Complainant is PPG Industries Ohio, Inc. of Cleveland, Ohio, United States of America (“United States”), represented by Ladas & Parry LLP, United States.
Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. On March 4, 2018, the Center received an email communication from someone named as Respondent stating that a third party used her name without her knowledge to register the disputed domain name. The Center acknowledged receipt of the email and indicated that the email would be brought to the Panel’s attention and that it is the Panel’s role to decide her claim regarding identity theft.
On March 21, 2018, the Center informed the Parties that it did not receive any formal Response by the specified Response due date and it would proceed with the Panel appointment shortly.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 29, 2018. 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.
In accordance with the Rules, paragraph 11, the language of the proceeding will be in English as the Registration Agreement is in English. 4. Factual Background
Complainant PPG Industries Ohio, Inc. is a United States corporation registered under the law of the state of Delaware. It is a leading manufacturer of paints, coatings, and specialty materials with operations in nearly 70 countries around the world. Complainant was founded in 1883 as Pittsburgh Plate Glass by John B. Ford and John Pitcarin in Pittsburgh, Pennsylvania. The company’s global headquarters is still located in Pittsburgh, however it has grown to employ nearly 47,000 people across the globe. Complainant had net sales of 14.3 billion in 2016 and is ranked 182 on the Fortune 500 list. Complainant has approximately 156 manufacturing facilities across the globe.
Complainant has submitted as Annex F copies of its United States trademark registrations, as well as certain additional registrations in various other jurisdictions for the PPG mark, the earliest of which dates back to April 29, 1947. Complainant also owns numerous domain names, including its primary domain name , which was registered in December 1990 and which is used by Complainant as a forum to promote and disseminate information regarding Complainant’s various offerings under the PPG mark.
The disputed domain name was registered on April 22, 2017, as shown in Annex A submitted by Complainant. Currently, the disputed domain name redirects users to the Complainant’s website located at , and specifically to the URL . 5. Parties’ Contentions A. Complainant
Complainant asserts that Complainant first registered marks in the United States containing the term “PPG” in 1947, and has subsequently registered numerous other PPG formative marks and currently has operations in the United States, Canada, Germany, Hong Kong, China, Australia, and other countries. The PPG mark is the subject of numerous active registrations and applications including United States Registrations No. 0836998, 0847608, 0847924, 1735888, and Applications No. 87345486, 87191972, 86949078, in respect of, inter alia, various types of paints and coatings.
Complainant owns numerous domain name registrations comprising the PPG mark (and variations thereof), such as , , , , , , , , and .
Complainant contends that the disputed domain name is nearly identical to the PPG mark as it wholly incorporates the mark with the added generic terms “tech” and “solutions”, which serve to create a false association between the disputed domain name and the PPG mark. Additionally, Complainant asserts that because it is committed to developing innovations and new technologies in the industrial sector, the disputed domain name creates a false association as visitors to the disputed domain name could reasonably connect it with this aspect of Complainant’s business.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name, because there is no evidence that Respondent made any effort to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent has been commonly known by the disputed domain name, or that Respondent has been making a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent registered the disputed domain name without Complainant’s authorization or consent, and the disputed domain name merely redirects users to Complainant’s website located at . Complainant also asserts that since Respondent claims that she is a victim of identity theft, she never conducted any legitimate business utilizing the disputed domain name, nor is there any record of the disputed domain name or mark being used in commerce by anyone other than Complainant.
Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent’s domain name misleadingly incorporates Complainant’s PPG mark for the purpose of attempting to attract for commercial gain, Internet users to its online location to create a false association with Complainant and Respondent’s website. According to Complainant, upon visiting the disputed domain name, visitors are redirected to Complainant’s website, which merely reinforces the connection and misleads visitors into believing that the offending website is owned by or affiliated with Complainant.
Complainant also contends that the disputed domain name was used as a central component of a scheme to defraud one of Complainant’s vendors. More specifically, Complainant asserts that an unknown contact posed as Complainant’s VP of purchasing to one of Complainant’s vendors who had previously sold computer equipment to Complainant. On April 26, 2017 this vendor received a faxed request for a quote. The sales representative for the vendor engaged the purchaser via email and phone conversations after receiving the faxed request for quote. The email address used to place the order and the email addressed used to indicate where the invoices should be submitted both used the disputed domain name. According to Complainant, the ostensible customer emailed two fraudulent purchase orders for computer equipment: the first was for 400 pieces that shipped on May 10, 2017, and the second was for 300 pieces that shipped on May 30, 2017. The equipment was shipped to a specified address in Houston, Texas with attention to a specified individual. The address turned out to be for a moving and storage company. The total cost to the vendor for the lost equipment was USD 235,000. Complainant later confirmed that Complainant’s VP who purportedly made the purchase order had retired from the company and that the orders were fraudulently placed. Upon discovering this information, the vendor’s sales representative contacted the moving and storage company and was told that the specified individual to receive the order was no longer employed with the company. Furthermore, the moving and storage company confirmed that the packages were delivered and that one of its employees signed for at least one of the shipments. However, all packages had been retrieved by the company’s customer, whose identity the company would not divulge in the interest of protecting the identity of its customer. Thereafter, the vendor filed a criminal complaint with IC3 (the Internet Crime Complaint Center) in connection with this activity.
Complainant further contends that the true person responsible for registering and using the offending domain name has provided false contact information to the Registrar, which also evidences a showing of bad faith registration. Complainant asserts that it contacted this individual, who answered telephonically and via email that she was the victim of identity theft and that the defrauder used her name, credit card number and modified home address, as well as the email, […]@, to open an online fax account with Fax87, which was used for defrauding the vendor mentioned above. According to Complainant, this individual also claimed that she received a letter from the Attorney General of Indiana, in May of last year, informing her that the person who used her credit card had also been trying to use her name and address to send “unsolicited advertisements” to fax machines in Indiana under the company name “PPG Industries Ohio, Inc.” The individual also informed Complainant that she filed an Identity Theft Report with her local police department in Texas. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the PPG mark, which has been registered in the United States, the European Union, and elsewhere.
With Complainant’s rights in the PPG mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s PPG mark as it incorporates the PPG mark in its entirety as the first element of the disputed domain name. The addition of the descriptive terms “tech” and “solutions” after the “ppg” element does not distinguish the disputed domain name from Complainant’s PPG mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the PPG mark and in showing that the disputed domain name is identical or confusingly similar to this trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its PPG mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to redirect Internet users to Complainant’s own website. Respondent has also used the disputed domain name to conduct a scheme to fraudulently obtain products valued at a large sum of money from a third party ostensibly in relation to a large order for certain computer equipment placed by Complainant. Such use of the disputed domain name constitutes fraud and does not, and cannot, constitute a bona fide use or legitimate interest in the disputed domain name. Respondent is not known by the disputed domain name.
Given that Complainant has established with sufficient evidence its prima facie case, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
In the instant proceeding, Respondent registered the disputed domain name that fully incorporates Complainant’s PPG mark with the generic terms “tech” and “solutions” which may create confusion by suggesting to consumers that the disputed domain name relates to Complainant and its goods or services provided under the PPG mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004. Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website located at . Numerous prior panels have found that redirecting a disputed domain name to the complainant’s website supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. See WIPO Overview 3.0, section 3.1.4; see also, e.g., Haas Food Equipment GmbH v. Usman ABD, Usmandel,WIPO Case No. D2015-0285; Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447.
Respondent has also sent emails containing fraudulent purchase orders to one of Complainant’s vendors using an email address incorporating the disputed domain name. This use of the disputed domain name leverages the connection between the disputed domain name and the PPG mark, as well as other usages of the mark in the body of the fraudulent emails and in the attachments (including the purchase orders), to defraud the third party vendor. Accordingly, there is no doubt that Respondent was well aware of Complainant and its PPG mark when Respondent registered the disputed domain name. And given the uncontested evidence showing that Respondent has used the disputed domain name to make fraudulent purchases from one of Complainant’s third party vendors, resulting in a theft of computer equipment valued at USD 235,000, it is obvious that Respondent specifically targeted Complainant and its PPG mark, and has done so opportunistically and willfully.
The use of the disputed domain name for a scam demonstrates bad faith registration and use for Policy purposes. This brings this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy, that “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] website or location or of a product or service on [his] website or location.” See, e.g., Valero Energy Corporation and Valero Marketing and Supply Company v. Rodney Ballard,WIPO Case No. D2017-0086.
Respondent also evidently registered the disputed domain name using the identity of another party who has no actual connection to the disputed domain name. The use of false registration data in connection with the disputed domain name (and in this case, broader identity theft used to perpetrate fraud) further supports a finding of bad faith registration and use. See, e.g., Action Instruments, Inc v. Technology Associates,WIPO Case No. D2003-0024.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 7. Decision
For 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: May 1, 2018
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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