WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Silgan Plastics Corporation v. Robert Lerman

Case No. DCO2012-0026

1. The Parties

The Complainant is Silgan Plastics Corporation, of Chesterfield, Missouri, United States of America (USA), represented by Reinhart Boerner Van Deuren s.c., USA.

The Respondent is Robert Lerman, of Jupiter, Florida, USA.

2. The Domain Name and Registrar

The disputed domain name <silganplastics.co> is registered with Register.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2012. On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 18, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 26, 2012. 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

Complainant is the owner of registrations for the word trademark SILGAN on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1,722,008, dated October 6, 1992, in international class (IC) 21, covering “containers made of synthetic resins”, and; registration number 1,742,109, dated December 22, 1992, in IC 6, covering “containers made of non-precious metal”. Complainant has submitted affidavits of incontestability with respect to both registrations, and these have been accepted by the USPTO.

Complainant operates a commercial Internet website at <silganplastics.com> where it advertises and offers for sale a variety of plastic bottles, tubes, and engineering and design services. Complainant indicates that the aforesaid website has been operational since September 26, 1996, and has supported that with domain name registration data showing a creation date for the record of registration in 1996.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on July 27, 2010.¹

According to Complainant, Respondent is the owner of an Internet-based business “eBottles.com”. The website at <ebottles.com> advertises and offers for sale a variety of plastic and glass bottles and jars, and ancillary products (e.g., closures). This is a relatively sophisticated commercial website with alternative sizes, shapes and composition of products, along with volume pricing information. Under the “contact us” tab of the homepage, Respondent is listed as the contact for prospective suppliers of products, and the address information for eBottles.com is the same as for Respondent listed in its registration data for the disputed domain name.

According to Complainant, as of the filing of the Complaint in this proceeding, the disputed domain name redirected Internet users to Respondent’s competing commercial website at <ebottles.com>. Complainant has furnished a cease-and-desist and transfer demand letter to Respondent dated July 31, 2012, that expressly refers to this redirection usage.² At present, the disputed domain name is used to direct Internet users to a Register.com hosted link farm webpage with listings exclusively devoted to plastics products and services including, for example, “Plastic Palettes”, “Plastic Injection Molds”, “Plastic Sheeting” and “Plastic Fabrication”. Clicking through each of the links presents a further list of commercial suppliers of plastics goods and services. At the top of the link farm webpage an Internet user may “Bid On This Domain Now”.³

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark SILGAN and that the disputed domain name is confusingly similar to its trademark. Complainant argues that the disputed domain name directly incorporates its distinctive trademark, adding a descriptive term and varying the gTLD (.co instead of.com).⁴

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not been authorized or licensed by Complainant to use its trademark or to register any domain name using its trademark; (2) Respondent has never conducted business under Complainant’s trademark, but instead operates a competing business; (3) Respondent is using the disputed domain name to intentionally misdirect users desiring to visit Complainant’s website, and is unlawfully tarnishing Complainant’s trademark, and; (4) Complainant has not abandoned or otherwise waived its rights to the disputed domain name.

Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) at the time Respondent registered the disputed domain name, Complainant had been using its trademark since at least as early as 1992, including on a website since 1996, and Respondent sells metal and plastic containers made by Complainant’s competitors. Respondent therefore knew or should have known of Complainant’s trademark rights when it registered the disputed domain name; (2) Respondent is using the disputed domain name to direct Internet users to its own website where it is offering products and services directly competitive with those of Complainant. This is using the disputed domain name for commercial gain to attract Internet users to Respondent’s website by diverting Internet users by use of Complainant’s trademark in the disputed domain name, (3) Respondent’s failure to reply to Complainant’s cease-and-desist and transfer demand is evidence of bad faith, and (4) Respondent is preventing Complainant from using the disputed domain name.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. The express courier tracking record does not show any difficulties in making delivery to Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of rights in the SILGAN trademark in the USA, including evidence of registration at the USPTO and use in commerce in the USA. Complainant’s trademark registrations were effective as early as 1992, and remain valid. Respondent has not challenged Complainant’s assertion of rights in its trademark. The Panel determines that Complainant has rights in the trademark SILGAN in the USA.

The disputed domain name directly incorporates Complainant’s trademark and adds the term “plastics”. Particularly because Complainant is in the business of making and selling plastic products, Respondent’s addition of the descriptive term referring to those products in the disputed domain name does not alleviate a likelihood of Internet user confusion between the disputed domain name and Complainant’s trademark. More likely, addition of the term “plastics” exacerbates likelihood of confusion by reference to Complainant’s line of products. Addition of the ccTLD “.co” to the disputed domain name does not diminish likelihood of confusion in circumstances such as those here. Because of the substantial similarity in visual impression, sound and meaning between Complainant’s trademark and the disputed domain name, the Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.

The Panel determines that Complainant has rights in the trademark SILGAN, and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not been authorized or licensed by Complainant to use its trademark or to register any domain name using its trademark; (2) Respondent has never conducted business under Complainant’s trademark, but instead operates a competing business; (3) Respondent is using the disputed domain name to intentionally misdirect users desiring to visit Complainant’s website, and is unlawfully tarnishing Complainant’s trademark, and; (4) Complainant has not abandoned or otherwise waived its rights to the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not attempted to rebut Complainant’s prima facie showing. The facts before the Panel do not suggest any plausible basis for a finding of rights or legitimate interests in favor of Respondent. It appears that Respondent used the disputed domain name to redirect Internet users to Respondent’s commercial website where it engaged in direct competition with Complainant. The disputed domain name presently directs Internet users to a link farm page connecting Internet users with competitors of Complainant. These uses of the disputed domain name are commercial, and they are not fair use.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.

It is apparent that Respondent was aware of Complainant and its trademark when it registered Complainant’s distinctive trademark in the disputed domain name. Respondent’s use of the disputed domain name to redirect Internet users to its own competing website manifestly constituted an intentional attempt for commercial gain to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website. Respondent’s present use of the disputed domain name to direct Internet users to a link farm page offering products and services competitive with those of Complainant represents an effort to disrupt Complainant’s business, which is competitive with that of Respondent.

The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.

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, <silganplastics.co>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: October 7, 2012

¹ The Spanish-language response by the Registrar refers to “Fecha de Registro de Dominio” that literally means "date of registration of domain" (translation by Panel). Customarily registrars in the United States refer to the date of creation of the record of registration. For present purposes, the difference is not material, and the Panel has used the customary US registrar expression.

² The printouts of Respondent's website provided by Complainant as evidence of redirection do not show the originating domain name from which redirection took place. While the Panel has no reason to doubt Complainant's assertion that the disputed domain name was redirecting as alleged, the printouts are not direct evidence of that.

³ Panel visit to the website identified by the disputed domain name of October 7, 2012.

⁴ The Panel notes here that technically ".co” is a country code top-level domain (ccTLD).