The Complainant is Banca Monte Dei Paschi Di Siena S.p.A. of Siena, Italy, represented by Rapisardi Intellectual Property, Italy.
The Respondent is Platform Specialty Products Corporation of Cary, North Carolina, United States of America, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain GRS Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2018.
The Center verified that the Complaint together with the amended 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 June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Response was filed with the Center on July 14, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 19, 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. 4. Factual Background
The Complainant claims to be the world’s oldest bank and the fourth largest commercial and retail bank in Italy with more than 1,700 branches, 28,000 employees, and 5 million customers all over the world.
It has numerous registered trademarks in many countries around the world including many which are for, or based on, “MPS”. For example, it has a figurative version of “MPS Banking Group” registered in the United Kingdom, Trademark No. 1463247 for banking and financial services in International Class 36. This trademark was registered from May 1, 1991. The letters “MPS” are in much larger type than the other words. The Complainant also has registrations for “MPS” alone, including:
(a) Italian Trademark No. 0882867 which was registered from December 23, 2003 for a wide range of goods and services; and
(b) International Registration No. 824744 for banking and financial services, the basic registration date being April 14, 2004 and designating a wide number of countries including, amongst others, the United States of America.
The Complainant also has numerous domain names in generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains based on “MPS”.
The disputed domain name was registered by the Respondent on June 15, 2017. According to the Complaint, it has never resolved to an active website.
The Respondent is a diversified manufacturer of specialty chemicals and materials. One of its subsidiaries or divisions is MacDermid Performance Solutions. It appears that the Respondent acquired the shares in MacDermid Incorporated in October 2013.
Through that acquisition, the Respondent acquired ownership of several United States Registered Trademarks for, or including, “MacDermid” including:
(a) United States Trademark No. 0805857 for specialized chemical compounds in International Class 1 which was filed on March 9, 1965 and formally registered on March 22, 1966;
(b) United States Trademark No. 1543136 for specialized chemical compounds in International Class 1 which was filed on January 28, 1988 and formally registered on June 13, 1989;
(c) United States Trademark No. 3297557 (as a standard character mark) for photopolymers and photosensitive materials in International Class 1 and plastic film for use in printing, electronics and other industrial applications in International Class 17 which was filed on April 3, 2006 and formally registered on September 25, 2007.
At the time of this decision, the disputed domain name resolves to a website at the domain name which, amongst other things, appears to promote the operations and products of the Respondent’s divisionMacDermid Performance Solutions, including MacDermid Graphics Solutions, MacDermid Offshore Solutions, MacDermid Enthone Electronics Solutions, MacDermid Enthone Industrial Solutions, and MacDermid Autotype. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
As mentioned in section 4 above, the Complainant has proven ownership of registered trademarks for “MPS” alone as well as the distinctive component of many other MPS-formation trademarks.
The disputed domain name, disregarding the gTLD, “.company”, is identical to the registrations for MPS alone and confusingly similar to the Complainant’s MPS formation registrations.
The Respondent disputes these findings pointing to the different goods and services of the respective businesses and the geographical separation of the parties’ respective headquarters. To the extent that those matters are true, they may fall for consideration under the other requirements of the Policy. They are not relevant, however, under this limb as all that is required is a side-by-side visual and oral comparison between the proven trademark rights and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.7. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. It points to its very long use of the acronym “MPS” and global fame. It says that “MPS” is not a word in common use, nor having any real meaning in any language other than as an acronym for its name.
The Respondent points out, however, that there are numerous entities which use the acronym “MPS” which are not associated with the Complainant. These include used by Trimble General Contractor Solutions, used by Multimedia Productions Services, used by National MPS Society, used by MPS Limited, used by Motorcycle Performance Specialties Inc., and used by MPS Group.
The Respondent through its subsidiaries has also been using the name “MacDermid” in relation to speciality chemicals since at least 1965. It appears that the Respondent adopted the name “MacDermid Performance Solutions” as the name for that division of its operations only in about October 2015 on its acquisition of Alent plc. The Panel notes, however, that the entity within the Respondent’s corporate group that was reported as the acquiring entity was “MacDermid Performance Acquisitions Limited”. So it would appear that “MacDermid Performance” had some currency with the Respondent’s operations before that date. Moreover, “MacDermid Performance Solutions” is not at all an inapt name or description for the Respondent’s relevant operations.
Further, the manufacture and distribution of the speciality chemicals and materials which the Respondent’s corporate group appears to be engaged in is a very different field of activity to the banking and financial services which the Complainant is primarily associated with.
The Panel does note that the Complainant’s registered trademark in Italy does specify goods in both International Classes 1 and 17 which are the classes covering the Respondent’s operations. That registration is limited to Italy and, assuming the goods are the same, could not be used to restrict the Respondent’s operations in the United States of America or other parts of the world. The Complainant’s registration extending to the United States of America is for banking and financial services in International Class 36.
Having regard to all these matters, the Panel concludes the Complainant has not established that the Respondent does not have rights or legitimate interests in the disputed domain name. From the record in this proceeding, the Respondent appears to be using the disputed domain name in connection with a good faith offering of goods and services very different to the Complainant’s operations and does not appear to be attempting to trade on any reputation that the Complainant has established in MPS. C. Registered and Used in Bad Faith
As the Complaint must fail in view of the Panel’s conclusions in section 5B above, no good purpose would be served by considering the third requirement under the Policy. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: August 2, 2018
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