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ADMINISTRATIVE PANEL DECISION
Imperial Chemical Industries PLC v. Maxi services Case No. D2006-0156
1. The Parties The Complainant is Imperial Chemical Industries PLC, Wilton Redcar, United Kingdom of Great Britain and Northern Ireland, represented by Venable, LLP, United States of America. The Respondent is Maxi services, Sg Buloh, Selangor, Malaysia.
2. The Domain Name and Registrar The disputed domain name <icipaint.com> is registered with Domain Contender, LLC.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2006. On February 6, 2006, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On February 6, 2006, Domain Contender, LLC 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Response was filed with the Center on March 9, 2006. The Center appointed Peter G. Nitter as the sole panelist in this matter on March 16, 2006. 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 has registered ICI as a trademark in numerous countries, including United States Registration Numbers 2988434 and 1314134. Further, the Complainant owns more than 2600 trademark registration worldwide containing the letters ICI. The Complainant owns more than 81 country-code Top Lever Domain names containing the letters ICI.
5. Parties’ Contentions A. Complainant The Complainant is based on the Complainant’s well known trademark ICI for paint, retail paint stores and other goods and services. The Complainant’s rights to ICI predate the registration of the disputed domain name. The disputed domain name is a combination of the ICI mark and the generic term “paint”. The Respondent’s registration is likely to be confused with the Complainant’s distinctive mark ICI. The likelihood of confusion is enhanced as the ICI mark is famous. Consumers are likely to believe that any domain name incorporating the ICI name and the term “paint” is associated with the Complainant. The disputed domain name is being used for goods and services similar to the Complainant’s with an intent to confuse consumers as the disputed domain name resolves
a link farm offering links to websites featuring information about and offering for sale home improvement products. The Respondent has no right or legitimate interest in the disputed domain name. The disputed domain name was registered in bad faith as the Respondent had information about the Complainant and the ICI mark while registering the disputed domain name. The disputed domain name is also being used in bad faith. The Complainant sent a demand letter to the Respondent December 1, 2005, but received no reply. B. Respondent The Respondent submits that, other than the registration of ICI as a trademark in numerous countries, the ICIPAINT trademark is neither registered in Malaysia nor in many other countries where the Complainant claims to have distributors. Therefore Respondent’s registration represents no infringement of the Complainant’s trademark in Malaysia and many other countries. According to the Respondent, the gTLD domain .com does not constitute a trademark. If gTLD domain constituted a trademark, the Complainant’s right should be the plural domain name of <icipaintS.com>, which the Complainant has registered, the Respondent submits. The Respondent further emphasizes that additional gTLDs have been made available (such as .net, .org, .biz and .info) to allow companies that could not secure the gTLD .com to register. The Respondent finds it odd that the Complainant has not registered “icipaint” on its own, only disputed the domain name upon registration by others. According to the Respondent, the disputed domain name was acquired on behalf of, Wai Meng Hardware Sdn Bhd (the Company). The Company is involved in the supply of building materials, including ICI branded paints product. The Respondent submits that it is not the Company’s intention to infringe the Complainant’s trademark. The Company decided to abandon the online promotion of their products, as a majority of their customers are in the domestic market. The Respondent on May 2005,subscribed to AfterNIC.com to park the domain. AfterNIC.com offered the domain to be parked at DomainSponsor.com to earn additional revenue through Pay Per Click (PPC). From May 2005 until February 2006, the domain parking has generated USD53.62 from PPC. The amount hardly reimburses the yearly internic renewal and hosting of the domain. The Company has rejected an offer of USD1,000.00 for the disputed domain name as it is too far off from the cost of their initial acquisition. In view of this, the Respondent submits that the Complainant’s allegation on the intent of the Respondent to confuse customers and intent of commercial gain are groundless.
The Respondent submits that it/the Company has the necessary right to and legitimate interest in the domain name at issue as the Company has paid all fees, including the yearly Internic renewal fee, from 2003. The Respondent has not registered the disputed domain with the intent of commercial gain. This follows from the fact that the listed price, USD 2,500.00, merely recovers the cost of the initial acquisition and yearly maintenance of the disputed domain name. The Respondent is willing to transfer the disputed domain name if the Complainant reimburses the Company the initial acquisition cost, USD 2,500.00.
6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name consists of the trademark ICI, to which the general phrase “paint” is added. The ability of this general phrase, “paint”, to distinguish the domain name from the trademark of the Complainant, is limited. The phrase “paint” is quite a neutral addition and not sufficient to distinguish the disputed domain name from the Complainant’s mark. The Panel finds this obvious as paint is an essential part of the Complainant’s business. As a consequence of this, the Panel finds that the disputed domain name, <icipaint.com>, is confusingly similar to the trademark ICI. B. Rights or Legitimate Interests The Complainant has informed that the Respondent has no connection or affiliation with the Complainant and has no right to use the ICI mark. The Panel finds that the Respondent has failed in disproving this. As a result, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name, as there is no evidence allowing the Panel to conclude that any circumstances listed at paragraph 4(c) of the Policy apply to Respondent’s situation. The Complainant has provided evidence that the domain name at issue has been used to offer ICI and competing products. The Panel finds that the Respondent is granted no rights to and has no legitimate interests in using a domain name that is confusingly similar to Complainant’s trademark for this purpose. For the above reasons, the Panel concludes that the Respondent has registered and used the domain name at issue in bad faith.
C. Registered and Used in Bad Faith The Panel finds it likely that the Respondent was well aware of the existence of the Complainant and its trademarks at the time of registration of the domain names at issue. Furthermore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ICI mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel finds this behavior to be an indication of use in bad faith. The Panel thus finds that the domain name was registered and has been used in bad faith.
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, <icipaint.com>, be transferred to the Complainant.
Peter G. Nitter Sole Panelist Date: March 27, 2006