The Complainant is Imperial Chemical Industries Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Blake Lapthorn Law Firm, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. Roy Moulton of Loughton, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Advantage Interactive Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 5, 2010, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the disputed domain name. On November 5, 2010 Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 November 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2010.
The Center appointed Jon Lang as the sole panelist in this matter on December 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 subsidiary of Akzo Nobel and is one of the largest chemical producers in the world producing paints and specialty products.
The domain name in dispute (the Domain Name) was registered on February 7, 2009.
The Complainant is the proprietor of registered trade marks which comprise the word DULUX or of which DULUX is the dominant part, in over 120 countries. These marks cover various classes but in particular class 2 “for paints, varnishes and laquers” amongst other goods. Included amongst these marks is a registration for a figurative mark for DULUX TRADE (United Kingdom trade mark number:1319966, registration date May 26, 1989).
The Complainant is also the registrant of a number of domain names incorporating the mark DULUX either on its own or with a generic term, including and . 5. Parties’ Contentions A. Complainant
The following is a summary of the main contentions of the Complainant: The Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights
The Complainant’s DULUX mark has a worldwide reputation and is one of the best known trade marks for paints.
A domain name that wholly incorporates a complainant’s registered trade mark, even with the addition of a generic term, is sufficient to establish confusing similarity. The Domain Name differs from the Complainant’s mark DULUX only by the addition of the generic term ‘TRADES’ (as a suffix), but this does not negate the dominant impression given by the word “dulux” or provide any distinctiveness to the Domain Name. The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent is not known as DULUX and had no reason to choose the Domain Name other than to profit from the goodwill existing in the Complainant’s DULUX mark.
The Respondent is not making legitimate, noncommercial or fair use of the Domain Name and indeed given the fame of the DULUX mark, no such use is possible.
The website to which the Domain Name previously resolved contained links to third party websites, referred to as “sponsored links”, indicating that the Respondent generated revenue from his use of the Domain Name. The website to which the Domain Name previously resolved would have taken potential customers away from the Complainant, disrupting its business. The Domain Name was registered and is being used in bad faith
The Respondent has used the Domain Name in a manner that is likely to confuse Internet users into wrongly believing that it is registered to, operated, endorsed or authorized by or otherwise connected with the Complainant.
The Respondent has no prior rights or legitimate interests in the Domain Name. The Complainant’s rights in the DULUX trade mark pre-date the Respondent’s registration of the Domain Name by a considerable period of time.
The Respondent’s use of the Domain Name is calculated to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
During a telephone conversation with the Complainant, the Respondent confirmed that he worked in the painting and decorating trade and it is therefore likely that the Respondent was aware of the DULUX trade mark (and also the DULUX TRADE trade mark) at the time of registration and therefore that he was misappropriating the intellectual property of the Complainant.
In the course of other proceedings in relation the Respondent’s registration of “” (conducted under Nominet’s Dispute Resolution Service and in which a transfer was ordered), the Complainant offered to compensate the Respondent for costs properly incurred in connection with the domain names in return for a transfer. The Respondent responded asking for £1,500 for each domain name (i.e. and ) but did not, despite a request, provide any documentary proof to support such figures and in the circumstances, the Complainant contends that this conduct amounts to bad faith for the purposes of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4 (a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Domain Name incorporates the Complainant’s trade mark DULUX in its entirety but adds, immediately after it, “”. The Domain Name also incorporates the Complainant’s mark DULUX TRADE albeit with the addition of an “s” after TRADE. The suffix “.com” is to be disregarded for comparison purposes.
In Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903, it was said “As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096 (‘parts’ added to mark EAUTO in ); Caterpillar Inc. v. Off Road Equipment Parts, NAF Case No. FA0008000095497 (‘parts’ added to mark CAT in ); Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd.,WIPO Case No. D2000-0995 (‘-parts’ added to mark KOMATSU in )”.
Whilst incorporation of a complainant’s trade mark in its entirety in a domain name containing other elements will not always lead to a finding of confusing similarity, given the fame of the Complainant’s DULUX trade mark, this Panel is of the view that it does give rise to confusing similarity in this case. There is a likelihood of confusion in that an Internet user may form the view that the owner of the Domain Name is also the owner of the trade mark(s) to which it is similar, or at least that there is some form of association between the Respondent and the Complainant. The addition of “trades” (or the “s” after “trade”) does little to distinguish the Domain Name from the Complainant or its trademark DULUX (or DULUX TRADE). Indeed, there is nothing in the Domain Name, other than the DULUX mark, that is distinctive and not descriptive and in these circumstances past panels have made findings of confusing similarity. For instance, in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, where the disputed domain name was and a transfer was ordered, the panel stated: “Therefore, the Sole Panelist finds that the matter in the Domain Name other than the Microsoft mark is non-distinctive and descriptive.”
In the circumstances this Panel finds that this element of paragraph 4(a) of the Policy has been made out. B. Rights or Legitimate Interests
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. Even where a respondent is not licensed by or affiliated with the complainant he could still show he has rights to or legitimate interests in a domain name in various ways. For instance, a respondent can show that he has been commonly known by the domain name or that he is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, in the present case the Respondent is not known by the Domain Name and, given the website to which the Domain Name (still, it would appear) resolves, which appears to be very much commercial in nature (and from a cursory glance by the Panel appears to carry links to sites selling competing products to those of the Complainant), it cannot be said that there is legitimate noncommercial or fair use. Indeed, in the absence of contrary evidence, this Panel can only assume that the Respondent derives (or derived) some commercial benefit from the website to which the Domain Name resolves. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that promotion of a website to which a confusingly similar domain name resolves and which carries links to other commercial websites, some with a similar focus to that of the complainant and selling similar products, could be a bona fide offering of goods or services.
In Drexel University v. David Brouda,WIPO Case No. D2001-0067 the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. Indeed, there is no evidence before this Panel to contradict or challenge any of the contentions of the Complainant. This Panel finds therefore that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The burden to demonstrate such rights or legitimate interests therefore falls on the Respondent. As the Respondent has not come forward with a Response or taken any other action to address the Complaint, this Panel finds the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It seems clear, given the worldwide fame of the Complainant’s trade marks, that the Respondent must have been aware of them, (particularly given his line of work as suggested by the Complainant), when the Domain Name was registered. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. Accordingly, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the 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 domain name be transferred to the Complainant.
Jon Lang
Sole Panelist
Dated: December 28, 2010
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