The Complainant is Akzo Nobel Coatings International B.V., Netherlands, represented internally.
The Respondent is Amchem Speciality Chemicals UK Limited, United Kingdom (“UK”) / Moses Ruraara, Uganda.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. After various reminders, on December 29, 2021, 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 January 11, 2022, 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 amendment to the Complaint on January 12, 2022.
The Center verified that the Complaint together with the amendment to 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 January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2022.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 16, 2022. 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 BackgroundThe Complainant is part of a group of companies specializing in paints and chemicals (hereafter the Complainant’s Group).
For the purpose of its activities, the Complainant is the owner of several trademarks (the “IMPERIAL CHEMICAL INDUSTRIES Trademarks”) including:
- the UK trademark IMPERIAL CHEMICAL INDUSTRIES No UK000022779381 applied for on August 8, 2001, for products and services in classes 1, 35, and 40;
- the UK trademark IMPERIAL CHEMICAL INDUSTRIES No UK00002282016 applied for on September 28, 2001, for products and services in classes 1, 2, 3, 4, 5, 16, 19, 29, 32, 33, 34, and 42;
- the European trademark IMPERIAL CHEMICAL INDUSTRIES No 002475895 applied for on November 26, 2001, and registered on September 23, 2005, for products and services in classes 1, 2, 3, 4, 5, 7, 9, 11, 16, 17, 19, 30, 35, 36, 37, 39, 40, 41, and 42;
- the UK trademark IMPERIAL CHEMICAL INDUSTRIES No UK00902475895 applied for on November 26, 2001, for products and services in classes 1, 2, 3, 4, 5, 7, 9, 11, 16, 17, 19, 30, 35, 36, 37, 39, 40, 41, and 42; and
- the UK trademark IMPERIAL CHEMICAL INDUSTRIES No UK00002285506 applied for on November 8, 2001, for products and services in classes 1, 2, 3, 4, 5, 7, 9, 11, 16, 17, 19, 29, 30, 35, 36, 37, 39, 40, 41, and 42.
Imperial Chemical Industries Limited is also the incorporation name of another entity of the Complainant’s Group.
The disputed domain name
At the date the Complaint was filed, the disputed domain name resolved to a website which presented products and services in the pharmaceutical chemicals sector while referring to the Complainant’s IMPERIAL CHEMICAL INDUSTRIES Trademarks and using the incorporation name and the address of one of the Complainant’s registered offices.
The Respondent has also used the disputed domain name to send fraudulent emails to third-parties claiming to be or otherwise associated to the Complainant.
At the time of the decision, the disputed domain name is inactive.
5. Parties’ Contentions A. ComplainantFirst, the Complainant stands that the disputed domain name is identical to its IMPERIAL CHEMICALS INDUSTRIES Trademarks given that it reproduces the entirety of the word mark owned by the Complainant. Moreover, the Complainant underlines that the disputed domain name is also identical to the incorporation names of another entity of the Complainant’s Group and that the Respondent fraudulently claims on the website to which resolved the disputed domain name to offer identical or alternatively highly similar goods and services offered by the Complainant.
Second, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the use of the disputed domain name as the Complainant is the registered owner of the IMPERIAL CHEMICAL INDUSTRIES Trademarks and therefore the Respondent has no bona fine reason or evidence in support to the contrary.
Furthermore, the Complainant argues that the disputed domain name was registered in bad faith, considering that (i) the Respondent has intentionally attempted to attract commercial gain by creating likelihood of confusion with the Complainant’s Trademarks, (ii) the Respondent has used the disputed domain name to send fraudulent emails to third-parties claiming to be or otherwise associated to the Complainant and is using the disputed domain name for commercial and financial gain by defrauding the Complainant’s clients.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant shall prove the following three elements:
(i) the disputed domain name is identical 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; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarAccording to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the IMPERIAL CHEMICAL INDUSTRIES Trademarks.
Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the disputed domain name is composed of:
- the IMPERIAL CHEMICAL INDUSTRIES Trademarks in its entirety; and
- the generic Top-Level Domain (“gTLD”) “.com”.
The gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is identical to the Complainant’s trademark.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice of the dispute, the respondent’s 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- 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.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Indeed, it appears that the Complainant did not authorize the Respondent to register and use the IMPERIAL CHEMICAL INDUSTRIES Trademarks in the disputed domain name or in any other manner.
Furthermore, the Panel finds that there is no evidence that the Respondent is known by the term of the disputed domain name or that the Respondent has the intent to use the disputed domain name in connection with a bona fide offering of goods and services since the disputed domain name is linked to a website promoting products and services highly similar to those of the Complainant while using the name and address of one of its registered office. Furthermore, the disputed domain name was used to send fraudulent emails to the Complainant’s clients claiming to be or being in association with the Complainant to order products and services.
Finally, the Respondent did not reply to the Complainant’s contentions.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights to or legitimate interests in the disputed domain name
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
Moreover, according to prior UDRP panel decisions the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see section 3.4 of the WIPO Overview 3.0).
First the Panel considers that it is established that the IMPERIAL CHEMICAL INDUSTRIES Trademarks were registered by the Complainant before the registration of the disputed domain name so there is a presumption of bad faith registration of the disputed domain name, given that the latter reproduces the Complainant’s trademarks in their entirety. In addition, the Panel considers that the Respondent clearly had knowledge of the Complainant’s prior trademarks at the time of registration of the disputed domain name, as the disputed domain name resolved to a website introduced as being one of the subsidiaries of a chemical company while using one of the registered office addresses of the Complainant. As a result, there is no doubt that at the time of registration of the disputed domain name, the Respondent was aware of the Complainant’s trademarks and registered the disputed domain name in bad faith.
Moreover, the Panel finds that the Complainant has provided evidence that the disputed domain name is not used in the context of a bona fide offer of goods or services since before notice of the Complaint, the email addresses generated from the registration of the disputed domain name were used to send fraudulent emails to the Complainant’s clients purporting to be the Complainant or in association with him and requesting the purchase of products and services thus resulting in the sending of invoices to the Complainant.
Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraphs 4(a)(iii) and 4(b).
7. DecisionFor 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
Christiane Féral-Schuhl
Sole Panelist
Date: March 2, 2022