The Complainant is PPG Industries Ohio, Inc. of Cleveland, Ohio, United States of America (“United States”), represented by Ladas & Parry, United States.
The Respondent is Bin, Binzhenhua of Guangzhou, Guangdong, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with 22net, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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 November 26, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on November 27, 2018. The Respondent requested that Chinese be the language of the proceeding on November 29, 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 December 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2018. The Respondent did not submit any substantive Response. On December 26, 2018, the Center notified the Parties that it would proceed with panel appointment.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 9, 2019. 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 manufacturer of paints, coatings, and specialty materials. Founded in 1883 as Pittsburgh Plate Glass, the Complainant’s corporate group now has four headquarters, including one in Hong Kong, China, and 156 manufacturing facilities in over 50 countries. The Complainant owns trademark registrations for a device including the letters “PPG” (the “PPG mark”) in multiple jurisdictions, including United States trademark registration number 0836998, registered on October 17, 1967, specifying goods in class 2. That trademark registration remains current. The Complainant is the registrant of numerous domain names, including , that it uses in connection with its official website where it provides information about itself and its products.
The Respondent is an individual resident in Guangzhou, China. The Respondent’s contact email address is associated with over 100 domain names, many of which include third party trademarks or misspellings of them, such as , , , , and .
The Respondent registered the disputed domain name on August 25, 2012. The disputed domain name has resolved to, variously, a landing page displaying pay-per-click (“PPC”) links for email services; a blocked webpage; a computer security check; and a domain name broker’s homepage.
The Complainant sent a cease-and-desist letter to the Respondent’s privacy service by email dated September 13, 2018 and a follow-up email on September 28, 2018. The Respondent replied by email on September 29, 2018 asserting that he had removed third party advertising related to the Complainant from this domain and advising that he did not think that the Complainant had other rights to this domain. The Complainant sent a further cease-and-desist letter to the Respondent by email dated October 2, 2018. At the time of this decision, the disputed domain name resolves to a domain name broker’s homepage. The domain name broker is also a registrar but it is not the Registrar of the disputed domain name. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s PPG mark. The disputed domain name wholly incorporates that mark, simply adding to it the generic term “my” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent has made any effort to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name. There is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name. The Respondent registered the disputed domain name without the Complainant’s authorization or consent.
The disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to pages that feature either PPC or third party advertising, or allegations that the URL has been blocked, requests visitor’s login credentials, and provides a telephone number for visitors to contact. The Respondent is attempting to directly benefit from the advertising and/or deceive visitors into providing personal information. In response to the Complainant’s cease-and-desist letter, the Respondent did not agree to transfer the disputed domain name and did not provide any explanation or evidence that they have legitimate interests or rights in it. B. Respondent
The Respondent did not file a substantive response to the Complainant’s contentions. 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 confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the Respondent can understand English, as the Respondent replied in English to the Complainant’s cease-and-desist letter, and the Complainant would have to retain specialized translation services to proceed in Chinese at a cost likely higher than the overall cost of the proceeding.
The Respondent requests that Chinese be the language of the proceeding. His main arguments are that the Registration Agreement is in Chinese, that his English ability is extremely poor and he is not sure about his lawyer’s English level, and that the use of non-Chinese documents will prejudice the Respondent in eventual legal proceedings in China.
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. Prior to this proceeding, the Respondent chose to write to the Complainant in English, and he evidently understood the Complainant’s cease-and-desist letter, which was also written in English. This demonstrates that the Respondent is indeed able to understand that language. The Respondent submitted his language request in Chinese and could have submitted a substantive Response in Chinese as well, but did not avail himself of the opportunity. In the circumstances, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and unnecessary delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. However, the Panel will accept all communications as filed in their original language, whether Chinese or English, without a 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 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.
The burden of proof of each of these elements is on the Complainant. Although the Respondent has failed to submit a substantive Response, that does not constitute an admission that the Complainant’s claims are true. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the PPG mark.
The disputed domain name incorporates all the non-figurative elements of the Complainant’s trademark, i.e., the letters “ppg”. For technical reasons, the disputed domain name cannot include the figurative elements of that trademark, hence these other elements can be disregarded in the comparison between the disputed domain name and the PPG mark. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031.
The disputed domain name also includes the letters “my” as its initial element. Regardless of whether these are read as the English word “my” or simply as two individual letters, on a side-by-side comparison, the non-figurative elements of the PPG mark remain clearly recognizable in the disputed domain name.
The disputed domain name also includes the gTLD suffix “.com”. A gTLD suffix is generally incapable of preventing confusing similarity between a domain name and a trademark for the purposes of the Policy. 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 name is 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 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.
The disputed domain name is confusingly similar to the Complainant’s PPG mark. The Complainant informs the Panel that the Respondent registered the disputed domain name without the Complainant’s authorization or consent. The disputed domain name has resolved to various webpages, including a landing page displaying PPC links and a domain name broker’s homepage. The Panel does not consider that either of these uses in and of itself confers a right or legitimate interest arising from a bona fide offering of goods or services for the purposes of the second element of the Policy. The disputed domain name is not a dictionary word. Neither the PPC links nor the redirection to the broker’s homepage was generated on the basis of “myppg” as an acronym either. Accordingly, the Panel does not find that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
According to the Registrar’s WhoIs database, the Respondent’s name is “binzhenhua”. There is no evidence on the record that the Respondent has been commonly known as “myppg” within the terms of paragraph 4(c)(ii) of the Policy.
The disputed domain name has resolved to various webpages, some of which operate for the commercial benefit of the Respondent, the operators of the PPC-linked sites, the domain name broker, or some combination of them. None is a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, 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. The Respondent failed to rebut that case because he did not assert any rights or legitimate interests, either in his reply to the Complainant’s cease-and-desist letter prior to the Complaint or during this proceeding.
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 name. 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. 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 name in 2012, many years after the Complainant obtained its United States trademark registration. The disputed domain name incorporates the non-figurative elements of the Complainant’s PPG mark, i.e., the letters “ppg”, preceded by the letters “my”. The disputed domain name is not a dictionary word. Nothing in the PPC links or the other content on the various webpages to which the disputed domain name has resolved indicates that the disputed domain name has been used as an acronym either. Although there is nothing on the record to show that the PPC links or the webpages referred to the Complainant, its mark or its products, the evidence does reveal that the Respondent has registered many other domain names that, like the disputed domain name, incorporate third party trademarks or misspellings of them. The Respondent had the opportunity to become aware of the Complainant’s mark by 2012 via the Internet, if not offline. Therefore, based on the record of this proceeding, the Panel considers the most plausible explanation for the Respondent’s choice of the disputed domain name to be that he was aware of the Complainant’s trademark rights in the PPG mark and registered the disputed domain name in bad faith.
The Respondent currently uses the disputed domain name in connection with a domain broker’s homepage. This use is for the commercial gain of the Respondent, or the broker, or both. Given all the facts, the Panel considers that the Respondent’s use of the 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 a product or service on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: January 17, 2019
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