The Complainant is Occidental Chemical Corporation, United States of America (“U.S.”), represented by Renner, Kenner, Greive, Bobak, Taylor & Weber, U.S.
The Respondent is dotPH Private Registration/Oxychem Corporation Philippines, Classico Digital Media Inc., Philippines; internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 19, 2020, the Center transmitted by email to dotPH a request for registrar verification in connection with the disputed domain name. On February 19, 2020, dotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, disclosing further 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 February 28, 2020 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 29, 2020. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2020. The Response was filed with the Center on March 30, 2020. The Center appointed Nick J. Gardner as the sole panelist in this matter on April 30, 2020. 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 Occidental Chemical Corporation, a U.S. manufacturer of chemical products necessary for a variety of products such as plastics, pharmaceuticals and water treatment chemicals. The Complainant has manufacturing facilities in the U.S., Canada and Latin America. It is a wholly owned subsidiary of Occidental Petroleum Corporation (“Occidental”), a large international oil and gas exploration and production company publicly traded on the New York Stock Exchange (under the designation “OXY”) since 1964 with operations in the U.S., Middle East region and Latin America. The Complainant is the owner of trademark registrations in over 50 countries for the term “oxychem” for various chemical products and associated services including for example the trademark registration filed on October 3, 1986, and registered in September 22, 1987 (U.S. Registration Number 1457861). These trademarks are referred to in this decision as the “OXYCHEM trademark”. Occidental owns domain name registrations for The Respondent is a corporation registered under the laws of the Philippines. It is a manufacturer and distributor of cleaning and industrial chemical products for use by small to medium size businesses. On September 9, 2015 the panel in an UDRP complaint proceeding relating to the domain name The Disputed Domain Name was created on December 11, 2015. The Disputed Domain Name currently resolves to a website advertising the Respondent’s business supplying cleaning chemical solutions for small and medium industries (the “Respondent’s Website”). 5. Parties’ Contentions A. Complainant The Complainant’s contentions are as follows. The Complainant says the Disputed Domain Name is identical or confusingly similar to its OXYCHEM trademark as it incorporates the entirety of the trademark and simply adds the generic term “corporation”. The Complainant also submits that the generic Top-Level Domain (gTLD) suffix “.com” is unable to be relied upon for distinction as it is well established that “.com” has no relevant distinguishing function. The Complainant submits that that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as it was registered long after the Complainant had established its fame and reputation and after the Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, ut supra decision. Although the Respondent is named Oxychem Corporation and was formed in 2004, that was at a time when the Complainant’s worldwide fame and reputation was well known and that name was chosen to take advantage of that fame, and does not provide a legitimate interest. The Complainant also says it has successfully opposed applications by the Respondent for “oxychem” related trademarks in the Philippines. The Complainant says the Respondent’s Website is being used to promote the sale of goods similar to those of the Complainant, and deceives customers into thinking it is connected with or authorised by the Complainant. It says that the Respondent’s use of the Disputed Domain Name is an intentional attempt to misdirect and/or divert, for commercial gain, Internet users to the Respondent’s Website or other online location, by creating a likelihood of confusion with the OXYCHEM trademark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name. B. Respondent The Respondent says that Oxychem Corporation is its duly registered name in the Philippines and produces its registration certificate dated May 20, 2004. It says it is entitled to use its name as its domain name. It says it has been commonly known within the Philippines by the name “Oxychem Corporation” or “Oxychem” since its registration as a corporation in May 2004. The Respondent is simply making a legitimate and fair commercial use of the domain name, without intent to misleadingly divert consumers or to tarnish any trademark or service mark of the Complainant. It also says that the Complainant has no registered trademarks in the Philippines. It says is in a different line of business to the Complainant – the Complainant supplies raw materials whist it makes and sells finished products - so there is no confusion. It says the Complainant is not famous in the Philippines and it is not using the Disputed Domain Name to divert customers. The Respondent then goes on to say that “it consents to the remedy requested by the Complainant to cancel the disputed domain name. The Respondent hereby volunteers to have the domain name cancelled without the need to appoint an Administrative Panel”. Following this, it says it offers not to renew the Disputed Domain Name on its expiry on December 11, 2020. 6. Discussion and Findings Preliminary Matters Preliminary issue - Nature of the Policy So far as the Policy is concerned the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Panel will where appropriate apply principles that have been established in relation to the UDRP in determining this dispute. Preliminary issue – Respondent Identity The Panel notes this is a case where one Respondent (“dotPH Private Registration”) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case the Panel considers the substantive Respondent to be Oxychem Corporation Philippines, Classico Digital Media Inc. and references to the Respondent are to that company. Substantive Matters 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 has rights in the OXYCHEM trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. The OXYCHEM trademark has been combined with the dictionary word “corporation” and is wholly incorporated in the Disputed Domain Name. 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 recognizable in a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark. It is also established that the addition of a dictionary term (such as here “corporation”) to a disputed domain name does not have 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); 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 country code, in this case “.com.ph”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s OXYCHEM trademark. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s OXYCHEM trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests 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. The Respondent says that (i) and (ii) apply. So far as (i) is concerned the Respondent says it registered the Disputed Domain Name before this Complaint was filed. That in the opinion of the Panel cannot be the relevant test – as a complaint can only ever be filed in relation to a registered domain name. The question is what is meant by “the dispute”. It is clearly wider than just the formal complaint and must in the opinion of the Panel refer to awareness that a complainant objects, or would object if it knew of the domain name, to a respondent’s use of the domain name at issue. In the present case, the Panel considers it refers to the Complainant’s objection to the Respondent using the term “oxychem” in the Disputed Domain Name. The Respondent can have been in no doubt the Complainant would have objected to this given the Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, ut supra decision. Accordingly, the Panel does not consider that the Respondent has used the Disputed Domain Name before any notice of the dispute. In fact, it would seem to this Panel that the Respondent has registered the Disputed Domain Name to attempt to avoid the finding made by the previous UDRP panel in relation to what is in substance the same dispute. Accordingly, the Panel does not consider paragraph 4(c)(i) applies. The difficulty with paragraph 4(c)(ii) for the Respondent is that it is not sufficient that its corporate name corresponds to the domain name – it has to show it is commonly known by that name. This requires evidence. The Respondent cannot have been in any doubt about this given the UDRP panel’s reasoning in the Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, ut supra decision. The Panel adopts that reasoning, as follows: “The Respondent claims it has established its business and goodwill since as early as 2002 and that it is the leading cleaning and industrial manufacturer and distributor in the Philippines.” However, the Respondent has not provided any evidence in support of such reputation generally, and more importantly, demonstrating that the Respondent’s business reputation is commonly associated with the Disputed Domain Name. The Panel would have expected the Respondent to provide evidence such as records of sales, advertisements, business records and the like under the name “Oxychem Corporation”, but no such evidence was provided. In the case of Sanderling Pty Ltd trading as Thimblelady v. Roxanne International,WIPO Case No. D2007-0385, it was said: “The Panel is mindful of the need to take care when considering claims by respondents that they have “been commonly known” by an at-issue domain name. It is a claim which is very easily made, and of course if the claim is upheld it is sufficient on its own to defeat a complainant’s complaint under the Policy. The Panel agrees with the approach adopted by the Panel in Banco Espirito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890, where the Panel said: “Since a ‘legitimate interest’ is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has ‘been commonly known’ by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been ‘commonly known’ by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname ‘Red Bull’ since childhood because Respondent did not provide any evidence to support contention. See also, e.g., DIMC, Inc. & The Sherwin-Williams Company v. Mr. Q Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname ‘Krylon’ due to absence of evidence when alleged nickname was adopted and how it was used.” Applying a careful approach in this case, the Respondent’s evidence falls well short of showing that the Respondent’s business is commonly known by the Disputed Domain Name. Use of the term “Oxychem Corporation” on the Respondent’s website does not of itself prove that the Respondent is “commonly known by that name”. Most of the Respondent’s website suggests that the Respondent is operating a business under the trading name “POWER CLEAN”. Quite apart from those considerations, which relate generally to the quality of the evidence which is necessary to establish the “commonly known by” defense, the Panel has come to the view that the Disputed Domain Name was registered by the Respondent in bad faith (the reasons for that view are set out in part D below), and accordingly, it is difficult in such circumstances for a respondent to establish a defense under Policy paragraph 4(c)(ii). Compare Neteller plc v. Prostoprom,WIPO Case No. D2007-1713, where the panel stated that it cannot be the case that a cybersquatter who registered a domain name in bad faith should be able to “create” a defense under policy Paragraph 4(c)(ii) “by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy. In the Panel’s view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration”. The Panel notes the Respondent’s Website still features and promotes the brand “Powerclean Solutions” and considers the above reasoning remains applicable. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith The UDRP panel in the Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, ut supra case found in relation to bad faith as follows: “Further, in light of the significant reputation of the Complainant and the OXYCHEM trademark it is more than likely that the Respondent had knowledge of both the Complainant and the OXYCHEM trademark even prior to the date it acquired the Disputed Domain Name. In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Names in bad faith.” The present Panel agrees with and adopts that reasoning. It also considers further evidence of bad faith is established by the fact that the Respondent registered the Disputed Domain Name shortly after the Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, ut supra decision. It clearly decided that although it had lost that case it would proceed to register a substantially similar domain name and continue as before. That was a deliberate attempt to avoid the consequences of that decision and to continue with conduct that had already been determined to be in bad faith. That in the opinion of the Panel establishes bad faith in the present case. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and 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 name Nick J. Gardner
Sole Panelist
Date: May 14, 2020
Full & Egal Universal Law Academy