Complainant is PPG Industries Ohio, Inc. of Cleveland, Ohio, United States of America, represented by Ladas & Parry, United States of America.
Respondent is Ifran Akran of Armed Forces Other Areas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2011. On May 12, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On May 13, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for a Response was June 5, 2011. Respondent submitted no response. Accordingly, the Center notified the Respondent of its default on June 6, 2011.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on June 10, 2011. 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
Complainant in this administrative proceeding is PPG Industries Ohio, Inc. (“PPG” or “Complainant”). Complainant markets itself as the world’s leading coatings, specialty products and services company. PPG sells a multitude of high quality protective and decorative coatings, including several brands of PPG paint, including PPG PITTSBURGE PAINTS, PPG PORTER PAINTS, OLYMPIC PAINTS, OLYMPICS STAINS. It has manufacturing facilities and equity affiliates in more than 60 countries around the globe. PPG owns numerous worldwide trademark registrations for the mark PPG, including:
a) U.S. Trademark Registration No. 2457870 for the mark PPG PROSTARS in connection with automobile repair and restoration, which issued on June 5, 2001;
b) U.S. Trademark Registration No. 2457930 for the mark PPG PROSTARS AND DESIGN in connection with automobile repair and restoration, which issued on June 5, 2001;
c) U.S. Trademark Registration No. 0836988 for the mark PPG INDUSTRIES in connection with protective and decorative coatings, which issued on October 17, 1967;
d) U.S. Trademark Registration No.1735888 for the mark PPG Logo in connection with protective and decorative coatings, which issued on December 1, 1992;
e) U.S. Trademark Registration No. 2101821 for the mark PPG GLOBAL REFINISH SYSTEM in connection with automotive paint, which issued on September 30, 1997;
f) U.S. Trademark Registration No. 2791970 for the mark SEE IT’S PPG in connection with protective and decorative coatings, which issued on December 9, 2003.
The disputed domain name, (the “domain name”), was registered October 17, 2006. Users that access the domain name are directed to a website featuring pay-per-click links to Complainant’s competitors. The domain name is registered to Respondent, Ifran Akran. According to the WhoIs details for the domain name, Respondent is located in Pakistan.
On April 13, 2011, Complainant sent Respondent a cease and desist letter notifying Respondent of Complainant’s rights in the PPG trademark. See Complaint, at 5, Exhibit J. Respondent issued no reply.
To date, the domain name continues to incorporate the whole of the PPG mark. 5. Parties’ Contentions A. Complainant
Complainant asserts ownership over the PPG trademarks (the “mark” or the “trademark”) worldwide. Complaint at 6. “Said registrations demonstrate Complainant’s rights in the [PPG] mark under the Policy, paragraph 4(a)(i).” Thomas Sabo GmbH &Co. Schmuckhandel KG v. na no,WIPO Case No. D2009-1519 (citations omitted).
The domain name consists entirely of Complainant’s PPG mark along with the term “pro”, relating to Complainant’s trademark registration for the mark PPG PROSTAR. Complainant asserts that the domain name is confusingly similar to Complainant’s trademarks under Policy 4(a)(i). Complaint at 6.
In addition, Complainants argue that addition of the gTLD “.com” serves no purpose in distinguishing the domain name from the PPG mark because gTLDs are a functional necessity rather than an arbitrary trademark choice. Id.
Complainant asserts that without its authorization or consent, Respondent registered the domain name, a domain name confusingly similar to Complainant’s PPG mark, and is using the domain name to divert Internet traffic to a website featuring pay-per click links to third-party websites. These third-party websites include the websites of Complainant’s direct competitors. Id. at 7.
Thus, in accordance with paragraph 4(i) of the Policy, Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the domain name be transferred to Complainant. Id. at 9. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In view of the lack of a Response filed by Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of Complainant’s undisputed representations. In that regard, and without deciding this proceeding solely on the basis of Respondent’s default, the Panel makes the following specific findings. A. Identical or Confusingly Similar
Complainant owns numerous trademark registrations for the mark PPG. The Panel finds that the domain name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy because the PPG mark is completely included in the domain name. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“[T]he 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.”); Playboy Enterps. Int’l, Inc. v. Sookwan Park,WIPO Case No. D2001-0778 ( was found confusingly similar to the PLAYBOY mark); Adaptive Molecular Technologies, Inc. v. Piscilla Woodward & Charles R. Thorton, d/b/a Machines & More,WIPO Case No. D2000-0006 (the distinctive features of the domain name were the complainant’s mark). B. Rights or Legitimate Interests
Nothing in the information related to this domain name indicates that Respondent is commonly known by the name “ppgpro” pursuant to Policy, paragraph 4(c)(ii). All the contrary, the mark PPG only identifies Complainant in commerce. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent has not rebutted. After consulting all the evidence, the Panel finds that Respondent lacks any such rights or legitimate interests, and the requirements of the Policy, paragraph 4(a)(ii) are met. C. Registered and Used in Bad Faith
Based on the evidence presented in the current record, the Panel finds that Respondent is intentionally attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s marks, which evidences bad faith registration and use under Policy, paragraph 4(b)(iv).
To the extent that Respondent’s constructive knowledge of Complainant’s rights in the PPG mark leaves any doubt, see Pfizer, Inc. v. Papol Suger,WIPO Case No. D2002-0187 (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”), Complainant’s April 13, 2011 cease and desist letter provided formal written notice, see The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218; Cigna Corp. v. JIT Consulting, AF-00174 (finding that failure to respond to cease-and-desist letters amounts to an “admission-by-silence” and is evidence of both registration and use in bad faith).
In addition to Respondent’s misuses of the mark as set forth in Sections 6(A) and (B), supra, Respondent’s registration and use of the domain name, despite actual or constructive knowledge of Complainant’s rights, constitutes registration and use of the domain name in bad faith under Policy, paragraph 4(a)(iii). See Thomas Sabo GmbH & Co. Schmuckhandel KG v. na no,WIPO Case No. D2009-1519 (citing Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”); Samsonite Corp. v. Colony Holding, NAF Claim No. 94313 (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration)). 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 Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: June 27, 2011
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