The Complainant is Masco Corporation of Taylor, Michigan, United States of America (“US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Feigaoliu, Masco of Foshan, Guangdong, China.
The disputed domain name <mascopaint.com> is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2014. On July 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 31, 2014, the Center transmitted an email to the parties in Chinese and English regarding the language of the proceeding. On August 1, 2014, Complainant submitted its request that English be the language of the proceedings by email to the Center. Respondent did not submit its comments within the specified due date.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 7, 2014 in both English and Chinese. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2014.
The Center appointed Yijun Tian as the sole panelist in this matter on September 5, 2014. 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.
Complainant, Masco Corporation, is a company incorporated in Taylor, Michigan, US. Masco is a home improvement and building company, which was founded in 1929. Today MASCO is ranked 323 on the Fortune 500 list and 1638 on the Forbes Global 2000 Leading Companies. It now has five business segments, divided by their different products and services, 63 manufacturing facilities with approximately 32,000 employees.
Complainant has exclusive rights in the MASCO Marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally (see Annex H to the Complaint), including China (since 2006; see Annex H to the Complaint).
Respondent is Feigaoliu, Masco of Foshan, Guangdong, China. The disputed domain name <mascopaint.com> was registered on February 14, 2009.
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has been trading as Masco Corporation for over 50 years and operates from its main website “www.masco.com” as can be seen in Annex A to the Compliant.
With the expansion of its trade internationally Complainant has acquired significant goodwill globally in the mark MASCO for the purposes of common law rights. (Annexes B and I and Annex C to the Complaint).
Complainant has exclusive rights in the MASCO Marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally (see Annex H to the Complaint), including China (since 2006; see Annex H to the Complaint).
By presenting these registered trademarks Complainant has established rights in the mark MASCO for the purposes of paragraph 4(a)(i) of the Policy.
The second limb of the first requirement is that the disputed domain name must be identical or confusingly similar to the mark MASCO, determined by a visual or aural comparison of the alphanumeric string of the disputed domain name with the trademark to assess the likelihood of Internet user confusion as outlined in paragraph 1.2 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The disputed domain name comprises of the whole of the trademark MASCO affixed to the dictionary word “paint”, used descriptively as a noun.
Given that paint is a product which is sold by Complainant through its subsidiaries, which are specifically referred to as “a Masco company” (Annex I to the Complaint), there is no doubt that Respondent has used a word of common use to the home improvement and building industry in an endeavour to lead to confusion associated with its trademark; on the balance of probabilities an Internet user is likely to be confused as “paint” reinforces a false association with Complainant. At the very least the use of the mark MASCO with the noun “paint” is enough to create initial interest confusion in the average Internet user’s mind.
As commonly held by UDRP panels when a comparison is being drawn for the purposes of the Policy it is unnecessary to consider the Top-Level Domain (TLD) which has been used as this is a technical requirement and has no significant legal bearing, unless the TLD is used to form a part of the trademark. Hence the suffix“.com” can be disregarded.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
The mark MASCO is derived from the first letters of the surnames of the founding partners (Alex Manoogian, Harry Adjemian and Charles Saunders) “MAS” plus the abbreviation “CO” for company. It is a trademark of the strongest kind, a fanciful mark which has been invented for the sole purpose of functioning as a trademark and has no other meaning attached to it.
Paragraph 4(a)(ii) calls for a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name which Respondent then has to rebut.
Respondent in this proceeding is Feigaoliu of Guangdong, China according to the WhoIs details obtained from Domain Tools as the Registrar’s WhoIs service does not appear to be functional. (Annex K to the Complaint).
Respondent lacks rights or legitimate interests in the disputed domain name as at no point in time has Respondent had dealings or an affiliation with Complainant or the products sold under the MASCO trademark and a license or permission has never been granted to use the trademark within the disputed domain name, or for any other domain names or purpose so Respondent cannot claim bona fide use or demonstrate the other defenses as per paragraph 4(c) of the Policy.
The use of the MASCO mark was for the diversion of consumers seeking to locate Complainant’s products and to trade on the goodwill associated with the MASCO mark by offering for sale goods which are purported to be official products of Complainant, labelled as “Acrylic Paint MSC”.
Complainant itself does not sell paint products and instead sells these under their subsidiaries BEHR and KILZ. This use of the disputed domain name to sell these goods cannot constitute a bona fide use of the disputed domain name as it is a misrepresentation to the public of the Complainant’s association with the goods.
Respondent’s knowledge of the Complainant’s history and its products is apparent from the “About us” section of the website which the <mascopaint.com> resolves to, as Respondent is holding itself out as Complainant by describing Complainant’s business on its (Respondent’s) website as if it was its own business (see Annex J to the Complaint) so Respondent cannot claim that it has used an abbreviation of its own business or organisation name without knowledge of the existence of Complainant.
Complainant has been unable to locate a disclaimer on the website to clarify that Respondent is not affiliated with Complainant. On the contrary, the entire use of the disputed domain name is to impersonate Complainant in order to sell goods using Complainant’s goodwill. There can be nothing legitimate about the aforesaid fraudulent actions.
There can be no claim of nominative or fair use of the disputed domain name as Respondent is using it as a means to sell products for profit.
Complainant has made out its prima facie case as required by the Policy and Complainant invites Respondent to rebut these assertions, providing evidence of a legitimate interest or right in the disputed domain name.
Respondent has registered and is using the dispute domain name in bad faith which is exactly the abusive registration the Policy was intended to capture.
(c) The disputed domain name was registered and is being used in bad faith.
Whilst Complainant is an American company with a great American presence, Complainant has a global footprint with international facilities located in places such as China. In 2003 Complainant established its MASCO China office for inter-sourcing with more than 1,000 employees and 645,000 square feet of manufacturing and distribution space. (Annex E to the Complaint).
The office is based in the Shenzhen, Guangdong and the Respondent’s address is approximately one hour away from Complainant’s location.
KILZ (acquired in 2000, nine years before the registration of the disputed domain name) operates in China from the website “www.mascocoatings.com.cn” and BEHR (acquired in 1999, ten years before the registration of the disputed domain name) sells its line of paints, primers and similar products with a separate site for Chinese customers of “www.behrchina.com”. Both of these MASCO companies were well known suppliers of paint and related products in China at the time of registration on February 14, 2009. (see Annexes D and E to the Complaint).
Adding a word of common use “paint” to the disputed domain name along with using it to sell products purported to be those of Complainant irrefutably shows that Respondent was familiar with Complainant when registering the disputed domain name.
Respondent was aware of Complainant and its intent was to misuse the disputed domain name is supported by Respondent’s use of information about Complainant in the “About us” section of its website, along with the use of the disputed domain name shortly after registration.
Respondent is using the disputed domain name in contravention of the Policy, in particular as per the example in paragraph 4(b)(iv).
Historical screenshot images show the disputed domain has been in use since at least October 2009 to sell paint products under the guise that they are Complainant’s products using similar packaging and colours. Initially the paint pots had “Masco Paint” embellished across the front, with MASCO in a stylised form and the misspelt phrase “HIHG QUALITY WORLD USA TA”.
The homepage included a short section describing Complainant’s company and falsely stated that Complainant has its own brand of “Masco Paint” as well as KILZ. Complainant does not have its own brand of paint named “Masco” and this false statement was made with the purpose of generating goodwill in the term “Masco Paint” for Respondent’s benefit.
Another image of the website in November 2009 shows that Respondent had changed use of the website to a more professional looking website and re-labelled the paint pots to “Acrylic Wall Paint American Masco chemical Industry Limited Company”. Despite altering the label of the paint pots, the information about Complainant was still on the website, encouraging a fictitious association between Complainant and Respondent’s products in the mind of the average Internet user.
Currently the disputed domain name resolves to a website which has been designed to give Internet user’s the impression that it is a legitimate business. They have attempted to impersonate Complainant with a section titled “About us” detailing Complainant’s business as if it were Complainant or at the very least to infer an association. The details specifically refer to its brand KILZ and its headquarters in Taylor, Michigan.
Respondent is using the MASCO trademark to attract Internet users in order to sell its own products as MASCO products under its made up brands of “Masco Paint” and now “MSC” by interpolating false information amongst Complainant’s information. Such use of Complainant’s trademark to sell goods which are not (to Complainant’s knowledge) manufactured by Complainant are an attempt to trade off of the goodwill associated with Complainant and the reputation it has as a supplier of paint products.
These actions amount to misrepresentation in trademark law in relation to the concept of “passing off”. It may be that this situation is in fact reverse passing off; Respondent is sourcing Complainant’s goods, re-packaging them and selling them as their own products under this MASCO inspired name.
If the goods are being supplied by Respondent and they are not of the standard of quality which Complainant’s products are of this can cause serious damage to Complainant’s reputation.
The goods are being sold as MSC - American Masco chemical Industry Limited Company. Complainant has been unable to locate any information on this company or American Masco Chemical Co Ltd so Complainant is unsure whether Respondent has gone to the lengths of incorporating a company to trade from or whether they have simply used that name but are trading illegally as an unregistered business.
Whilst this is not the proper forum to consider the consequences of such actions, it is evidence of Respondent’s nature and malicious intent.
Respondent is responsible for ensuring that it adheres to its representation that the registration and renewal of the disputed domain name will not infringe another’s rights.
Respondent was more than likely aware of Complainant and Complainant’s trademarks were available to be seen on various registers, including the Chinese trademark database for class 2 goods and services (including paint). Respondent has acted in disregard for paragraph 2 of the Policy by purposely registering the disputed domain name incorporating Complainant’s trademark to take advantage of its popularity, knowing that it infringes on a third party’s rights.
Respondent was even so brazen as to note the registrant organisation on the WhoIs information as “Masco” to add to the overall impression of legitimacy.
Respondent has registered and used the disputed domain name in bad faith as set out in paragraph 4(b)(iv) of the Policy.
Respondent did not reply to Complainant’s contentions.
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:
(a) A review of Respondent’s domain portfolio (see Annex K to the Compliant) shows that Respondent has a working knowledge of the English language with the registration of multiple domains which have words with English meaning such as <aaclub.cc>, <yisign.com.cn> and <thescc.net>.
(b) It is irrelevant that the companies whose trademarks are incorporated operate in China; their name or the words used are in English and the registration of the disputed domain name shows that Respondent has more than a basic understanding of the language.
(c) The disputed domain name incorporates Complainant’s mark MASCO, a mark formed of the founding member’s surnames and the abbreviation “CO” for “company” which would imply that Respondent understands English.
(d) Respondent has used some English content on its website such as contact information and its notice of rights at the bottom of the page. (Annex J to the Complaint).
(e) Respondent has previously used English on prior use of the website such as the terms “News Center” and the misspelt “HIHG QUALITY WORLD USA TA” is evidence that although Respondent may not be fluent in English he or she is competent in English whereas Complainant has no understanding or knowledge of Chinese.
(f) The commission of a translator for these proceedings would add unnecessary cost and delay, action which is contrary to the design of the Policy to provide a cost effective and expedited resolution process.
Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview 2.0 further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the US, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name include Latin characters “Masco” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <mascopaint.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) it seems that the previous website at the disputed domain name was an English-based website, and Respondent has previously used English on prior use of the website such as the terms “News Center” and the misspelt “HIHG QUALITY WORLD USA TA” (Annex J to the Complaint); (c) Respondent has used some English content on its current website such as contact information and its notice of rights at the bottom of the page, such as “Copyright” and “All rights reserved”. (Annex J to the Complaint); (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has not objected to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the MASCO Marks acquired through registration. The MASCO Mark has been registered worldwide including in China, and Complainant has a widespread reputation as a home improvement and building company.
The disputed domain name <mascopaint.com> comprises the MASCO Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the final word “paint” to the mark MASCO. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, 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).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).
The mere addition of the descriptive term “paint” as a suffix to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. The “paint” is one of products of Complainant. Although Complainant itself does not sell paint products, it instead sells these under their subsidiaries BEHR and KILZ. Internet users who visit <mascopaint.com> are likely to be confused and may falsely believe that <mascopaint.com> is operated by Complainant for selling MASCO branded products, particularly paint.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the MASCO Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) having been commonly known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the MASCO Mark globally, including registration in the US since 1986, and registration in China since 2006 (see Annex H to the Complaint) which well precedes Respondent’s registrations of the disputed domain name (February 14, 2009).
According to Complainant, Complainant has a global footprint with international facilities located in places such as China. In 2003 Complainant established its MASCO China office for inter-sourcing with more than 1,000 employees and 645,000 square feet of manufacturing and distribution space. (Annex E to the Complaint).
Moreover, Respondent is not an authorized dealer of MASCO branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “Masco” in its business operation or the use of the MASCO Marks and design on its website (without disclaimer or other clarifying details). By contrast, in “关于马斯柯(About Masco)” session, it represents itself as Complainant. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MASCO Mark or to apply for or use any domain name incorporating the MASCO Mark.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <mascopaint.com> on February 14, 2009. The disputed domain name is identical or confusingly similar to Complainant’s MASCO Mark.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising purported MASCO products and inviting potential trade partners at <mascopaint.com> (Annex J to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the MASCO Marks with regard to its products. Complainant has registered its MASCO Marks internationally, including registration in China (since 2006). Complainant established its MASCO China office for inter-sourcing with more than 1,000 employees and 645,000 square feet of manufacturing and distribution space since 2003. (Annex E to the Complaint).
Moreover, the Website advertises for various purported MASCO paint products. Respondent would likely not have advertised products purporting to be MASCO products on the website if it was unaware of Complainant’s reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel also finds that the MASCO Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s MASCO branded products.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” purportedly offering Complainant’s MASCO branded products and services without authorization. Complainant claimed that Respondent is using the MASCO trademark to attract customers in order to sell its own products as MASCO products under its made up brands of “Masco Paint” and now “MSC”, and to “attempt to trade off of the goodwill associated with Complainant and the reputation it has as a supplier of paint products”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the MASCO Marks (as well as the content on Respondent’s website - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annex J to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the MASCO Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <mascopaint.com> is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
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 at <mascopaint.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: October 10, 2014