DECISION

 

Guardian Industries Corp. v. Siam Plate Glass Industry Ltd.

Claim Number: FA0202000104470

 

PARTIES

The Complainant is Guardian Industries Corp., Auborn Hills, MI (“Complainant”) represented by Michael B. Stewart, of Rader, Fishman & Grauer PLLC.  The Respondent is Siam Plate Glass Industry Ltd., Bangkok (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <siamguardian.com> and <gujaratguardian.com>, registered with Verisign - Network Solutions, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Jacques A. Léger Q.C. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 6, 2002; the Forum received a hard copy of the Complaint on February 7, 2002.

 

On February 7, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <siamguardian.com> and <gujaratguardian.com> are registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@siamguardian.com, and postmaster@gujaratguardian.com by e-mail.

 

A timely Response was received and determined to be complete on February 27, 2002.

 

Addition submissions were received timely on March 4, 2002.

 

After the deadline for submissions and without being properly served on the other party, Respondent submitted a supplemental response on March 21, 2002.

 

On March 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger Q.C. as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

            Identical or confusingly similar

 

The Complainant contends that the domain names registered by the Respondent (<siamguardian.com> and <gujaratguardian.com>) are identical or confusingly similar to Complainant's marks (SIAM GUARDIAN and GUJARAT GUARDIAN) "since their spelling and pronunciation are identical in every way".

           

Rights or Legitimate Interests

           

Moreover, the Complainant's contentions are that the Respondent has no rights or legitimate interests with respect to the domain names: i) it does not use the domain name in connection with a bona fide offering of goods or services, ii) it has never been commonly known by either domain name and, iii) it is using the disputed domain names in order to capture or attract and redirect customers to its own web site (<spgind.com>), by which he sells products in direct competition with those of the Complainant.

 

Registration and Use in Bad Faith

 

Finally, the Complainant alleges that the Respondent has registered and is using the domain names in bad faith since it :

-    registered the domain names without having any right or legitimate interest to do so;

-    "continues to disrupt Complainant's business by intentionally attracting, for its own commercial gain, Internet traffic, rightfully, intended for Guardian, thereby creating a likelihood of confusion in the marketplace";

-    engages in a the systematic registration of domain names identical or confusingly similar with the marks of "at least three other competitors and directs the traffic from each of these domains to its own site".

 

B. Respondent

 

Nature of the word "Guardian"

 

The Respondent alleges that the word "Guardian" is a generic word and therefore should not be attributed a high degree of protection even as a trademark.

 

Use by the Complainant of the name "Siam Glass"

 

It also alleges that the Complainant has illegally used its company name "SIAM GLASS" in order to deceive customers as no one in Thailand knew "Guardian Industries".

 

Complainant's lack of interest in the dispute

 

Moreover, the Respondent contends that the Complainant has no interest to request that the disputed domain names be transferred because the Complainant's subsidiaries are different companies and distinct entities which have the interest to claim that remedy instead of the Complainant. As to the domain name <siamguardian.com>, the Respondent contends that Siam Guardian Glass Co. has no longer the interest or right to claim the use of that particular domain name since it has changed its corporate name which no longer includes the expression "Siam Guardian"[1].

 

C. Supplemental Filing of Complainant

 

Nature of the word "Guardian"

 

In response to the allegations of the Respondent to the effect that the word "Guardian" is a generic word "and that nobody can claim a right on this word", the Complainant submits that it owns a family of "Guardian" marks, all of which have been used and which are distinctive of Complainant's products and services.

 

Rights or legitimate interests in the domain name

 

The Complainant also alleges that the Respondent has failed to show any rights or legitimate interests in the disputed domain names or to present any proof in order to refute the Complainant's contentions as to the registration and use in bad faith of the disputed domain names.

 

 

Complainant's reputation in Thailand

 

Moreover, the Complainant dismisses Respondent's allegations pertaining to the Complainant’s lack of reputation in Thailand.

 

Pattern of registering domain names

 

Finally, the Complainant reiterates its allegations regarding Respondent's pattern of registering domain names incorporating the marks of its competitors.

 

D. Additional Submission of Complainant

 

Just before issuing its decision and after the deadline for submissions and without being properly served on the other party, the Panel received, from the Forum, a further submission from the Respondent, hence said submission does not comply with Supplemental Rule 7. However, the Panel decided to accept this late submission and considered it along with the other materials received, by virtue of its discretion as directed by ICANN; but said review has not materially changed its decision.

 

FACTUAL BACKGROUNDS

The following unchallenged facts have been asserted:

 

Complainant is a world-wide manufacturer of "float glass" and fabricates glass products for the commercial and residential construction industries. Its line of products also includes mirrored glasses, integrated exterior vehicle systems for the automotive industry and building products.

 

Complainant has continuously used the mark GUARDIAN since 1932 when it began as a small manufacturer of windshields for the automotive industry under the name Guardian Glass Company in Detroit, Michigan U.S.A. In 1968 its name was changed to Guardian Industries Corp and has remained unchanged since.

 

Since 1968, Complainant has expanded its operations world-wide with the opening of plants in Venezuela, Hungary, Thailand, India, Saudi Arabia, Germany, Brazil, Canada, Luxembourg and Spain. In 2001, the Complainant had sales in excess of US $ 2,000,000,000.

 

Since at least November 1992, the Complainant has operated in Asia principally through its subsidiaries Siam Guardian Glass Co. Ltd., (hereinafter referred as to  Siam Guardian), and Gujarat Guardian Limited, (hereinafter referred as to Gujarat Guardian).  Through these subsidiaries the Complainant exploits 2 plants in Thailand[2] and 1 plant in India[3]. Siam Guardian has annual sales on the order of US $ 100 Million and Gujarat Guardian has annual sales of approximately US $ 75 Million.

On October 1, 2001, a letter was sent to Siam Glass Plate by Baker & McKenzie, on behalf of Siam Guardian, requesting the revocation or transfer of the registration of the domain name <siamguardian.com>.

 

On October 29, 2001, a letter was sent to Siam Guardian, on behalf of Siam Glass Plate Industry Ltd., requesting that Siam Guardian cease to use "Siam Glass" in its corporate name.

 

In November 2001, Siam Guardian changed its company name to Guardian Industries Nong Khae Co. Ltd. and Siam Guardian Glass (Rayong) Co. Ltd. changed its name to Guardian Industries Rayong Co. Ltd.[4].  

 

Respondent, for its part, is a Thai manufacturer and dealer of glass in the domestic and international market. The Respondent, Siam Plate Glass Industry Ltd, (hereinafter referred as to Siam Plate) is registered as a limited company under Thai law since 1985.

 

FINDINGS

Having reviewed the evidence, submitted by the parties, the Panel makes the following findings :

 

Both parties are direct competitors in the industrial glass business in Thailand and in others markets.

 

The evidence submitted by the Complainant shows that the Respondent has registered other domain names that include the trademarks of its others competitors. For instance, the Respondent has registered the domain name <gopalglass.com>[5], which incorporates a substantial part of the corporate name of Gopal Glass Works (an Indian glass manufacturing firm), <triveniglass.com> and <trivenisheetglass.com>, which incorporates the corporate name of Triveni Glass Ltd, which is an Indian manufacturer of quality "float glass".

 

The evidence shows, on a balance of probabilities, that the Respondent has been using domain names incorporating competitors trademarks in order to redirect the web traffic to its own web site[6].

 

Trademark: GUARDIAN

 

The evidence extensively supports Complainant’s allegations regarding the state of its trademarks portfolio and its rights in the trademark GUARDIAN. It appears, that this mark is distinctive of Complainant’s products and services. The mark GUARDIAN has been registered by the Complainant in at least two countries. The evidence shows that the mark GUARDIAN has been used somewhat extensively and continuously by Complainant , and/or its subsidiaries, and it follows that said trademark has acquired a certain degree of distinctiveness.

 

Trademark: SIAM GUARDIAN

 

In the case of the mark SIAM GUARDIAN, the evidence seems to be less conclusive. The evidence submitted by the Complainant shows more the use of the mark SIAM GUARD rather than SIAM GUARDIAN : for instance see Complainant’s Exhibits 2, 6, 8. However, prior to its name change, Siam Guardian had also been using the words, SIAM GUARDIAN, as a trade name, which identifies the company and distinguishes it in Thailand, so that there is still goodwill associated with it.

 

Trademark: GUJARAT GUARDIAN

 

As to the trademark GUJARAT GUARDIAN, the evidence submitted by the Complainant establishes that it was used as a trade name for the Complainant’s subsidiary in India: see for instance Complainant’s Exhibits 7, 9. Respondent having failed to submit any evidence regarding the use of the mark GUJARAT GUARDIAN, and the argument of lack of interest being rejected as stated hereinafter, the Panel concludes that Complainant has met its burden in connection with the existence of Gujarat Guardian’s rights in the trademark.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order canceling or transferring a domain name:

 

i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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.

 

After the "General Considerations", these three elements will be considered hereinafter.

 

General Considerations

 

As a general principle, a Panel shall decide a dispute on the basis of the statements and allegations made in the Complaint and Response as well as the documentary evidence submitted in connection thereto. As well, a dispute will be decided in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable.

 

Consequently, the Panel shall not decide on a Complaint solely on the basis of the allegations submitted by the parties since each has a burden of proving its allegations. Nor is it the role of the Panel to seek further extrinsic evidence (other than judicial knowledge) to support the parties' allegations, as this may be disruptive of the Process. Therefore, it is not sufficient for a party to simply make allegations without submitting the appropriate documentation whenever possible to either support, sustain or challenge the allegations of the other.

 

Lack of interest

 

The Panel believes that it is appropriate at this stage to dispose of the Respondent's contentions regarding Complainant's "lack of interest" in the present proceedings. As previously exposed, Respondent submitted that Complainant has no rights, interests or standing in the present dispute because only its subsidiaries can claim any remedies relating to the disputed domain names. While it is true that the Complainant's subsidiaries are distinct legal entities, each having its own juridical personality, the fact remains that in the global market of the Internet such fine distinctions may be, in some circumstances,  inappropriate or inapplicable.  Even though such an argument might be said to jeopardize the right or standing of the Complainant before a Court of law, in an arbitration, the Panel may exercise its discretion in evaluating such a technical argument. Furthermore, should the Panel reject Complaint claim solely on this technicality, such decision would not have a binding effect towards the Complainant’s subsidiaries as there is no res judicata between Respondent and Complainant’s subsidiaries and would likely result in the institution of new claims on their behalves. In addition, the Complainant does not completely lack interest in the present case as: i) its trademark GUARDIAN has been incorporated in the disputed domain names and,  ii) Siam Guardian and Gujarat Guardian are under its control. In light of all the surrounding circumstances, the Panel believes that it is appropriate to exercise its discretion to reject Respondent’s argument of “non-standing” of Complainant, otherwise the resolution of this dispute would simply be delayed.       

 

i) Identical and/or Confusingly Similar

 

This Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.

 

While technically, the mark GUARDIAN, cannot be said to be identical to the disputed domain names, when considering the context and the factual background (the parties are direct competitors and the Complainant has two subsidiaries acting in India and Thailand) it may be said that the domain names are confusingly similar to the Complainant’s trademarks. This is even more so, taking into account the fact that the prefixes "Gujarat" and "Siam" make references to geographical areas where Complainant exploits plants through its Indian and Thai subsidiaries and benefits from the goodwill associated with its trademarks and/or tradenames. It is not unreasonable to consider that potential customers are likely to be mislead by the domain names registered by the Respondent. Clearly, the disputed domain names incorporate the Complainant’s trademark (GUARDIAN) and its subsidiaries' trade names. The inclusion of the prefixes Gujarat and Siam does not reduce the likelihood of confusion as the disputed domain names reproduce the distinctive part of the corporate (Siam Guardian Glass Co Ltd. and Gujarat Guardian Limited) and trade names of the Complainant's subsidiaries under which they carry on business.

 

As stated in Société des Bains de Mer Et Du Cercle Des Étrangers À Monaco v. Global Productions-Domain For Sale[7], "the words (in that case "monaco" and "gambling") used together create a strong similarity and impression that could easily induce the general public into believing that the domain name, the domain name proprietor and any web site operated from the domain name are associated with the Complainant (owner of the trademark "Casino de Monte-Carlo")". 

 

It is perfectly plausible for a consumer to be confused by the terminology used in Respondent's domain names as the average Internet users likely expect that <siamguardian.com> and <gujuratguardian.com> will lead them to the web sites of the Complainant's subsidiaries.

 

ii) Rights or Legitimate Interests

 

The Panel can rely on any of the following circumstances, without limitation, to find that Respondent has rights or legitimate interests in the domain names:

i) the use 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 fact that Respondent has been commonly known by the domain name; or

iii) a legitimate non-commercial 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: 4c]].

 

In this regard, the Panel refers to its decision in Pivotal Corporation  v. Discovery Street Trading Co. Ltd.[8] where it was decided that once lack of legitimate interests or rights has been sufficiently alleged by a Complainant the failure of Respondent to adequately address this issue may allow the Panel to draw an adverse inference therefrom; since the Respondent is the sole party able to provide evidence concerning any of the above-mentioned circumstances.

 

The Respondent having failed to provide such evidence, the Panel hereby draws an adverse inference and finds that Respondent has no rights or legitimate interests in the domain names.

 

Moreover, the Panel's opinion is that the Respondent cannot claim to "use" the domain names in connection with a bona fide offering of goods or services. By using the disputed domain names, the Respondent is attempting to attract and divert online consumers to its competing web site[9] and this cannot constitute a bona fide offering of goods or services. The Respondent knew, as of the date of registration of the disputed domain names (January 25, 2000), that Complainant and its subsidiaries had been using the trademark GUARDIAN. It was also (or should have been) aware that the two subsidiaries of the Complainant were known by corporate names confusingly similar to the disputed domain names. While Respondent vaguely attempted to show that the Complainant is not known in Thailand[10] it did not submit any evidence as to this allegation. Therefore, it is not sufficient to simply allege to be unaware of the Complainant's trademark and its subsidiaries' trade names given that they are direct competitors[11] for the same markets (domestic and international) and that Complainant has established facilities in Thailand since 1992.

 

For instance, Respondent could have attempted to show that it has been commonly known by the disputed domain names, but it failed to do so. Complainant's subsidiaries had been using corporate and trade names substantially similar to the disputed domain names. The domain names <siamguardian.com> and <gujuratguardian.com>, in any case, are more likely to be associated with Complainant's businesses or at least with Complainant's subsidiaries' businesses rather than Respondent.

 

Similarly, Respondent could have attempted to show that it was making a legitimate non-commercial or fair use of the domain names, but it failed to do so. In the absence of evidence by Respondent, the Panel cannot find any legitimate reasons why Respondent is using the disputed domain names which incorporate the trademarks and trade names of its competitors. Accordingly, the only plausible reason for such a conduct is that Respondent attempts to "cash in" on the goodwill attached to the Complainant's trademark and its subsidiaries' trade names.

 

As stated in Charles Jourdan Holding AG v. AAIM[12], Case No. D2000-0403 "the Panel finds that the Respondent has no legitimate rights or interests in that (i) Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark; (ii) Complainant has prior rights in that trademark which precede Respondent's registration of the domain name; (iii) Respondent is not (either as an individual, business or other organization) commonly known" by the names forming part of the disputed domain names.  

 

For all the above reasons, the Respondent has failed to show the slightest legitimate interest or right in the disputed domain names.

 

Registration and Use in Bad Faith

 

Rule 4(b) of the ICANN Policy states that the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling [...] for a valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

ii) the domain name has been registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii) the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or

iv) the domain is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's web site or other online locations, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement or your web site or location or of a product or service on  your web site or location.

 

Registration

 

As to the aspect of bad faith in the registration of the disputed domain names, the Panel concludes that Respondent had to have been aware of Complainant’s mark and its subsidiaries' trade names prior to registering the domain names, since both parties are direct competitors for the same markets. Having so concluded, the Panel infers that such a conduct constitutes per se registration in bad faith[13].

 

Complainant has also met its burden of proof  by demonstrating that Respondent has acted in bad faith with regards to paragraph 4(b)(ii) of the Policy. This Panel is satisfied by the evidence provided by the Complainant that Respondent has registered domain names identical or substantially similar to the trademarks and trade names of third parties to this arbitration[14]. The Panel adopts the findings as stated in Tiger Oak Publications Inc. v. Fourb Publishing Inc., and "infers from these facts that Respondent's purpose is to prevent trademark owners from using those domain names"[15].

 

Use

 

Futhermore, the Panel is satisfied that Complainant has shown that Respondent has also used the disputed domain names in bad faith. It has been proved before this Panel that Respondent has "attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion with the Complainant's mark". The Panel adopts the view expressed in Kosmea Pty Limited v. Carmel Krpan that the use of the disputed domain names to redirect web users to its own web site constitutes use in bad faith[16].

 

The Panel finds that the Respondent registered and used the domain names in bad faith.

 

DECISION

For the foregoing reasons, the Panel concludes that:

 

-         The domain names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights;

 

-         The Respondent has no rights or legitimate interests in respect of the domain names; and

 

-         The domain names have been registered and are being used by the Respondent in bad faith.

 

Pursuant to Paragraphs 4(i) of the ICANN Policy, the Panel orders that the domain names <siamguardian.com> and <gujaratguardian.com>, registered by Respondent Siam Plate Glass Industry Ltd., be transferred by the Registrar, Verisign - Network Solutions Inc., to the Complainant, Guardian Industries Corp.

 

 

Jacques A. Léger Q.C., Panelist
Dated: March 25, 2002.