The Complainant is PPG Industries, Inc. of Pittsburgh, Pennsylvania, United States of America (“United States”), represented by Ladas & Parry, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <ppgrefinsh.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2017, 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 November 10, 2017 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 on November 14, 2017.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on November 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2017.
The Center appointed Alexandre Nappey as the sole panelist in this matter on January 10, 2018. 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.
The Complainant is the American company PPG Industries, Inc. which is a leading manufacturer of paints, coatings and specialty materials in nearly 70 countries around the world.
The Complainant provides evidence of numerous trademarks containing the word “PPG” in various countries around the world in connection with its business, among which:
- US trademark n° 836998 PPG registered on October 17, 1967 and in international class 2;
- Australian trademark n° 1653296 PPG, filed on October 20, 2014 in classes 3, 9, 17 et 20;
- German trademark n° 2079960 PPG, filed on October 18, 2013
The disputed domain name is <ppgrefinsh.com>.
It was registered on June 13, 2016 in the name of I S, ICS INC, located in Cayman Islands.
1. The Complainant first alleges that the disputed domain name <ppgrefinsh.com> is identical or confusingly similar to its earlier trademarks, to the point of creating confusion.
The disputed domain name wholly incorporates the mark, simply adding to “refinsh”, which is a blatant misspelling of the industry generic term “refinish”.
This addition of the (misspelled) term “refinsh” may have the effect of increasing confusion considering the Complainant is an industry leader in automotive refinish products and visitors may believe the domain name is associated with the Complainant’s refinish business.
The addition of the generic Top-Level Domain “.com” is irrelevant.
2. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent does not have any rights in the disputed domain name.
The Respondent is not commonly known by the disputed domain name.
The Respondent did not use the domain name in connection with a bona fide offering of goods or services.
The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. Indeed, the domain name resolves to a page featuring pay-per-click advertising, a page alleging that a spyware has been installed and provides a phone number to call to remove the spyware, or redirects to various advertising websites, which is not a bona fide use and does not confer any rights or legitimate interests in the domain name.
The Complainant has not given the Respondent any permission to register the domain name which is identical or confusingly similar to its PPG name and trademark.
3. Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith.
According to the Complainant, by registering the disputed domain name, which is confusingly similar to the Complainant’s trademarks and resolves to web pages that feature pay-per-click or third party advertising, the Respondent is attempting to deceive Internet users. The Complainant also contends that the disputed domain name does not resolve to an active website and it is listed for sale to the general public on a third party website for USD 799, which is an evidence of bad faith. Moreover, according to the Complainant, the facts that the Respondent used of a privacy shield – hiding the Respondent’s identity and preventing it of being contacted – and failed to reply to the cease and desist letter sent by the Complainant are further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following.
The Complainant is not the registered owner of the relevant trademarks upon which its case rests; they are registered with one of the Complainant's subsidiary, PPG Industries Ohio, Inc. The Complainant does not provide any information or evidence in its Complaint to support its case, but appears to be the parent company of the PPG group of companies.
Section 1.4.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), indicates that: “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.”
See in similar circumstances Volkswagen Group of America, Inc. v. Kim Hyeonsuk a.k.a. Kim H. Suk, Domain Bar, Young N. and Kang M.N., WIPO Case No. D2014-1596.
In the circumstances of the present case, the Panel considers that the Complainant has sufficient right to bring the present proceedings based on the PPG trademarks.
The Panel is satisfied that the Complainant owns exclusive trademark right in PPG (which predates the registration of the disputed domain name).
The Panel finds that the disputed domain name <ppgrefinsh.com> is confusingly similar to the registered PPG trademark owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s PPG trademark with the mere addition of the misspelled descriptive word “refinsh”, instead of “refinish” which directly refers to the Complainant’s activity (automotive refinish industry) and which does not avoid confusing similarity.
See, for instance, JetBlue Airways Corporation v. Domain Hostmaster, Customer ID 19460161924865, Whois Privacy Services Pty Ltd / DN Manager, Whois-Privacy.Net Ltd, WIPO Case No. D2017-1979 (<jetbue.com>):
“The only difference between the word mark that is protected by that registration and the disputed domain name is the omission in the latter of the letter “l”. That “l” could easily be missed with the result that Internet users will be led to the web page described […].”
Therefore, in the present case, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances are situations that can demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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.
Considering the difficulty to demonstrate a negative, UDRP panels generally find it is sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its PPG trademark.
Nothing in the information related to this domain name indicates that the Respondent is commonly known by the name “ppgrefinsh.com” or owns any right on the trademark PPG.
In light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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.”
In the present case, the disputed domain name results from a combination between the trademark PPG and the (misspelled) generic term “refinsh”, which is descriptive of the Complainant’s business activities.
Then, the Panel finds that the choice of the disputed domain name by the Respondent cannot be reasonably explained otherwise than as a reference to the PPG earlier trademark of the Complainant and that the disputed domain name was registered in bad faith.
Moreover, the Complainant submitted printouts showing that the disputed domain name:
- resolves to a page featuring pay-per-click advertising,
- or alternatively resolves to a page alleging that spyware has been installed and provides a phone number to call to remove the spyware,
- redirects to various advertising websites,
- is offered for sale on Sedo website for USD 799.
See in similar circumstances, a recent decision in E. Remy Martin & C° v. Zhang Xiao, WIPO Case No. D2017-2102.
In view of the above the Panel finds that disputed domain name is used in bad faith, with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
In conclusion, the Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
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 <ppgrefinsh.com> be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: January 21, 2018