WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859

Case No. D2008-1078

 

1. The Parties

The Complainant is The Dow Chemical Company, Midland, Michigan, United States of America, represented by The Gigalaw Firm, LLC, United States of America.

The Respondent is dowaychemical eva_hwang@21cn.com +86.7508126859, Jiangmen City, Jiangmen Guangdong, People's Republic of China.

 

2. The Domain Name and Registrar

The disputed domain name <dowaychemical.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2008. On July 16, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On July 17, 2008, OnlineNic, Inc. d/b/a China-Channel.com 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 13, 2008.

The Center appointed Flip Petillion as the sole panelist in this matter on August 20 2008. 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 argues that it directly or indirectly, through its affiliates, owns at least 2,124 registrations in numerous countries or geographic regions worldwide for trademarks that consist of or contain the DOW Trademark (the “DOW Trademark”).

The Complainant produces a table of these registrations.

The Complainant also produces printouts from the United States Patent and Trademark Office's Trademark Electronic Search System for the following registrations:

Mark

Reg. No.

Date of First Use

Date of Registration

DOW

140,588

1895

March 22, 1921

DOW

596,563

February 25, 1936

October 12, 1954

DOW

1,735,916

June 1, 1929

December 1, 1992

Finally, the Complainant also produces a copy of the trademark registration certificate, Reg. No. 21, for the THE DOW CHEMICAL COMPANY Trademark, registered by the Complainant in Ecuador on October 18, 1965.

The Respondent registered the domain name <dowaychemical.com> on December 11, 2005, which contains the DOW Trademark in its entirety.

At present, the disputed domain name <dowaychemical.com> does not point to a website.

 

5. Parties' Contentions

A. Complainant

In summary, the Complainant developed the following arguments:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

It is sufficient that, as here, a domain name wholly incorporates a registered mark of the Complainant, to establish identity or confusing similarity for purposes of the Policy.

The word “chemical” to the disputed domain name in addition to the DOW Trademark – a word that describes the products or services with which it is used and a word that is included in the Complainant's THE DOW CHEMICAL COMPANY Trademark – does nothing to alleviate confusing similarity for purposes of the Policy.

The presence of the letters “ay” in the middle of the disputed domain name <dowaychemical.com> do not in any way distinguish the disputed domain name from the DOW Trademark. Even with these letters, the disputed domain name is obvious and easy to read as the original term and therefore these letters only add to the similarity of the trademark.

Accordingly, the disputed domain name <dowaychemical.com> is confusingly similar to the DOW Trademark.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use any of the DOW Trademark in any manner.

The Respondent has never used, or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent is using the disputed domain name in connection with a website that offers goods and services that compete with the goods and services offered by Complainant under the DOW Trademark.

To that purpose, the Complainant produces a printout of a page that the Complainant says to be the home page of the Respondent's website using the disputed domain name. On this web page, the Respondent uses the same text as used by the Complainant.

(The Panel points out that, as mentioned above, at present, the disputed domain name <dowaychemical.com> does not point to a website.)

The Complainant argues that the Respondent's website using the disputed domain name is replete with text that infringes the Complainant's copyrighted content, all in an apparent effort by the Respondent to make itself appear that it is actually the Complainant, that it is affiliated with the Complainant or that it is comparable to the Complainant.

Such use of the disputed domain name in connection with competitive goods and services is not a bona fide offering of goods or services under the Policy – and, therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the Policy.

In addition, given the Complainant's established use of the DOW Trademark for 111 years, it is exceedingly unlikely that the Respondent is commonly known by this trademark – and, therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(ii) of the Policy.

The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant's DOW Trademark. Rather, the Respondent is making an illegitimate, commercial, unfair use of the disputed domain name, with intent for commercial gain misleadingly to divert consumers – and, therefore, the Respondent cannot demonstrate rights or legitimate interests under Paragraph 4(c)(iii) of the Policy. Specifically, the Respondent is using the disputed domain name to direct consumers to a website that offers goods and services that compete with the goods and services which the Complainant offer under the DOW Trademark and, in fact, describes itself using the same text used by the Complainant, in effect fraudulently impersonating the Complainant. Such use clearly is for commercial gain, particularly given the list of “Doway Products” that appears on the home page of the website associated with the disputed domain name.

Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

3. The disputed domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, the Complainant, in violation of paragraph 4(b)(iii) of the Policy.

The Respondent is using the disputed domain name in connection with a website that offers goods and services competitive with those offered by the Complainant, and, in fact, describes itself using the same text used by the Complainant, in effect fraudulently impersonating the Complainant. This usage clearly indicates that the Respondent intentionally uses the domain name aiming to profit from the Complainant's renowned trademark by attracting Internet users. The confusion created by the domain name makes potential customers to choose other services than the Complainant's, disrupting the Complainant's business.

In addition, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the DOW Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website, in violation of paragraph 4(b)(iv) of the Policy.

There can be no doubt that the Respondent knew of the Complainant's DOW Trademark when it registered the disputed domain name, leading to evidence of bad faith.

A further indication of bad faith under the Policy is the fact that the Complainant's DOW Trademark pre-dates the Respondent's registration of the disputed domain name.

Moreover, given the Complainant's established rights in the DOW Trademark in numerous countries or geographic regions worldwide and the fact that the disputed domain name is so obviously connected with the Complainant, the Respondent's actions suggest opportunistic bad faith in violation of the Policy.

Accordingly the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainants have rights to the DOW Trademark and the THE DOW CHEMICAL COMPANY Trademark.

The disputed domain name clearly is composed of the word “dow” which has been completed with the letters “ay” and the word “chemical”.

The Panel agrees with the Complainant that the word “chemical” is a word that describes the products or services with which it is used and that it is identical to the third word included in the THE DOW CHEMICAL COMPANY Trademark. Its addition does not decrease the possible confusing similarity for purposes of the Policy. In contrast, its inclusion increases the likelihood of an association with the Complainant and its activities.

In conclusion, the addition of the word “chemical” strengthens rather than weakens the confusing similarity

The letters “ay” between the word “dow” and the word “chemical” do not distinguish the disputed domain name from the DOW Trademark. The letters add to the similarity of the trademark.

Therefore, the Panel finds that the disputed domain name and the trademarks are confusingly similar.

As a result, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Under the Policy, rights or legitimate interests in the disputed domain name may be demonstrated by showing that:

(i) before any notice of this dispute, the Respondent used, or demonstrably prepared 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 has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; 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 customers or to tarnish the trademark at issue. Paragraph 4(c) of the Policy.

Although, the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, it is generally assumed that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has made a prima facie showing.

In this case, the Complainant has contended that the Respondent has never been authorised by the Complainant to use its trademarks in any way and that the Respondent has not made any use of, or demonstrable preparation 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.

The Respondent has not filed any response in the course of the proceedings so the Respondent has not brought any evidence supporting its potential rights or legitimate interests in the disputed domain name.

Even in the absence of a Response, the Panel has reviewed the record. The Panel has attempted to review a website to which the disputed domain name can resolve but has found no active website.

The Panel finds that there is no indication of any right or legitimate interest by the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

The DOW Trademark and the THE DOW CHEMICAL COMPANY Trademark are widely known trademarks. The Respondent most likely knew these trademarks at the time of the registration of the disputed domain name.

Although the disputed domain name does not resolve to any active website at the time of drafting, the print outs of a former website accessible via the disputed domain name (provided by the Complainant) show that the Respondent has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks and domain name for commercial gain.

The Respondent was clearly specifically targeting the Complainant's trademark and attempting to divert Internet users searching for the Complainant's product to the Respondent's website.

These facts all support a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

 

7. Decision

For all 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 <dowaychemical.com> be transferred to the Complainant.

Flip Petillion
Sole Panelist

Dated: September 3, 2008