farbydulux.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Imperial Chemical Industries, Plc v. Pawel Miecznik

Case No. D2006-1539

1. The Parties

The Complainant is Imperial Chemical Industries, Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Lazewska & Lazewski, Poland.

The Respondent is Pawel Miecznik of Warszawa, Poland.

2. The Domain Name and Registrar

The disputed domain name <farbydulux.com> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2006. On December 7, 2006, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On December 7, 2006, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2006. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2007.

The Center appointed Brigitte Joppich as the sole panelist in this matter on January 29, 2007. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a leading manufacturer and distributor mainly of paints. It creates, develops and markets paints and related goods, foods, fragrances and beauty products under the mark DULUX (the “DULUX Products”).

The Respondent is registered owner of the following trademarks:

- Polish trademark No. 50416 DULUX, applied for on September 22, 1971 and registered on April 13, 1972 in intl. class 02,

- Polish trademark No. 167612 DULUX & device, applied for on March 13, 2001 and registered on November 25, 2004 in intl. classes 02, 16 and 40, and

- Polish trademark No. 167613 DULUX & device, applied for on March 13, 2001 and registered on November 25, 2004 in intl. classes 02, 16 and 40

(the “DULUX Marks”).

Furthermore, the Complainant is the registered owner of the domain name <dulux.pl>.

The disputed domain name was registered on May 9, 2005, the Whois record was last updated on September 12, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:

(i) The domain name is confusingly similar to the DULUX Marks as it fully incorporates the word “dulux”. In support of this allegation the Complainant asserts that the disputed domain name is a combination of the DULUX Marks and the descriptive term “farby”, the Polish word for “paints”. As paints account for the majority of the products designated by the DULUX Marks, the Complainant contends that the mere addition of the word “farby” does not sufficiently distinguish the domain name from the DULUX Marks.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name: While the Respondent contends to have been selling DULUX products since the 1990’s, the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or apply for or use the domain name incorporating the DULUX Marks. The Complainant contends that it has received a letter from the Respondent dated May 8, 2006, in which the Respondent asserts that he has been selling the DULUX Products since the end of 1990s. However, the Complainant argues that the Respondent uses the disputed domain name in order to advertise and sell not only the Complainant’s products but also products from direct competitors of the Complainant and that such use is not to be considered bona fide.

(iii) The Complainant finally contends that the domain name was registered in bad faith as the Respondent stated in his letter to the Complainant that he was selling the DULUX Products since the 1990s and therefore was well aware of the existence of the Complainant and the DULUX Marks when registering the disputed domain name.

Furthermore, the Complainant contends that the domain name has been used in bad faith. Having discovered the Respondent’s registration of the disputed domain name in 2005, the Complainant sent a letter to the Respondent requesting the transfer of the domain name and offering to reimburse all reasonable costs incurred in connection with the registration and the transfer of the domain name. In his reply, the Respondent informed the Complainant that he also expected compensation of all loss suffered by the transfer of the domain name and estimated such loss to amount to 22,500 Euros p.a. In his reply of January 9, 2006 the Complainant offered the continued use of the domain name to the Respondent for the promotion of the Complainant’s products, stating that the Complainant was only interested in becoming the registered owner of the domain name. In turn, the Respondent tried again to sell the domain names <farbydulux.com>, <farbydulux.com.pl> and <farbydulux.pl> to the Complainant and threatened to put them up at an auction sale if no agreement was reached, as he did not wish to sell the Complainant’s products any longer.

The Complainant concludes that the disputed domain name was registered primarily in order to sell it to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs related directly to the domain name. Furthermore, the Complainant asserts that bad faith use is established by the fact that the domain name containing the well-known DULUX Marks was used by the Respondent to advertise and sell products of the Complainant’s competitors and therefore was used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the DULUX Marks.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s highly distinctive DULUX Marks in which the Complainant has exclusive rights.

The mere addition of the generic word “farby” (which means “paints” in English) preceding the trademark does not eliminate the similarity between the DULUX Marks and the domain name, as “farby” is a common or generic Polish word. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829 - <drgrandel-online.com>; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 - <4microsoft2000.com>; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 – <quixtarmortgage.com>; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 – <1888redroof.com>).

Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 - <magnumpiering.com> et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 – <rollerblade.net>; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374 - <moor-huhn.com>; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026 – <4tel.com>).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Respondent has not filed a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.

As the Respondent is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(c)(ii) and 4(c)(iii) of the Policy. However, it appears from the parties’ pre-procedural correspondence that the Respondent may have been selling the DULUX Products since the 1990s and used the disputed domain name in connection with such business. Even though the Respondent did not file a response in this UDRP proceeding, the Panel has to deal with the question whether or not the Respondent can rely on rights or legitimate interests under paragraph 4(c)(i) of the Policy, namely the use of the domain name in connection with a bona fide offering of goods and services before any notice of the dispute.

Such bona fide offering of goods and services could be based on the right of the Respondent as a reseller or distributor of the Complainant’s products to promote the DULUX Products. It is well established under the principle of exhaustion that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements; for example, the reseller must use the website to exclusively sell the trademarked goods (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 - <okidataparts.com>; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Case No. FA94392 - <mariahboats.net>; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 - <nikondealer.com> et al; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 - <experiancredit.com> et al).

However, the Complainant provided the Panel with printouts dated November 20, 2006 showing that the website available at the disputed domain name included advertisements and offers for sale of third parties’ products. Therefore, the Panel finds that the Respondent cannot rely on rights or legitimate interests under paragraphs 4(a)(ii) and 4(c)(i) of the Policy either.

The Panel finds that the Respondent has no rights or legitimate interests in the domain name and the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the domain name in bad faith, including

(i) circumstances indicating that the respondent has registered or has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The Respondent claims to have been selling the DULUX Products since the 1990s. Therefore, the Panel concludes that the Respondent registered the domain name <farbydulux.com> with full knowledge of the DULUX Marks and thus in bad faith.

Furthermore, the evidence indicates that Respondent has used the domain name in bad faith as he tried to sell the domain name to the Complainant for an amount in excess of his out-of-pocket costs directly related to the domain name. Although the Respondent did neither contact the Complainant in order to sell the domain name nor offered the domain name to the public, the Panel finds that the Complainant has established the Respondent’s bad faith use under paragraph 4(b)(i) of the Policy. Having received the Complainant’s first letter in 2005, the Respondent offered the disputed domain name for an amount “adequate to any losses related to the transfer of the domain name and that the estimated losses would amount to EUR 22.500 p.a.”, which is in excess of the Respondent’s out-of pocket-costs directly related to the domain name. Later on, in response to the Complainant’s offer to the Respondent to continue the use of the domain name for the promotion of the Complainant’s products, the Respondent again tried to sell the disputed domain name to the Complainant, announcing that the domain name would otherwise be put up at an auction sale.

Finally, the Respondent has also acted in bad faith under paragraph 4(b)(iv) of the Policy by fully incorporating the DULUX Marks into the domain name and by using the domain name in order to promote and sell third parties’ products. Thereby, the Respondent has created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and tried to divert Internet users to such website for commercial gain.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

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 domain name <farbydulux.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: February 5, 2007