The Complainant is The Dow Chemical Company of Midland, Michigan, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Tongzhu Gao, Dow Chemicalgroupholdingsllc of United States / Gao Tongzhu, Dow Chemicalgroupholdingsllc of China / Tongzhu Gao, Dow Chemicalgroupholdingslldngongsi of United States. 2. The Domain Names and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR while the disputed domain names , , , , and are registered with Shanghai Meicheng Technology Information Development Co., Ltd. PDR Ltd. d/b/a PublicDomainR and Shanghai Meicheng Technology Information Development Co., Ltd. are referred to below separately and collectively as “the Registrar”. 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 8 and 10, 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.
On September 12, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on September 14, 2018. The Complainant requested that English be the language of the proceeding on September 15, 2018.
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 in English and Chinese of the Complaint, and the proceedings commenced on September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Response was filed with the Center on October 4, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 23, 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 is one of the largest chemical companies in the world. Founded in 1897, it now has customers in approximately 175 countries. It is the registered proprietor of trademarks including United States trademark registration number 140,588 for DOW and device, registered on March 22, 1921 and specifying goods in classes 1, 2, 3, 4, and 5, including chemicals. The Complainant is also the registrant of the domain name , created on December 10, 1992, that it uses in connection with its official website where it provides information about itself and its products.
The Respondent is an individual and a company variously named Dow Chemicalgroupholdingsllc and Dow Chemicalgroupholdingslldngongsi. The company is purportedly a United States company but the contact telephone and fax numbers are a Chinese mobile number and its contact street address shows a Chinese postcode.
The Parties were parties to a previous proceeding regarding a different domain name . The panel in that proceeding decided that the Respondent had registered and was using the Complainant’s DOW trademark in bad faith and ordered the transfer of that domain name to the Complainant. See The Dow Chemical Company v. Gao tongzhu, Dow Chemical Group holding limited liability company,WIPO Case No. D2016-1804, decided on November 2, 2016.
In the present proceeding, the disputed domain names , , and were created on December 8, 2016, while the disputed domain names and were created on December 28, 2016.
The disputed domain name resolves to a website in English for “Dow Chemical Group Holding limited liability company” that is described as a “leading diversified chemical company”. The website displays a logo for DOWNBOW in an ellipse and the corporate information on the website variously refers to “Downbow Chemical Company”, the “Dow Chemical Company” and “Dowchenical”. The site includes certain content found on the Complainant’s official website. The other five disputed domain names do not resolve to any active website. 5. Parties’ Contentions A. Complainant
Each of the disputed domain names is confusingly similar to the Complainant’s DOW trademark. They wholly incorporate that trademark. The addition of other words does nothing to alleviate the confusing similarity.
The Respondent has no rights or legitimate interests in any of the disputed domain names. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the DOW trademark in any manner. By using the disputed domain name in connection with a website that falsely appears to be a website for, or otherwise associated with, the Complainant, and by passively holding the other disputed domain names, the Respondent is not engaged in a bona fide offering of goods or services under the Policy. Given the Complainant’s established use of the DOW trademark for 123 years, it is beyond exceedingly unlikely that the Respondent is commonly known by this trademark. The Respondent is not making a legitimate noncommercial or fair use of any of the disputed domain names.
The Respondent has registered and is using the disputed domain names in bad faith. By using the disputed domain name , the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the DOW trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. All the disputed domain names, including those that are passively held, were created one month after a previous proceeding against the Respondent in which a panel ordered the transfer of the domain name . B. Respondent
Dow chemicalgroupholdingsllc was incorporated in Delaware, United States, in January 2016. Its name was chosen because the company was founded by three friends whose initials are D, O and W. The initials of the company name and the disputed domain names have a special meaning and there is no bad faith registration by the complainant. Dow chemicalgroupholdingsllc registered the disputed domain names in December 2016. It has been using and holding these domain names since that time and the Complaint is unreasonable. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar PDR Ltd. d/b/a PublicDomainR did not indicate the specific language of the Registration Agreement for but did indicate that the English language was used to inform the Registrant of that Registration Agreement as well as the customer master agreement during the domain name registration and customer signup process for that disputed domain name. The Registrar Shanghai Meicheng Technology Information Development Co., Ltd. confirmed that the Registration Agreements for the other disputed domain names are in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the disputed domain names are in English and that one of the disputed domain names resolves to a website in English.
The Respondent requests that Chinese be the language of the proceeding in accordance with paragraph 11 of the Rules. It submits that it cannot understand the content of the Complaint in English.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed in Chinese. The fact that the Respondent uses one of the disputed domain names in connection with a website in English indicates that he is indeed able to understand that language. Further, the Registrar’s correspondence with the Registrar for one disputed domain name was in English. The Center has appointed a Panel familiar with both Chinese and English. Therefore, the Panel considers that requiring either Party to translate its submissions would create an undue burden and unnecessary delay, while accepting all documents as filed in their original language causes no unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents filed in Chinese without translation. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the DOW trademark.
Each disputed domain name wholly incorporates all non-figurative elements of the Complainant’s DOW trademark as its initial element. For technical reasons, the disputed domain name cannot include the figurative elements, hence they can be disregarded in the comparison with the Complainant’s trademark. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031.
Each disputed domain name includes certain additional elements. Four include the dictionary word “chemical” or the obvious misspelling “chenical”, plus the dictionary word “group”. Another includes a hyphen followed by the dictionary word “group”. However, mere dictionary words do not prevent a finding of confusing similarity between a domain name and a trademark for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The misspelling of “chemical” in two disputed domain names and the addition of punctuation in another do not alter that result. The sixth disputed domain name contains three additional letters “zld” after “dow” but this element does not prevent a finding of confusing similarity either.
Each disputed domain name also includes a generic Top-Level Domain (“gTLD”) suffix, either “.com” or “.net”. A gTLD suffix generally has no capacity to dispel confusing similarity with a trademark either. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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.
As regards the first circumstance above, the disputed domain name is being used with a website that purports to be for “Dow Chemical Group Holding limited liability company” and provides information on its goods and services. The disputed domain name wholly incorporates the non-figurative elements of the Complainant’s DOW trademark. The Respondent’s website offers goods and services identical or very similar to those of the Complainant. This all gives the impression to Internet users that the Respondent’s website is somehow affiliated with the Complainant. Yet the Complainant informs the Panel it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the DOW trademark in any manner. These facts indicate that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purposes of the Policy. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent individual’s name is Tongzhu Gao or Gao Tongzhu, not the disputed domain names. Although the Respondent organization is named as “Dow Chemicalgroupholdingsllc” or “Dow Chemicalgroupholdingslldngongsi”, there is no evidence that it has been known by either of those names other than in the Registration Agreements and on the Respondent’s own website, and even then, the website is not consistent and refers to the Respondent by different names. Accordingly, there is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a commercial website and the other five disputed domain names do not resolve to any active website. These are not a legitimate noncommercial or fair use of the disputed domain names covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name .
Turning to the Respondent’s arguments, the Respondent organization alleges that it has been incorporated in Delaware under the name “Dow Chemicalgroupholdingsllc” but provides no evidence that it has been incorporated anywhere. It only provides domain name registration certificates showing that disputed domain names were registered under that organization name. The Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
The Respondent registered the disputed domain names in December 2018, one month after a panel in a previous proceeding under the Policy found that the Respondent had registered and was using the domain name in bad faith. See The Dow Chemical Company v. Gao tongzhu, Dow Chemical Group holding limited liability company, supra. Therefore, the Panel finds that the Respondent had actual knowledge of the Complainant’s DOW trademark at the time that it registered the disputed domain names in the present proceeding. The Respondent asserts that it chose the name “Dow” because those three letters are the initials of its co-founders’ names but it does not provide any evidence in support of that assertion, such as the identity of the co-founders and, in any case, that does not justify registering a domain name that the Respondent knew to be confusingly similar to the Complainant’s DOW trademark. Accordingly, the Panel finds that the Respondent registered the disputed domain names in bad faith.
The Respondent uses the disputed domain name , which is confusingly similar to the Complainant’s DOW trademark, in connection with a commercial website. Given this circumstance and those described in Section 6.2.B. above, the Panel considers that the use of this disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website as described in paragraph 4(b)(iv) of the Policy.
The Respondent makes only passive use of the other five disputed domain names, but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant’s DOW trademark is widely known in the chemical sector through the Complainant’s widespread use and promotion of that mark. These other five disputed domain names wholly incorporate the non-figurative elements of the Complainant’s DOW trademark as their initial element and in four cases combine it with the word “chemical” or the obvious misspelling “chenical”, which describes the Complainant’s goods. The sixth disputed domain name combines the DOW trademark with the letters “zld” that may be understood as an acronym for “zero liquid discharge”, a water management approach to which the Complainant offers an alternative. The Respondent has registered and used two other domain names that incorporate the Complainant’s DOW trademark in bad faith, including and . These are all indicia of use in bad faith. Accordingly, the Panel finds that the Respondent uses the disputed domain names , , , and in bad faith.
Therefore, the Panel finds that all the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names, , , , , , and be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: October 30, 2018
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