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 rpmpaint of Foshan, 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 October 25, 2010. On October 26, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details. The Center sent an email communication to the Complainant on October 28, 2010 regarding the Respondent’s name and contact details. The Complainant filed an amended Complaint on November 1, 2010.
On October 28, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On November 1, 2010, the Complainant submitted a request that English be the language of the proceeding. On November 2, 2010, the Center received two emails from the Respondent in which the Respondent did not comment on the language of the proceeding.
The Center has verified that the Complaint together with the amended Complaint satisfy 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 proceeding commenced on November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 24, 2010.
On November 2, 2010 and November 6, 2010, the Center received two email communications from the Respondents which will be discussed under 5B Parties’ Contentions below.
The Center appointed Sebastian Hughes as the sole panelist in this matter on November 30, 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 A. Complainant
The Complainant is a company incorporated in the State of Delaware, the United States of America. The Complainant has been using the trade mark RPM continuously as a trade name and unregistered trade mark since 1947.
The Complainant is the owner of a CTM registration for the trade mark RPM EUROPE registered since March 11, 2005. The Complainant claims ownership of a registration in China for the trade mark RPM 立宾registered since November 11, 2009 and, according to the Complainant, recently assigned to the Complainant by its previous owner He Yongfang1. The Complainant is also the applicant in respect of 6 pending trade mark applications for the stylised trade mark RPM in China, each filed on May 12, 2010.
The Complainant is also the owner of the domain name which is resolved to its corporate website. B. Respondent
The Respondent appears to be a corporate entity based in China.
The disputed domain name was registered on May 13, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a multinational holding company headquartered in Medina, Ohio, the United States of America with subsidiaries that manufacture and market high-performance paints, coatings, sealants and specialty chemicals, primarily for maintenance and improvement (the “Goods”). The Complainant and its more than 40 subsidiaries employ approximately 9,700 people worldwide and operate 92 manufacturing facilities in 22 countries. The products of the Complainant’s subsidiaries are sold in approximately 150 countries and territories, including China.
The Complainant’s subsidiaries hold themselves out as “an RPM Company” and use the “RPM Company” symbol on their respective websites. Many of these subsidiaries comprise the letters “rpm” in their name, including:
• RPM Wood Finishes Group, Inc.;
• RPM Asia Pte. Ltd.;
• RPM China Pte. Ltd.;
• RPM Enterprises, Inc.;
• RPM Consumer Holding Company;
• RPM Inc.;
• RPM Holdco Corp.;
• RPM Canada Company;
• RPM Europe;
• RPM Germany GmbH;
• RPM United Kingdom G.P.;
• RPM Lux Holdco Sarl; and
• RPM Nova Scotia ULC.
In the years 2005 through 2009, the Complainant had the following approximate net sales (in US dollars):
Year Sales
2009 $3,368,167,000.00
2008 $3,643,791,000.00
2007 $3,338,764,000.00
2006 $3,008,338,000.00
2005 $2,555,735,000.00
The Complainant is famous and well-known throughout the world. It has been using RPM as a trade name and unregistered trade mark for more than sixty years (the “Trade Mark”).
Due to its extensive and long-term use, including on the Goods of the Complainant and its subsidiaries, and the Complainant and its subsidiaries’ substantial expenditure on advertising, the Trade Mark has become a well-known mark in respect of the Goods.
The disputed domain name is confusingly similar to the Trade Mark. The use of the word “paint” in the disputed domain name does not have any effect on the confusing similarity. “Paint” is a generic word which refers to the Goods produced and marketed by the Complainant and its subsidiaries.
The Respondent has no trade mark rights in respect of the disputed domain name and has not been licensed or authorised by the Complainant to use the Trade Mark.
The website to which the disputed domain name is resolved (the “Website”) offers for sale paint products marked with the Trade Mark.
The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith to intentionally attract users, for commercial gain, to the Website, by creating confusion with the Trade Mark.
Two days after the Complainant initiated UDRP Proceeding (RPM International Inc. v. Yang Fan,WIPO Case No. D2010-0757) concerning the domain name registered by the Respondent, the Respondent proceeded to register the disputed domain name.
In response to the Complainant’s email regarding the disputed domain name prior to the filing of the Complaint, the Respondent replied:
(1) requesting USD$10,000.00 in return for transfer of the disputed domain name to the Complainant; and
(2) threatening to register more domain names comprising the Trade Mark if the Complainant was not willing to negotiate. B. Respondent
The Respondent did not file a Response. It did however make the following submissions to the Center in the English language:
1. The Respondent’s business licence in China is in the name of “Foshan Ru Pei Mu Coating Co, Ltd”;
2. The Respondent is the owner of the Hong Kong company “RPM Intl Group (USA) Limited” which commenced business on April 7, 2010;
3. The Respondent is the owner in China of a registration for the stylised trade mark “Ru Pei Mu” and Chinese characters2;
4. The Respondent’s registration of the disputed domain name does not violate the Complainant’s rights in the Trade Mark. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The disputed domain name is in the English language and comprised of English letters;
(2) The parties have communicated in English prior to the filing of the Complaint;
(3) The additional cost of translation should not be placed on the Complainant. The Respondent apparently fraudulently held itself out to be affiliated with an American company and registered a latin script term as a domain name.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. The Respondent chose to communicate with both the Complainant and the Center in English.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
Having considered all the matters above, and given in particular the Respondent’s failure to file a formal Response or make any submissions with regard to the language of the proceeding, and in order to prevent further delay and translation costs on the part of the Complainant, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by over 60 years the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of the non-distinctive, generic word “paint” (a word describing the Goods produced by both the Complainant and the Respondent) does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 60 years. There is therefore a prima facie case established by the Complainant that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Respondent’s company and business registrations in China and Hong Kong, SAR of China and the Respondent’s pending trade mark application in China do not provide it with any trade mark rights in respect of the Trade Mark. The mere fact of registration of company names which comprise (in the case of the Hong Kong registration) or are vaguely similar to (in the case of the Chinese registration) the letters “rpm”, together with other terms, is not sufficient to establish rights in respect of the Trade Mark under the Policy. Similarly, the mere filing of a trade mark application does not confer any rights in the trade mark in question.
The Respondent has not filed any evidence to suggest it has acquired any rights in the Trade Mark through use. Furthermore, the trade mark being applied for by the Respondent in China is, in the Panel’s opinion, quite dissimilar to the Trade Mark. The Panel further notes the Respondent’s company registrations in China and Hong Kong, SAR of China were completed and its trade mark application in China was filed in late 2009, over 60 years after the Complainant first commenced use of the Trade Mark.
In the Panel’s view, the Respondent has engaged in the increasingly common practice of registering a Hong Kong company name comprising a third party’s trade mark in order to attempt to obtain de facto (and unauthorised) trade mark rights in respect of the third party’s trade mark3. It has also filed the trade mark application in China in an attempt to legitimise its unauthorised use of the Trade Mark. From all of the above conduct, the fact the Respondent is marketing the same Goods as those of the Complainant on the Website, and the fact the Respondent’s prior registration for the domain name was successfully recovered by the Complainant in prior UDRP proceedings cases, the Panel concludes that the Respondent must have been aware of the Complainant and its rights in the Trade Mark at the time of registration of the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It is clear to this Panel that the Website is being used in order to pass off the business of the Respondent (or the business of the operator of the Website) as a business of or licensed by the Complainant, as evidenced by the blatant and prominent use of the Trade Mark on the Goods featured on the Website. The operator of the Website operates in the same industry as the Complainant and the Website offers for sale the same Goods as those of the Complainant.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel finds additional grounds of bad faith have been made out by the Complainant under paragraph 4(b)(i) of the Policy, by the Respondent’s conduct in offering to transfer the disputed domain name to the Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs directly related to the registration of the disputed domain name; and under paragraph 4(b)(ii) of the Policy, in that the Respondent has been engaged in a past pattern of registering domain names in order to prevent the Complainant from reflecting the Trade Mark in corresponding domain names, and has threatened to continue doing so in future.
The Website has been shut down and the disputed domain name is no longer in use by the Respondent. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of this disputed domain name by the Respondent, having previously been used to facilitate the promotion and sale of the Goods prior to the filing of the Complaint, amounts to additional grounds for finding bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a proper Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Finally, the Panel considers the Respondent’s conduct in attempting to rely on its Chinese and Hong Kong company registrations and its pending trade mark application to establish unauthorised de facto trade mark rights in the Trade Mark amounts to further evidence of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian Hughes
Sole Panelist
Date: December 9, 2010
1 The Complainant claims the assignment is in the process of being recorded with the Chinese Trade Mark Office.
2 In fact this trade mark has not been registered in China – it is merely a pending application filed on December 18, 2009.
3 The Complainant claims in the Complaint to have “initiated a successful challenge to the Respondent’s unauthorised use of the Trade Mark” in its Hong Kong company name, but has not filed any evidence in support of this assertion.
Full & Egal Universal Law Academy