PPG Industries Ohio, Inc. v. PPG Car
Paints
Claim Number: FA0612000874856
PARTIES
Complainant is PPG
Industries Ohio, Inc. (“Complainant”),
represented by Larry R. Hefter, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ppgcarpaint.com>, registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on December 22,
2006; the National Arbitration Forum received a hard copy of the
Complaint on December 22, 2006. The
Complaint was amended to list a single Complainant and to add a Table of
Contents.
On December 22, 2006,
Go Daddy Software, Inc. confirmed by
e-mail to the National Arbitration Forum that the <ppgcarpaint.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software,
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 January 8, 2007,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 29, 2006 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@ppgcarpaint.com by e-mail.
A timely Response was received and determined to be
complete on January 29, 2007.
Complainant submitted an Additional Submission, which
was received on February 5, 2007. Said submission was timely, in accordance
with the Forum’s Supplemental Rule 7.
On February 6, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Carol Stoner, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant PPG Industries, Inc. and PPG Industries
Ohio, Inc. (hereinafter “PPG”) submits that at least as early as 1966, PPG has manufactured, distributed and sold in
the United States, a line of automotive coating products and accessories in
connection with a series of PG trademarks.
PPG has spent millions of dollars over the years to promote PPG products
and has earned millions of dollars each year from the sale of its goods. As
a result of this success, PPG has garnered considerable goodwill from
the trade and purchasing public. PPG’s website
dedicated to its products is located at the domain name <ppg.com>.
PPG states that it has obtained common law rights to
the domain name <ppg.com>
through its promotion to the consuming public of its products for
more than forty years, and for having exclusively identified PPG and its companies
with the PPG mark. Complainant further avers that the PPG mark enjoys
unquestionable fame in the automotive coating industry as a result of worldwide
recognition and favorable public acceptance.
PPG states that it owns numerous
PPG further contends: that as a result of
substantially continuous and exclusive use from the registration date to the
present, the above cited registrations are incontestable; that
PPG’s registrations for the PPG mark on the Principal
Register constitute prima facie evidence (and, in the case of PPG’s incontestable
registrations, “conclusive” evidence) of the validity of that mark, of PPG’s
ownership of the mark, and of PPG’s exclusive right to use the mark throughout
the United States; and that PPG’s registrations also constitute constructive
notice of PPG’s claim of ownership in the PPG mark, as to eliminate any defense
of good faith adoption and use made as of the date of registration.
Amended Complaint:
Complainant amended the Complaint to list the single
Complainant PPG Industries Ohio, Inc., and to include a Table of Contents for
the evidence attached. Complainant’s amended complaint further stated that its
common law rights, based upon usage, date back to 1927, rather than to 1966,
and that Complainant owns a family of PPG marks, covering automotive related
paint products and associated services.
B. Respondent
Respondent's contends as follows: Respondent admits
that complainant has been selling a line of automotive coating products and
accessories, however, it contends that complainant has not been specifically
selling car paint for full size automotives and paint for model and collector
cars since 1966. Respondent admits Complainant’s extensive and successful
promotion of automotive coating products, but does not believe that this
success should obviate respondent’s use of the domain name in question.
Respondent notes that there are no locations on the
website that use the terms P.P.G. and car paint. Respondent admits that Complainant
has a number of trademarks including the term “PPG.” Respondent states that internet protocol has
forced him to use PPG in domain name without punctuation, which is against his
preference. Respondent states that Complainant has not trademarked the phrase
“car paint” or any other usage of the words, including the phrase “ppgcarpaint”
or “p.p.g. carpaint.”
Respondent avers that Complainant does not have any
right to the name <ppgcarpaint.com>; and that the two trademarks
related to automotive paint were filed on March 28, 2003 and January 30, 2004,
which was subsequent to first use of the domain name by Respondent. Respondent
registered the domain name on August 6, 2002, after Complainant first used the
mark, but prior to Complainant having any trademark for purposes of any form of
car paint.
Respondent acknowledges that it uses the name PPG on
its website, however, no PPG product is sold on the website. The name is used only for the purpose of
matching colors in its original formulations.
Respondent states that the disputed website includes language setting
forth that they are not affiliated in any way with Complainant. Respondent further states that it has a
legitimate interest in the name PPG, but cannot use that format in the domain
name.
C. Additional Submissions
Complainant’s filed an additional submission which was
timely received.
Complainant’s Additional Submission is in the form of
a Reply, addressing statements made in the Response submitted by P.P.G. Car
Paints. Specifically, Complainant submits that Respondent admitted that it
registered the domain name <ppgcarpaint.com> on August 6, 2002,
after Complainant’s first use of the mark, with knowledge of Complainant’s PPG
mark, and without Complainant’s authorization, for the purpose of selling
directly competing automotive paint products.
Complainant’s Additional Submission squarely rebuts
Respondent’s argument that complainant does not have any trademark for purposes
of any form of car paint by stating that “Complainant’s U.S. Trademark
Registration No. 1,735,888 for the mark
PPG covers “protective and decorative coatings” including automotive
coatings. The Additional Submission repeats its prior assertion that the
addition of the generic term “car paint” does not distinguish the domain name
from Complainant’s mark. Complainant re-iterates its assertion that
Respondent’s use of the domain name for a commercial website selling “copycat”
paint products, that directly compete with complainant’s PPG automotive paint,
is not a bona fide use under the UDRP. In its Additional Submission,
Complainant clarifies that Respondent’s use of a Disclaimer is not sufficient
to dispel the initial interest confusion caused by Respondent’s use of the
domain name, because Respondent has already met its goal of attracting internet
users to its website through use of Complainant’s PPG mark in the domain
name.
FINDINGS
Complainant has established that the domain name<ppgcarpaint.com>
registered by respondent is confusingly similar to the registered trademarks of
Complainant.
Respondent has no rights or legitimate interests in
the domain name.
Respondent has registered and is using the domain name
in bad faith.
As such, the Panel finds that the relief requested by
complainant shall be granted
and accordingly, the domain name shall be transferred
to the complainant.
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 must prove each of the following three elements to obtain an order
that a domain name should be cancelled or transferred:
(1) the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the domain
name has been registered and is being used in bad faith.
Complainant has submitted evidence of numerous
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for use in connection with its manufacturing and distributing of
automotive coating products and accessories including PPG INDUSTRIES (Reg. No.
836,998 issued October 17, 1967), PPG ACCESS (Reg. No. 1,723,471 issued October
13, 1992), and PPG (Reg. No. 1,735,888 issued December 1, 1992; and service
mark Reg. No. 2,871, 586 issued August 10, 2004). The Panel has found that Complainant has
established rights in the PPG mark through registration with the USPTO. See Mens Warehouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive {or}
have acquired secondary meaning.”); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes complainant’s rights in the
mark.”).
Complainant contends that Respondent’s <ppgcarpaint.com>
domain name is confusingly similar to Complainant’s PPG mark. Respondent’s domain name contains Complainant’s
entire mark and adds the generic terms “car” and “paint.”
Combining Complainant’s PPG mark with generic terms is
not sufficient to distinguish the domain name from Complainant’s mark,
particularly when the generic terms describe the products covered by Complainant’s
trademark registrations.
See, e.g., Caterpillar Inc. v. Roam the Planet, Ltd. (WIPO D2000-0275) (finding the domain name <catmachines.com> confusingly
similar to complainant’s mark CAT and noting the addition of the word
‘machines’ “reinforces the association of the complainant’s trademark with its
primary line of products.”); Christies Inc. v. Tiffany’s Jewelry Auction,
Inc., D2002-0075 (WIPO Mar. 06, 2001) (finding that the domain name <christiesauction.com> is
confusingly similar to the complainant’s mark since it merely adds the word
“auction” used in its generic sense).
The Panel, therefore, finds that the addition of
generic terms directly related to the business in which Complainant engages,
fails to distinguish a domain name from Complainant’s mark for purposes of
Policy ¶4(a)(i).
Once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000–0624
(WIPO Aug.
21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) ( finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest, is
sufficient to shift the burden of proof to the Respondent to demonstrate that
such a right or legitimate interest does exist).
Complainant contends that Respondent is using the
confusingly similar domain name <ppgcarpaint.com> to operate a
website using Complainant’s name, without authorization, yet selling
competitor’s products. Such commercial use is neither a bona fide offering
of goods and services pursuant to Policy ¶4( c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶4( c)(iii). See Nike, Inc. v. Dias, FA
135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide
offering of goods or services where the respondent used the complainant’s mark
without authorization to attract Internet users to its web site, which offered
both the complainant’s products and those of the complainant’s competitors); see
also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.10,
2000) (finding that domain names used to sell the complainant’s goods without
the complainant’s authority, as well as others’ goods, is not bona fide
use).
Furthermore, Complainant contends that Respondent is
neither commonly known by the disputed domain name, nor licensed to register
domain names featuring Complainant’s PPG mark. Further, Respondent’s use of the
trade name PPG does not demonstrate any legitimate interest of Respondent in
the domain name because Respondent cannot justify his misappropriation of a
trademark in a domain name merely through use of that same mark in a trade
name. Respondent’s bootstrap logic has a broken strap. Respondent’s actions are
more accurately described as inverse pirating.
The totality of the submitted evidence does not show that Respondent is
commonly known by the <ppgcarpaint.com> domain name for purposes
of Policy ¶4( c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without
demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) finding neither rights nor legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Registration and Use in Bad Faith
Complainant contends that respondent is using the <ppgcarpaint.com>
domain name to operate a website that uses Complainant’s mark, yet sells
competing products without authorization. The Panel finds that Respondent’s use
constitutes a disruption of Complainant’s business and is evidence of bad faith
registration and use pursuant to Policy ¶4(b)(iii). See G.D. Searle &
Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of complainant’s CELEBREX mark to sell complainant’s
products represents bad faith use under Policy ¶4(b)(iii).”); see also
Fossill, Inc. v. NAS, FA 92525 (Nat.
Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain
name from the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant).
Furthermore, Complainant contends that Respondent’s
manner of use of the <ppgcarpaint.com> domain name will likely
lead to confusion among Internet users as to Complainant’s sponsorship of, or
affiliation with, the resulting web sites. The website purports to be
an on-line distributor of PPG refinish paint products, which action is
not permitted to even authorized distributors. The use of the PPG logo and PPG
in the domain name gives the visitor to the website the impression that the
website and its activities are sponsored by PPG Industries, which is not the
case. The
webpage also contains the confusing toll free
telephone number of 800-9-BUY-PPG.
Complainant has attached a consumer letter as evidence
of actual confusion. Such registration
and use is further evidence of bad faith pursuant to Policy ¶4(b)(iv). See
Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another’s mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Finally, Complainant contends that Respondent
registered the disputed domain name with actual or constructive knowledge of Complainant’s
rights in the trademark. On respondent’s About Us page, it referred to
Complainant’s PPG paint codes as the “standard in the industry” and to PPG as
“the oldest and largest provider of automotive and specialty paints.” This same
page also contains a disingenuous disavowal of affiliation with PPG. Respondent possesses constructive knowledge
due to Complainant’s registration with the USPTO. Respondent’s registration of the domain name,
in spite of actual or constructive knowledge, amounts to bad faith registration
and use pursuant to Policy ¶4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2003) (holding
that “there is a legal presumption of bad faith, when respondent reasonably
should have been aware of complainant’s trademarks, actually or
constructively”); see also
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ppgcarpaint.com> domain name be TRANSFERRED
from Respondent to Complainant.
Carol Stoner, Esq. Panelist
Dated: February 21, 2007
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