WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PPG Industries Australia Pty Ltd v. Rod Taubman, Kit N Kaboodle

Case No. D2015-0457

1. The Parties

The Complainant is PPG Industries Australia Pty Ltd of Clayton, Victoria, Australia, represented by Corrs Chambers Westgarth, Australia.

The Respondent is Rod Taubman, Kit N Kaboodle of Kew, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <taubmans.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2015. On March 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 18, 2015, 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.

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 on March 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2015.¹

The Center appointed David Stone as the sole panelist in this matter on April 23, 2015. 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 owns the Taubmans brand, which was founded in 1897 by George Henry Taubman, a Sydney sign writer. The brand now has a significant reputation in Australia as the result of over 100 years of trading in both domestic and industrial paint. Market research conducted by Anomaly found that Taubmans is the second most recognized paint brand in Australia.

The Complainant has numerous internationally registered trademarks, in addition to the following trademarks registered in Australia:

- TAUBMANS (Registered from September 18, 1918)

- TAUBMANS RUSTOP (Registered from January 21, 1980)

- TAUBMANS TRADE MARK (Registered from December 18, 1998)

- TAUBMANS SPECTRUM (Registered from July 23, 1999)

- TAUBMANS SUEDE (Registered from August 17, 2001)

- TAUBMANS HI CHROMA TECHNOLOGY (Registered from July 17, 2002)

- TAUBMANS COLOUR POT (Registered from February 18, 2013)

- TAUBMANS COLOUR GALAXY (Registered from July 16, 2013)

- TAUBMANS ALL WEATHER (Registered from November 4, 2004)

These trademarks are predominately for paints, varnishes, lacquers and derivative products.

The Domain Name was registered on March 5, 2003. The Respondent is the registrant of the Domain Name. The Respondent is affiliated with Kit N Kaboodle as noted above. The Respondent did not meet the deadline of April 15, 2015, by which to file a Response to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name reproduces in its entirety, or is confusingly similar to, its trademarks and the name of a brand of products in which it has significant reputation both internationally and within Australia.

The Complainant inferred that the Respondent would have had knowledge of its brand. The Complainant therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant submits that the Domain Name has been registered and used in bad faith, as evidenced by its alleged use to display offensive pornographic material, the registrant name changing to “Rod Taubman” after being put on notice of the dispute, the offer to sell the name for an inflated price, and the false assertion by the Respondent that an agreement had been concluded between them.

The Complainant requests that the Domain Name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in accordance with the time limit of April 15, 2015, and no further submissions have been made.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant provided evidence that it has registered the relevant trademarks in Australia. From the evidence provided, the Panel finds that the trademarks are well-known in Australia, at least in relation to paints, varnishes, lacquers and derivative products.

The Domain Name is identical to the Complainant’s TAUBMANS trademarks. The Panel further notes that the generic Top-Level Domain “.com” may be disregarded for the purposes of comparison under this element of the Policy (Arthur Guiness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

The Panel finds that the Complainant has satisfied the condition set out in the Policy, paragraph 4(a)(i), and that the Domain Name is identical or confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name proprietor has rights or legitimate interests in a domain name, namely if it has a:

(i) Prior bona fide offering of goods or services;

(ii) Common association with the Domain Names; or

(iii) Legitimate noncommercial use.

The Complainant asserts that the Domain Name is not currently being used to display any content, and has provided evidence thereof. The Panel notes that the Domain Name is currently parked and offered for sale.

The Panel has not received evidence from the Respondent to confirm that he has a legitimate interest in the Domain Name. The fact the Respondent has an identical last name to the disputed Domain Name could have been considered by the Panel as grounds for common association, but the Complainant’s unrebutted assertion is that the name of the Registrant changed from “Kit N Kaboodle” to “Rob Taubman” after notice of the dispute was given.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) sets out the non-exhaustive criteria for bad faith. Bad faith constitutes the intention to register and use a domain name in order to:

(i) sell, rent, or transfer the domain name to the trademark owner (or a competitor thereof) for a profit;

(ii) prevent the trademark owner from registering its trademark in a domain name;

(iii) in order to disrupt the business of a competitor; or

(iv) to divert Internet traffic for commercial gain.

The Complainant’s unrebutted assertions include, among other things, that the Respondent has used the Domain Name to display pornographic content, has changed its name after being put on notice of the dispute, and that the Respondent registered the Domain Name with the intention of selling it to it for a profit, at the inflated price of AUD 70,000. The Panel finds, in the absence of any response from the Respondent, that the claims are established, and that the display of pornography is evidence of bad faith (Nicole Kidman v John Zuccarini, WIPO Case No. D2000-1415); the change of name is evidence of bad faith; and that the offer for sale at an inflated price is bad faith (Pfizer Inc v Jason Haft, WIPO Case No. D2003-0133).

The Panel finds that the criterion in the Policy in paragraph 4(b)(i) is made out.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <taubmans.com> be transferred to the Complainant.

David Stone
Sole Panelist
Date: April 30, 2015

¹ Annexed to the Complaint is a Statutory Declaration dated March 6, 2015 filed on behalf of the Complainant which attaches a letter dated December 11, 2014 on the headed paper of a law firm on behalf of the Respondent signed by a “Lawyer and Registered Trade Mark Attorney” which states “we are instructed to accept service of any UDRP and file a vigorous defence.” In an email to the Center dated April 16, 2015, the same lawyer wrote “We have never held instructions to accept service of the UDRP.” This lawyer’s statement in writing to the Center is therefore directly inconsistent with his earlier letter written on the firm’s letterhead only four months earlier.