ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Pittsburgh Paints Co. v. 池璀 (Chi Cui) Case No. D2025-3975 1. The Parties The Complainant is The Pittsburgh Paints Co., United States of America (“United States”), represented by Ladas & Parry, United States. The Respondent is 池璀 (Chi Cui), China. 2. The Domain Name and Registrar The disputed domain name is registered with DNSPod, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2025. On September 30, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2025, 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 (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2025, 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 in English on October 20, 2025. On October 15, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On October 20, 2025, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on October 21, 2025. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2025. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on November 14, 2025. 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 company headquartered in the United States and produces and commercializes particularly construction adhesives and sealants. The Complainant provides evidence that it owns, along with its affiliated companies, namely The Pittsburgh Paints (Canada) Specialty Ltd., and A-Paint Specialty, Inc., an international portfolio of trademark registrations for the mark LIQUID NAILS, including but not limited to the following registered trademarks: United Arab Emirates trademark registration number 198954, registered on March 29, 2017; Canadian trademark registration number TMA176763, registered on June 18, 1971; and European Union trademark registration number 5262613, registered on September 6, 2007. The disputed domain name was registered on August 28, 2024 and directs to an active website prominently displaying the Complainant’s trademarks, product packaging and labels, and also promoting and providing links to product listings on third-party e-commerce platforms (such as Amazon). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its LIQUID NAILS trademark since it incorporates the mark in its entirety, with the mere addition of a hyphen, being insufficient to avoid confusing similarity. The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is neither affiliated with, nor authorized by the Complainant, is not commonly known by the name “Liquid Nails,” and uses the disputed domain name to display unauthorized reproductions of the Complainant’s product packaging and labels without authorization, to suggest affiliation or to divert users. The Complainant submits that such misleading use cannot amount to a bona fide offering of goods or services, and does not establish any rights or legitimate interests. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent clearly knew of its longstanding LIQUID NAILS trademark and is using the disputed domain name to attract users for commercial gain by creating a likelihood of confusion, including through e-commerce platform referral links. The Complainant also notes the Respondent’s continued operation of the site despite its complaints and its use of a privacy service, which the Complainant submits further supports a finding of bad-faith registration and use.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requests that the language of the proceeding be English on the grounds that both the Complainant and its counsel are English-speaking, and that the disputed domain name and the content of the associated website are entirely in English. The Complainant submits that proceeding in English will ensure clarity and efficiency and will avoid unnecessary delay and expense that would result from requiring translation into Chinese. The Complainant adds that, should the Panel deem it necessary, a Chinese translation can be provided upon request. The Respondent did not make any specific submissions with respect to the language of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, and giving particular weight to the fact that the website at the disputed domain name is entirely in English, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2 Findings on the Merits A. Identical or Confusingly Similar It is well accepted that the first element functions primarily 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. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name, the only difference between the Complainant’s mark and the disputed domain name being the addition of a hyphen. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 a prima facie case 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Moreover, upon review of the facts and evidence, the Panel accepts that the Respondent is not affiliated with, authorized by, or commonly known by reference to the LIQUID NAILS name or mark and that the Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name. Instead, upon review of the facts and the evidence submitted in this proceeding, the Panel finds that the disputed domain name directs to an active website which shows a clear intent on the part of the Respondent to impersonate the Complainant and misleadingly pass the website at the disputed domain name off as the Complainant’s website for commercial gain, by prominently using the Complainant’s marks, product packaging and labels, and by providing links to product listings on third party e-commerce platforms (such as Amazon). In this regard, panels applying the Policy have consistently held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Additionally, the Panel also finds that the nature of the disputed domain name, being nearly identical to the Complainant’s trademark (the only difference being the added hyphen), carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant and its products or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1). The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has registered a domain name which is confusingly similar to the Complainant’s LIQUID NAILS trademarks, which were registered decades before the registration date of the disputed domain name. Therefore, the Panel finds that by registering the disputed domain name, the Respondent deliberately and consciously targeted the Complainant’s prior trademarks for LIQUID NAILS. This finding is incidentally further confirmed by the fact that the Respondent presents itself as the Complainant at the disputed domain name for commercial gain by prominently using the Complainant’s marks, product packaging and labels. The Panel finds that this shows clear targeting of the Complainant and further confirms the Respondent’s bad faith. Furthermore, the Panel notes that even a cursory Internet search or trademark search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned prior rights in its trademarks for LIQUID NAILS. In the Panel’s view, the above elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent has registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
page 5 Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directs to an active website showing a clear intent on the part of the Respondent to misleadingly pass it off as the Complainant’s for commercial gain. The Panel concludes from these facts that the Respondent is intentionally attracting Internet users for commercial gain to such website, by creating consumer confusion between the website associated with the disputed domain name and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. Further, panels have held that the use of a domain name for illegal activity, here, the claimed impersonation/passing off, constitutes bad faith, see WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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. /Deanna Wong Wai Man/ Deanna Wong Wai Man Sole Panelist Date: November 21, 2025
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