The Complainant is The Dow Chemical Company, United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Osama Ali, ITC, Egypt. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 24, 2019, 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 October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Center received two email communications from the Respondent on October 30 and November 17, 2019 (see below). The Center appointed Nick J. Gardner as the sole panelist in this matter on November 19, 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 one of the largest chemical companies in the world. Founded in 1897, it now has customers in approximately 175 countries. It employs around 37,000 people and had sales in 2018 of approximately USD 50 billion. It is the registered proprietor of numerous trademarks for the term DOW the earliest of which is US registration 140588 for DOW, registered on March 22, 1921. It owns various registrations for DOW in Egypt including registration no 029148 registered on October 24, 1960. These trademarks are referred to in this decision collectively as the “DOW trademark”. The Complainant is also the registrant of the domain name The Complainant also has numerous registrations for a device comprising the word “Dow” included in a diamond, which it typically seems to use with the word in white and the diamond in red, as follows: The Respondent is an individual resident in Egypt. The Disputed Domain Name does not resolve to an active website but the Respondent maintains a Facebook page which references the Disputed Domain Name and show its use by the Respondent in email addresses. These refer to a Dr. Masoub Dawoud as the “CEO and Founder” of “Daw Chemicals Egypt”. The page bears a prominent logo identical to the Complainant’s logo as shown above save for the substitution of an “a” for the “o”. The Disputed Domain Name was registered on March 19, 2019. 5. Parties’ Contentions A. Complainant The Complainant’s contentions are set out at length and numerous previous UDRP decisions are relied upon by the Complainant. It is not necessary to repeat those here – where relevant they are addressed in the Panel’s discussion below. The Complainant’s contentions can be summarized as follows. The Disputed Domain Name is similar to the DOW trademark involving the substitution of “a” for “o” and addition of the descriptive term “chemicals”. The Respondent has no rights or legitimate interests in the term “dawchemicals”. In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the use of a copy of its logo on the Respondent’s Facebook page clearly shows an intention to confuse. B. Respondent The Center received an email from a Dr. Dawoud (see discussion below as to respondent identity) which the Panel in its discretion will treat as the Response. It reads as follows: “My name is Dr mosab Dawoud owner of egyption local company under name of : Dawchemicals Daw from my family name dawoud and chemicals from the industry which we supply the chemicals to end users Where is the conflict here ??? Also our website under construction as we use emails only till now ; One other things we never said we are DOW All market know who I’m ; you can ask many Dow employee about dr mosab ; I worked with univar who represents Dow product before how I can do that now . Any way I’m open for any future suggestions to close the issue without any problems. Or loss more money and waste time.” A further email from Dr. Dawoud said, “[l]et me know if you need Dawchemicals legal documents copy To be sure there is no any relationship with DOW. We are Dawchemicals [followed by Arabic script]”. 6. Discussion and Findings To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant clearly has rights in the DOW trademark. The Panel concludes the Disputed Domain Name is confusingly similar to the DOW trademark. The Panel agrees in this regard with the approach set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, namely: “Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark? A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). It is also established that the addition of a dictionary or geographic term (such as here “chemicals”) to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the DOW trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation and where there is no evidence of anyone else using that term. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. It is not clear to the Panel what the connection is between the named respondent, Osama Ali, ITC and the author of the emails described above, Dr Mosab Dawoud. Whilst the evidence is unsatisfactory, the Panel will for present purposes assume Dr. Dawoud is the substantive Respondent and that his real name is indeed Dr. Mosab Dawoud. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use DOW trademark. The Complainant has prior rights in the DOW trademark, which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). In the circumstances, the Panel assumes Dr. Dawoud is seeking to argue that (ii) above applies. The difficulty with this is that his name is “Dawoud” not “Daw” and there is no evidence before the Panel that he has been known as “daw” or “dawchemicals”. Dr. Dawoud may of course also be arguing that his company name is “dawchemicals” and this establishes a legitimate interest. The Panel does not consider that a respondent who deliberately adopts a name which corresponds to, or is similar to, that of a complainant, with a view to taking advantage of that complainant’s fame and reputation, can then take advantage of an “own name” provision to justify its actions. For reasons discussed below in relation to bad faith, the Panel considers this is the position here. The right to use one’s own name is not unlimited and cannot be used to circumvent well-known prior rights in a similar name – see for example Peter Frampton v. Frampton Enterprises, Inc.,WIPO Case No. D2002-0141: “While the Panel recognizes that any individual has a right to use his(her) name in connection with a business, that right is not unfettered; instead, it is circumscribed by the prior trademark rights of others who use that name in connection with specific goods and services, as is certainly the case here. A party alleging, under paragraph 4(c)(ii), as the Respondent purports to do here, that it is commonly known by a particular name, sufficient to show legitimate rights and interest in a domain name that contains that particular personal name (e.g., a surname), must provide adequate extrinsic proof that a corresponding group of consumers, e.g., Internet users, who are likely to access that party’s web site, associates that domain name with that party rather than with the trademark owner, i.e., that domain name possesses requisite secondary meaning, or at least that party has used or is using that name sufficiently broadly such a panel can infer that such meaning exists.” The Panel agrees with that approach in the circumstances of the present case. Dr. Dawoud has manifestly adopted “dawchemicals” as his company’s name with knowledge of the Complainant and its well known established international business in an identical field. Accordingly, the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled. In doing so, the Panel acknowledges that adoption by the Respondent of an abbreviation of his own name may nevertheless also be relevant as to bad faith – see discussion below. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (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 web site 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 web site or location or of a product or service on your web site or location. The Panel assumes Dr. Dawoud argues that he has adopted an abbreviation of his own name as part of his company name and that this shows he has not acted in bad faith. The difficulty with this is that he has quite clearly adopted the Complainant’s logo as well. His variant of it with the “o” replaced by an “a” features extremely prominently at the top of his Facebook page. This cannot be coincidental. The Panel concludes that there is a deliberate attempt to confuse customers. “Dow” and “Daw” are visually similar and use of the word in the same logo clearly presents an impression, which, visually to a casual observer, is in the Panel’s opinion clearly confusing. It suggests the Respondent is in some way connected or authorised by the Complainant. He is not. Accordingly, the Panel concludes that he is attracting Internet users to an online location (his Facebook page) and his use of the Disputed Domain Name creates a likelihood of confusion with the Complainant’s DOW trademark. As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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, Nick J. Gardner
We never say we are DOW we are DAW chemicals
And we have legally certificate & certified documents ; plus valid tax cards and commercial registration ; from the ministry of commerce and industry: to import and export the chemical from Egypt and to Egypt valid one years ago
Or DuPont; as we know l very well who they are ; personally I’m familiar with DOW - DUPont many years ago and I’m not imagine who send you this prosecution that our small company fo such bad things
Sole Panelist
Date: December 3, 2019
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