to clarify certain issues hitherto obscure. The Panel therefore allows the supplemental filing, noting that its acceptance is not critical to the Panel's decision regarding outcome in any event. 6. Discussion and Findings A. Formal Deficiencies of the Response
The Respondent filed a Response on June 2, 2010 was administratively deficient in a number of respects, including the following:
(1) The Response did not contain a statement as required by Rules, paragraph 5(b)(viii).
(2) The Response did not specify a preferred address and preferred method for case-related communications to the Respondent.
(3) The Response did not indicate whether the Respondent elects to have the dispute decided by a three-member panel or whether the Respondent agrees that the dispute be decided by a single-member panel, as required by Rules, paragraph 5(b)(iv).
(4) The Response did not identify any other legal proceedings that have been commenced or terminated in connection with or relating to the domain name, or stated that no other legal proceeding have been commenced or terminated, as required by Rules, paragraph 5(b)(vi).
(5) The Response did not indicate whether a copy of the Response was sent or transmitted to the Complainant, as required by Rules, paragraph 2(b).
(6) The Response did not provide evidence in support of the Respondent's claims.
Previous WIPO UDRP panels have addressed the implication of a deficient Response. The Panel cited the following with approval: “There is no provision regulating the consequences for responses that do not meet the formal requirements comparable to Paragraph 4(b) of the UDRP Rules for complaints. Whether and under what conditions responses are to be taken into account if they do not satisfy the formal requirements of Paragraph 5 of the UDRP Rules has been determined differently by different panels. The majority of the Panelists assume that they are entitled at their discretion to determine whether to consider responses that are formally incorrect” (see Crédit Industriel et Commercial S.A v. Yu Ming, WIPO Case No. D2005-0458).
In this case, the Panel finds the deficiencies will not result in the rejection of the Response. The Panel will take the Response into consideration, but will award it the appropriate consideration, in light of the fact that it lacks supportive evidence and/or documents to affirm any of the Respondent's claims. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant's trademark RPM EUROPE has been registered in the European Union since March 11, 2005.
The disputed domain name differs from the registered RPM EUROPE mark by the additional word “paint”, the absence of the word “Europe” and the gTLD “.com”.
The Complainant also claimed that the disputed domain name is identical or confusingly similar to its trade name RPM.
It has been the decision of previous UDRP panels that in determining if a complainant has defendable rights in an unregistered mark, the panel may analyze whether the complainant has established common law rights in the mark by assessing the complainant's showing of a secondary meaning that is directly associated with the complainant. Factors typically considered influential in such an analysis are longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition (see: WIPO Overview of WIPO Panel Views on Selected UDRP Questions and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
The Complainant contends that it has been using the RPM mark continuously since 1947. The Panel also notes that the Complainant created and has been using the domain name since 1996. The Complainant contends that its trademark is widely known throughout the world and that it is widely recognized as the source of goods and services behind this widely known mark. These contentions and inferences are not contested by the Respondent. Previous panels have ruled that in similar situations, reasonable inferences of fact in the allegations of the Complainant may be deemed true for the purpose of the relevant Policy proceeding (See, for example, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 and The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
Certainly, in light of the circumstances, over 60 years of consistent use would normally be sufficient time for the Complainant to have achieved a secondary meaning in its RPM mark. (See: Kahn Development Company v. RealtyPRO c/o Carl Krause, NAF Case No. FA568350 and CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc.,WIPO Case No. D2004-1072). Such length of use persuades the Panel that the Complainant has acquired common law rights in its trade name.
The disputed domain name contains the trade name RPM in its entirety. The disputed domain name also integrates the dominant part of the Complainant's trademark RPM EUROPE. The additional word “paint” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's RPM EUROPE trademark or RPM trade name, as it is a non-significant element. Previous UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain names from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
The subtraction of the word “Europe” in the disputed domain name does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's registered mark. Previous WIPO UDRP panels have asserted that “the mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709). This is also true for the subtraction of a descriptive term.
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademark and trade name in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the respondent to adduce evidence in rebuttal showing that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
While in the website to which the disputed domain name resolves the Respondent alleged an affiliation to the Complainant, this claim is not repeated in the Respondent's response. The Panel therefore finds that Complainant has established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the RPM EUROPE trademark, the RPM trade name, or a variation thereof.
The Respondent claims that it has rights in the disputed domain name. Nevertheless, the Respondent did not provide any evidence to support this claim.
The Respondent has not been able to show any of the circumstances that are specified in paragraph 4(c) of the Policy as being evidence of rights or legitimate interests in the domain name.
The Panel finds that the fact that the Respondent makes unsupported allegations regarding its affiliation to the Complainant in order to clarify its use of the RPM mark indicates that the Respondent has no rights or legitimate interest in the disputed domain name. If the Respondent had the Complainant's approval to use the RPM mark it would have proffered such evidence to the Panel. Failure to provide the Panel with such evidence while making such allegations is weighted against the Respondent.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The evidence submitted by the Complainant along with the trademark search preformed by the Panel, clearly shows that the Respondent has registered the disputed domain name many years after the Complainant gained its common law rights and registered its trademark. This fact is suggestive of Respondent's bad faith (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the Respondent, if by using the domain name he had intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
The disputed domain name currently leads Internet users to a website that promotes the sale of paint and coating material, some of which carries the RPM mark and the business of RPM International Group.
Despite the fact the Respondent alleges that it is known as RPM International Group, the evidence provided by the Complainant clearly indicates that the Respondent attempts to affiliate itself with the Complainant. This affiliation is denied by the Complainant.
The Respondent's use of the RPM mark to promote goods that are regularly sold by the Complainant's subsidiaries clearly evidence that the Respondent registered the disputed domain name with knowledge of the Complainant and the use the Complainant is making in the RPM mark and subsequent intended to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for quasi-identical goods to the ones that are sold by the Complainant's subsidiaries constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The Respondent's bad faith is also evident by the registration of the domain name , which also contains the Complainant's RPM mark, after receiving a notice that a Complaint was filed against it by the Complainant (see Voigtländer GmbH v. John Voigtlander,WIPO Case No. D2003-0095).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 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.
Jonathan Agmon
Sole Panelist
Dated: July 8, 2010
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