The Complainant is Air Products and Chemicals, Inc. of Allentown, Pennsylvania, United States of America, represented by Eckert Seamans Cherin & Mellott LLC, United States of America.
The Respondent is Chongqing Acme Tech. Corp., Ltd. of Chongqing, China, represented by Guangzhou UTC Intellectual Property Co., Ltd, China.
The disputed domain name <surfadol.com> (the “Domain Name”) is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2011. On May 16, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Domain Name. On May 17, 2011, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 18, 2011, the Center received email communications from both the Respondent and the Complainant in relation to the Complaint filed. On May 24, 2011, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On May 24, 2011, the Complainant confirmed its request that English be the language of proceedings. On May 29, 2011, the Respondent also requested that English be the language of proceedings. The Parties agree that English be the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response June 19, 2011. The Response was filed with the Center June 19, 2011.
The Center appointed Karen Fong, Thomas Hoeren, and C. K. Kwong as panelists in this matter on July 19, 2011. The Panel finds that it was properly constituted. Each member of 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.
On July 12, 2011, the Complainant submitted a supplemental filing to the Center in reply to the Response. On July 19, 2011, the Respondent submitted further comments in reply to the Complainant’s supplemental filing.
The Rules grant the Panel sole discretion to determine the admissibility of unsolicited supplemental filings. The Consensus View on this issue as set out in paragraph 4.2 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states as follows:
“Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional’ circumstances. Panels which accept supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing.”
The Panel rules to admit the supplemental filings of both parties as both clarify issues raised in the Complaint and Response which are relevant to their respective cases. The supplemental submissions have been considered and taken into account by the Panel in reaching its decision.
The Complainant is one of the world’s leading manufacturers and sellers of a variety of integrated gases and chemicals that are used by customers in various industries including energy, technology and healthcare. It is headquatered in Pennsylvania, United States and has offices in over 40 countries all over the world. The Complainant’s total revenues in the fiscal year of 2010 were USD 9 billion. The Complainant manufactures and sells a variety of different chemical products including specialty additives such as surfactants. Surfactants prevent foam formation of adhesives, inks, water-based paints and coatings. The Complainant’s specialty additives are sold under the trade mark SURFYNOL. Products under the SURFYNOL trade mark are sold all over the world including the United States, Europe and China.
The SURFYNOL trade mark is registered in 16 countries including the European Union, the United States and China. The earliest trade mark registration dates back to 1954. The SURFYNOL trade mark in China under Registration No. 1325060 was registered in 1999. The Complainant has used SURFYNOL continuously as a trade mark since 1953. For fiscal year 2010, the Complainant had over USD 50 million in sales of its Surfynol products worldwide and sales of over USD 10 million in China alone.
The Respondent, founded on September 9, 2004, is a chemical company specializing in research and manufacture of nonionic surfactants, additives and special chemicals. It is located in Chongqing, the industrial center of Southwest China. The Respondent owns its own research and experiment center as well as a manufacturing plant. The Respondent registered the Domain Name on July 13, 2009, and it revolves to a website “www.surfadol.com” (“the Website”) which promotes its business in relation to the manufacture of multifunctional surfactants.
On March 21, 2011, the Complainant filed an Urgent Motion for the Passing of a Preliminary Injunction in the German District/State Court of Nuremberg (“the German Court”) to prevent the Respondent from using the SURFADOL mark at the 2011 European Coatings Show in Nuremberg, Germany which was to take place on March 29-31, 2011. The application was made ex-parte. The Respondent did not file any response and on March 24, 2011, the German Court made a ruling without an oral hearing granting the preliminary injunction (“the German Proceedings”). The Respondent changed the name of its products from Surfadol to Surfadiol at the 2011 European Coatings Show.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred.
Identical or Confusingly Similar
The Complainant contends that it has established significant trade mark rights which predate the registration of the Domain Name by several decades. The SURFYNOL trade mark is a unique and arbitrary term without any dictionary significance and therefore inherently distinctive. The recognition and strength of the Complainant’s SURFYNOL mark combined with the length of time it has been used has rendered the mark a famous mark worthy of extensive protection.
Ignoring the generic “.com” when considering identity and confusing similarity, the Complainant contends that the Domain Name <surfadol.com> differs from the Complainant’s trade mark by a few letters in that the “YN” is replaced with “AD” in the middle of the domain name. When pronounced, both Surfynol and Surfadol sound very similar. When viewed together, Surfynol and Surfadol have the same commercial impression. Further the Complainant contends that the German Court granted an injunction against the Respondent using SURFADOL at the 2011 European Coatings Show on the basis that the marks were confusingly similar thereby supporting the Complainant’s contentions in this proceeding.
Rights or Legitimate Interests
The Complainant contends that to the best of its knowledge, neither SURFADOL nor SURFADOL.COM are registered trade marks of the Respondent. No relationship exists between the Complainant and the Respondent. The Complainant has not licensed nor entered into any relationship that would give the Respondent any right to use SURFYNOL, SURFADOL, or any like variations as a name, domain name or trade mark.
The Complainant further contends that there is no evidence that the Respondent’s registration or use of the Domain Name can be categorized under any of the justifications listed in paragraph 4(c)(i-iii) of the Policy. The Website promotes and advertises goods identical to those manufactured and sold by the Complainant under the SURFYNOL mark. There is no evidence that the Respondent is commonly known by the Surfadol.com name. The Complainant alleges that the Respondent is trading off the SURFYNOL mark and reputation by using the Domain Name which is confusingly similar resulting in individuals being likely to believe that the Domain Name is related to or affiliated with the Complainant. The Respondent’s change of the name of the products from Surfadol to Surfadiol demonstrates some acknowledgement by the Respondent of its own wrongdoing. Finally, the Domain Name is used in connection with a commercial site which the Complainant alleges suggests an affiliation with or sponsorship by the Complainant.
Registered and Use in Bad Faith
The Complainant contends that the Respondent must have had the Complainant’s SURFYNOL name and mark in mind when it registered the Domain Name given the strength and reputation of the SURFYNOL mark, the fact that the Respondent is in the same business as the Complainant and also because the mark is arbitrary and fanciful. The intention was to create a likelihood of confusion with the SURFYNOL mark with the intent to use the Domain Name to promote goods identical to those manufactured and sold by the Complainant. Such use is bad faith use. The Respondent’s registration and use of the Domain Name was with the intent to attract for commercial gain users to its site by creating a likelihood of confusion with the Complainant’s SURFYNOL mark as to source, sponsorship, affiliation or endorsement.
The Respondent denies that the Domain Name should be transferred to the Complainant for the following reasons.
Identical or Confusingly Similar
The Respondent contends that the Complainant’s SURFYDOL mark differs from <surfadol.com> in connotation and pronunciation. SURFADOL was first used by the Respondent in 2005 and the mark was created by the Respondent by fusing and modifying two words, “surfactant” and “diol”. The choice of “surfactant” was because surfactant is a major product of the Respondent whilst “diol” has a close connection with the surfactant chemical area. The resulting word “Surfadol” has a connotation suggesting that the Respondent has a strong affinity to the chemical industry and created a mark and domain name based on one of its major products.
The name Surfadol was created to intentionally resemble the sounds of the musical notes “5-4-1” (so fa dol). The Respondent is fond of music and there are many codes of the Respondent’s products with the combination of the numbers 541 e.g. Surfadol 541G, Surfadol 541E and Surfadol 541BC. On the other hand the Complainant’s SURFYNOL sounds phonetically different and does not have the special meanings behind the SURFADOL mark.
The Respondent also contends that consumers of these products are generally professionals and are able to tell the difference in pronunciation between them.
Rights or Legitimate Interests
The Respondent contends and has provided evidence that it first used the mark SURFADOL in relation to its products since 2005 and has exported products under the name to countries including the United States, Germany, the Netherlands, Demark and New Zealand. It has also participated in coatings shows including the 2010 American Coatings Show, CHINACOAT 2010 and the 2011 European Coatings Show. The Respondent has also advertised its products on a number of websites “such as ‘CHEMINDUSTRY’, ‘TRADEKEY’, ‘Made-in-China.com’, ‘www.icoat.cc’, ‘CHEMCCNSERVE’, ‘PURSUIT MATERIALS’, and ‘Businessmen Guidance’”. The Respondent has also provided a statement by ChemIndustry.Com Inc which bears a company stamp stating that they have never received any complaint from third parties regarding the infringement of the Surfadol name.
The Respondent has filed a trade mark application for SURFADOL in Class 1 under TM application No. 6350852 on October, 31, 2007 in China and the mark has been accepted by the Chinese Trade Mark Office.
Registered and Use in Bad Faith
The Respondent’s case is that it created the mark SURFADOL in good faith in connection with its business in the manufacture of surfactants. The Domain Name was registered as part of its protection of the SURFADOL name for use in promotion on the Internet.
Since 2005, the Respondent has not had any complaints or objections due to confusion between SURFADOL and SURFYNOL other than the Complainant’s objections which were raised in 2011. To support this contention, the Respondent submitted several statements from the Respondent’s customers in the United States, Turkey and Europe stating that SURFADOL is a mark belonging to the Respondent, they have never confused SURFADOL and SURFYNOL and have never heard from insiders in the field any instances of confusion either.
The Respondent contends that the Complainant did not in the five years since the Respondent commenced use of SURFADOL object to the use of the mark because it had not experienced any instances of confusion between the marks SURFYNOL and SURFADOL. Both companies attended the American Coatings Show in April 2010 but the Complainant did not take any action against the Respondent until March 2011 prior to the 2011 European Coating Show in Germany. The Respondent further contends that the Complainant has not in the German Proceedings nor in the present proceeding submitted any evidence of confusion by customers. The Complainant did not regard the brand as a problem until it realized that the Respondent has grown very quickly and has now become a competitor and the German Proceedings and this proceeding were launched in an attempt to stop a competitor with a legitimate business.
The Respondent states that to show its sincerity to resolve the dispute it has suspended the link to the Website pending the decision of the Panel.
The Complainant took issue with several points raised in the Response. With respect to the Respondent’s trade mark application in China for SURFADOL, the Complainant submitted evidence to show that contrary to the Respondent’s contention that the application was accepted by the Chinese Trade Mark Office, the application was rejected on November 27, 2009 and remains pending. The Complainant also contends that the Respondent acted in bad faith by not submitting the full record of the trade mark application status in the Response as it failed to include the part of the website printout which records the rejection of the trade mark application and the fact that it is still pending. The Complainant also raises the fact that the Respondent has failed to offer any arguments against the finding by the German Court that the marks SURFADOL and SURFYNOL are confusingly similar in the German Proceedings which the Respondent did not participate nor contest. Notwithstanding the fact that the Respondent may have used the mark SURFADOL since 2005, the Complainant’s use of its SURFYNOL mark still predates it by more than 50 years. Finally, the Complainant points out that the Website contrary to the Respondent’s contention, has not been suspended pending the outcome of the Panel’s decision which reinforces its arguments of the Respondent’s intent to confuse Internet users.
The Respondent filed a reply to the Complainant’s supplemental submission. With respect to the status of the Chinese trade mark application for SURFADOL, the Respondent explained that the application was partially refused because of two earlier trade marks, SURFADONE and SURFALCOAT. The Respondent filed an appeal to the Trademark Review and Adjudication Board on December 29, 2009. The decision is still pending and hence yet to be rejected by the Trade Mark Office. The Respondent also points out that the Chinese Trade Mark Office did not raise SURFYNOL as a citation against the Respondent’s application notwithstanding the fact that the mark is registered in Class 1 in China. With respect to the German Proceedings, the Respondent contends that it is discussing with its lawyers in Germany how it intends to respond to the injunction granted and it would not be appropriate to reveal its position in this proceeding. The Respondent repeats its contention that its suspension of the Website is to show its sincerity to resolve the dispute but is not an admission of the Complainant’s assertions.
The Parties having agreed that English be the language of the proceeding, the Panel will proceed to issue its decision in English notwithstanding the fact that the Registration Agreement is in Chinese.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Names was registered and is being used in bad faith.
The Panel is satisfied that the Complainant has clearly established rights to the trade mark SURFYNOL. This trade mark is not identical to the Domain Name. The question is whether the mark is confusingly similar to the Domain Name. The test for confusing similarity under the UDRP as stated in paragraph 1.2 of the WIPO Overview 2.0 is as follows:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy the test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusingly similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the domain name. Whilst each case must be judged on its own merits, circumstances in which a trade mark may not be recognizable as such within a domain name may include where the relied upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name.”
The WIPO Overview 2.0 also makes it clear that the applicable top-level suffix in the domain name, in this case “.com”, may be disregarded under the confusingly similarity test. The content of the website should also be disregarded in the threshold assessment of risk of confusingly similarity under the first element of the UDRP.
Both parties have in their arguments under this head relied on third party findings on confusing similarity to bolster their respective cases. The Complainant relies on the German Court’s finding in granting an injunction in March this year and the Respondent in its supplemental submission highlights the fact that the Chinese Trade Mark Office did not cite the Complainant’s earlier registration for SURFYNOL against its trade mark application for SURFADOL. The Panel notes that these arguments are irrelevant under this head. Firstly the test under German and Chinese trade mark law in connection with the question of likelihood of confusion is different from the UDRP test regarding confusing similarity which is a one step test i.e. a comparison between the trade mark and domain name itself to determine likelihood of Internet user confusion. There is no regard to the goods or services in connection with which the respective marks are applied as in the case of trade mark law.
In any event, it is also worth noting that the decision in the German Court was based on a preliminary evaluation of the case by the German Court without the Respondent being heard. As for the Chinese Trade Mark Office, the fact that Complainant’s SURFYDOL trade mark registration was not cited does not necessarily mean that the Trade Mark Office made a finding that the marks were not confusingly similar in the examination process. We cannot speculate on the reasons particularly when the examination process allows for third parties to oppose trade mark applications.
Applying the test under the UDRP, the Panel has to consider the likelihood of Internet user confusion when comparing SURFYNOL and <surfadol.com> or SURFYNOL and SURFADOL as the “.com” suffix may be disregarded in this case. The common elements in the two marks are “surf” and “ol”. With respect “surf”, from a review of the Internet, it is a term that appears commonly used for soap and cleaning products. As for “ol”, it is an ending which is used by the chemical industry in relation to products containing alcohol such as methanol and ethanol. As such it is a commonly used suffix for names in the chemical industry. The difference between the two words lies in the letters “yn” and “ad” in the middle of the words. Aurally and visually, the Panel is of the view that the two marks are not confusingly similar to Internet users. They are two different words. This is not a case where the relevant trade mark is recognisable within the domain name. The Respondent in its evidence, produced statements from its customers stating that they have not been confused nor are they aware of any incidents of confusion. The Complainant has not contradicted this evidence in its supplemental submission. This reinforces the Panel’s view that the marks are not confusingly similar under the UDRP. It may well be that the marks may be considered confusingly similar under the trade mark laws of different jurisdictions. If that is the case, it is something which should be left to the courts to decide.
Notwithstanding the fact that the Panel has made a finding against the Complainant in relation to the first element, it will nevertheless give its findings on the second and third elements of the test under the UDRP.
It is well established that, as it is put in paragraph 2.1 of the WIPO Overview 2.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Panel after considering all the arguments made and evidence submitted on both sides finds that the Respondent has established that it has rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy. The Respondent has an established legitimate business operation in the chemical manufacturing industry. It has provided a credible explanation in relation to the creation of the name Surfadol. It has also provided evidence demonstrating bona fide use of the mark SURFADOL for a period of about five years prior to the filing of the Complaint. Further, the Respondent has filed a trade mark application for SURFADOL in China four years prior to the filing of the Complaint. As set out in paragraph 2.7 of the WIPO Overview 2.0, panels have found that a respondent’s trade mark registration of a trade mark that corresponds with the disputed domain name could in some circumstances establish rights or legitimate interests in the domain name. Although the Respondent’s trade mark has not been registered, it has been partially accepted and there is a pending appeal in relation to the partial rejection of the trade mark. The Panel is satisfied that the trade mark application was filed in good faith and not to circumvent the application of the UDRP.
As such even if the Panel has made a finding that the Domain Name is confusingly similar to the Complainant’s trade mark, nevertheless, the Respondent has established that it has rights or legitimate interests in the Domain Name.
The Panel would like to make an observation at this point. When parties are submitting evidence in support of their cases, they should provide the full details so that the position is clear. The Respondent should have provided a full explanation of the status of its trade mark application in its Response which would have saved the filing of supplemental submissions in relation to the issue.
In view of the Panel’s findings in relation to the first two elements under the UDRP, the Panel concludes that the Domain Name was not registered or used in bad faith. As stated in paragraph C above, the Respondent has provided a credible explanation of its creation of the mark SURFADOL which corresponds with the Domain Name. The Panel accepts that the registration of the Domain Name was for the protection of its own brand for use on the Internet. The registration of the Domain Name was made in good faith under the UDRP.
As for the use of the Domain Name, the Panel notes that the Website is active and has not been suspended as stated by the Respondent in its submissions. The Panel accepts that both parties have businesses that are in competition with each other. The Respondent has submitted evidence that in the five years since it has used the trade mark SURFADOL, there appears to be no known instances of confusion. The Complainant has not submitted any evidence to contradict this. The Complainant has not submitted any evidence to convince the Panel that the Respondent’s registration and use of the Domain Name was for the intent to attract for commercial gain users to its site by creating a likelihood of confusion with the Complainant’s SURFYNOL mark as to source, sponsorship affiliation or endorsement.
For all the foregoing reasons, the Complaint is denied.
C. K. Kwong
Dated: August 2, 2011
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