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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Dow Chemical Company and Flexible Products Company v. Domain Discreet/ Commercial Thermal Solutions Inc

Case No. D2008-0910

 

1. The Parties

Complainants are The Dow Chemical Company, Midland, Michigan, United States of America, and Flexible Products Company, Marietta, Georgia, United States of America, represented by The Gigalaw Firm, United States of America.

Respondents are Domain Discreet, Yarmouth, Nova Scotia, Canada and Commercial Thermal Solutions Inc., Spring Lake, New Jersey, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <dowfrothpak.com> and <frothpakfoam.com> (“Domain Names”) are registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2008. On June 17, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the Domain Names. On June 24, 2008, Register.com transmitted by email to the Center its verification response confirming registration but disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on June 25, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on June 26, 2008. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on July 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2008. Respondents did not submit any Response. Accordingly, the Center notified Respondents’ default on July 22, 2008.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on August 5, 2008. 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 The Dow Chemical Company (“Dow”) is a diversified chemical company incorporated in 1897. Complainant Flexible Products Company (“Flexible Products”) is a wholly owned subsidiary of Complainant Dow.

Complainant Dow delivers a broad range of products and services, from fresh water, food and pharmaceuticals to paints, packaging and personal care products, to customers in approximately 160 countries. Dow has annual sales of USD 54 billion and 46,000 employees worldwide.

Complainant Dow (or its affiliates) owns at least 2,124 registrations in numerous countries or geographic regions worldwide for trademarks that consist of or contain the mark DOW. Complainant Dow’s relevant trademark registrations in the United States of America include the following:

Mark	Reg. No.	Date of First Use	Date of Registration
DOW	140,588	1895	March 22, 1921
DOW	596,563	February 25, 1936	October 12, 1954
DOW	1,735,916	June 1, 1929	December 1, 1992

Complainant Dow owns registrations of approximately 1,452 domain names that consist of or contain the DOW trademark or variations thereof.

Complainant Dow owns the trademark FROTH-PAK in Turkey (Reg. No. 200,607,208).

Complainant Flexible Products owns 22 registrations worldwide for the trademark FROTH-PAK, including U.S. Reg. No. 899,444 for the trademark FROTH-PAK for use in connection with “aerosol dispenser containers containing materials for producing urethane foam”. This mark was first used in commerce on June 26, 1968, and registered on September 29, 1970.

On July 3, 2006, Respondents registered the Domain Names <dowfrothpak.com> and <frothpakfoam.com>.

 

5. Parties’ Contentions

A. Complainant

1 Identical or Confusingly Similar

Complainants contend that the Domain Names are identical or confusingly similar to their DOW and FROTH-PAK trademarks in which they have legal rights.

Complainants contend that the Domain Name <dowfrothpak.com> incorporates in their entirety two of Complainants’ trademarks, and the Domain Name <frothpakfoam.com> incorporates one of Complainants’ trademarks in its entirety, adding the word “foam” to that mark. The incorporation of its registered marks into the Domain Names is sufficient, Complainants contend, to establish identity or confusing similarity between their marks and the Domain Names.

Complainants further contend that:

The absence of the dash from the FROTH-PAK trademark in each of the Domain Names is irrelevant for purposes of the Policy.

The addition of the word “foam” in the Domain Name <frothpakfoam.com> – a word that describes the product with which it is used – does not alleviate confusing similarity for purposes of the Policy. If anything, the use of such a descriptive word actually increases the confusing similarity.

2 Rights or Legitimate Interests

Complainants contend that Respondents have no rights or legitimate interests in either Domain Name. Complainants have never assigned, granted, licensed, sold, transferred or in any way authorized Respondents to register or use any of the DOW trademarks or the FROTH-PAK trademark in any manner. To Complainants’ knowledge, Respondent has never been commonly known by either of the Domain Names and has never acquired any trademark or service mark rights in either Domain Name.

Complainant further alleges, upon information and belief, that because Complainants hold exclusive rights to the DOW trademark and the FROTH-PAK trademark, Respondents have no legal rights to use and have never used, or made preparations to use, either Domain Name in connection with a bona fide offering of goods or services. Respondents are using each Domain Name in connection with a website that offers goods and services that compete with the goods and services offered by Complainant under the DOW and the FROTH-PAK trademarks. Respondents’ websites using the Domain Names promote “quick curing, disposable, two-component spray polyurethane foam insulation kits”. Complainants contend that such use of the Domain Names in connection with a product competitive with their own FROTH-PAK product is not a bona fide offering of goods or services under the Policy.

Respondents, Complainants contend, are not making a legitimate noncommercial or fair use of either Domain Name. Rather, Respondents are making an illegitimate, commercial, unfair use of the Domain Names, with intent, for commercial gain, misleadingly to divert consumers to themselves. Specifically, Respondents are using the Domain Names to direct consumers to a website that offers a product that competes with the products Complainant offers under the DOW and FROTH-PAK brands (or marks). Such use clearly is for commercial gain, particularly given the “Order Products” link that appears on the websites associated with the Domain Names.

3 Registered and Used in Bad Faith

Complainants contend that the Domain Names should be considered on several grounds as having been registered and used by Respondents in bad faith.

Complainants contend that Respondents registered each of the Domain Names in order to prevent Complainants from reflecting the DOW trademark and the FROTH-PAK trademark in a corresponding domain name, arguing that Respondents have engaged in a pattern of such conduct in violation of paragraph 4(b)(ii) of the Policy.

Complainants contend that Respondents registered the Domain Names primarily for the purpose of disrupting the business of a competitor in violation of paragraph 4(b)(iii) of the Policy, noting that Respondents are using the Domain Names in connection with a website that offers products competitive with those offered by Complainants, namely, a spray foam insulation product.

In addition, Complainants contend that Respondents have intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the DOW and the FROTH-PAK trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, in violation of paragraph 4(b)(iv) of the Policy.

Complainants contend that Respondents knew of Complainants’ DOW and FROTH-PAK trademarks when they registered the Domain Names. The DOW and FROTH-PAK trademarks are well-known, internationally recognized marks that have been in use for, respectively, 111 years and 40 years. This demonstrates that Respondents not only were aware of Complainants’ marks but knew of Complainants’ related domain names, and this constitutes strong evidence of bad faith

A further indication of bad faith, Complainants contend, is the fact that Complainants’ DOW and FROTH-PAK trademarks pre-date Respondent’s registration of the Domain Names. Moreover, given Complainants’ established rights in the DOW and FROTH-PAK trademarks in numerous countries or geographic regions worldwide and the fact that the Domain Names are “so obviously connected with” Complainant, Respondents’ actions suggest “opportunistic bad faith” in violation of the Policy.

Complainants request that the Domain Names be transferred to Complainant Dow.

B. Respondent

Respondent did not file a Response or otherwise reply to Complainant’s contentions.

 

6. Discussion and Findings

Neither Respondent responded to the Complaint, therefore the Panel considers whether Respondents have been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier service to Respondents at the addresses provided in Respondents’ registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondents of the Complaint and the administrative proceeding.

The Panel addresses an issue arising on the record concerning Respondent Domain Discreet. Domain Discreet, of Canada, appeared as the registrant of both Domain Names on the Whois records of the Registrar, and Complainants thus named Domain Discreet as the Respondent in this proceeding. The Registrar, responding to the Center’s request for verification, stated that the registrant was Commercial Thermal Solutions, Inc., that Domain Discreet was not the registrant, and that Domain Discreet is a service the Registrar provides to its customers who wish to keep their contact information private. Complainants amended the Complaint to add Commercial Thermal Solutions as a respondent but did not dismiss Domain Discreet. The fact remains then that Domain Discreet was listed on the Whois record as the registrant, was named and continues to be named as a respondent to the Complaint, was served with the Complaint, did not respond to the Complaint, and was notified that it was in default. On the basis of the foregoing, the Panel finds that Domain Discreet was properly named as a respondent to the Complaint and has not come forward to provide the Panel with grounds to dismiss the Complaint against it. Under the circumstances, Domain Discreet remains a proper respondent in this proceeding.

Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint, Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable, Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondents’ failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.

Under paragraph 4(a) of the Policy, Complainants must prove each of the following three elements of their case in order to obtain the requested relief:

(i) Respondents’ Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) Respondents’ Domain Names were registered and are being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

Complainant Dow clearly has well-established legal rights in the DOW trademark based on its multiple registrations of the mark in the United States of America and many countries and its long, more than 100-year use of the mark. The Panel finds that the DOW mark is widely known in the United States of America and internationally.

Complainant Flexible Products has well-established legal rights in its FROTH-PAK trademark based on its registration in the United States of America and in a number of other countries and on its more than 40 years of use in connection with polyurethane foam insulation. Complainants do not specifically allege or produce evidence sufficient for the Panel to find that FROTH-PAK is a widely known trademark.

There is no trademark “Dow Froth-Pak” as such. However, the evidence of record does show that Complainant Flexible Products is a wholly-owned subsidiary of Dow and that the FROTH-PAK product is clearly marketed and sold as a product of Complainant Dow, not of Flexible Products, using both the FROTH-PAK and the DOW trademarks to identify the product on promotional material and product packaging.

Respondents’ Domain Name <dowfrothpak.com> incorporates two separate trademarks, each in their entirety, correctly spelled and with no additional words or symbols. While this Domain Name is not identical to either one of the Complainants’ two trademarks, the Domain Name is identical to two trademarks both of which are used together in marketing a product under the Dow name. Under these circumstances, the Panel considers the Domain Name <dowfrothpak.com> to be identical to trademarks in which Complainants’ have legal rights. Where a domain name is identical to a Complainant’s trademark, “it is evident without the need for elaboration that Complainant has proven the first element of the Policy.” Tucker Carlson v. Domain Privacy Ltd, WIPO Case No. D2008-0474.

Even if this Domain Name were to be considered not identical to the trademarks, based on the fact that the Domain Name is a combination of two separate trademarks, the Panel would find the Domain Name confusingly similar to Complainants’ trademarks on grounds, as stated above, that the Domain Name is identical to two trademarks that are commonly used together to identify the source of Complainants’ polyurethane foam product. Where “a domain name wholly incorporates a complainant’s registered mark [, that] is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, inc, WIPO Case No. D2001-0903)

Respondents’ second Domain Name, <frothpakfoam.com>, is not identical to either one of Complainants’ trademarks. The Domain Name incorporates one of Complainants’ trademarks, FROTH-PAK, in its entirety (less the hyphen) but adds the word “foam,” which describes what the FROTH PAK product actually is.

The Panel finds that the Domain Name <frothpakfoam.com> is confusingly similar to Complainants’ FROTH-PAK trademark. As stated above, the incorporation of a complainant’s registered mark in the Domain Name is sufficient to establish confusing similarity under the Policy. Six Continent Hotels, Inc. v. The Omnicorp, supra.

Generally, “[A] user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Eastman Chemical Company. v. Manila Industries, Inc., NAF Case No. 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Case No. 444468. In this case, the addition of the word “foam” to Complainants’ FROTH-PAK mark, where “foam” actually describes the product identified by the mark, does nothing to alleviate confusing similarity for purposes of the Policy. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604. If anything, the use of such a descriptive word actually enhances the confusing similarity. See, e.g., Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296 (descriptive term “tires” in <costcotires.com> increases confusion); Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. v. Cupcake City and null John Zuccarini a/k/a John Zuccarini, WIPO Case No. D2001-0235 (addition of “sports” and “weather” to newspaper name caused confusion); Capital Broadcasting Company, Inc. v. Private, WIPO Case No. D2000-1609 (adding “weather” heightened confusion with television call letter mark).

Omission of the dash from the FROTH-PAK trademark in each of the Domain Names is irrelevant for purposes of the Policy. See, e.g., Check Into Cash, Inc. v. Rico Marquez, WIPO Case No. D2007-0942 (the addition of dashes in a domain name “do not negate the confusing similarity” with a Complainant’s trademark); Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853 (a dash in a domain name “add[s] no distinctiveness whatsoever”).

Complainants have established the first element of their case with respect to both Domain Names.

B. Rights or Legitimate Interests

Complainants must show that Respondents have no rights or legitimate interests in the Domain Names, and indeed have made a sufficient prima facie case that this is the fact here.

Complainants have never authorized Respondents to register or use any DOW trademarks or any FROTH-PAK trademark in any manner. “[This] fact, on its own, can be sufficient to prove the second criterion [of the Policy].” Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272; Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”).

Given Complainants’ long-established use of both the DOW and the FROTH-PAK trademarks, it is exceedingly unlikely that Respondents are commonly known by either of these trademarks. See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”). The Domain Name registrants are listed as Domain Discreet and Commercial Thermal Solutions, Inc. The logo on Respondents’ websites promotes a product called “Tiger Foam Insulation”; the copyright notices on the websites refer to “Commercial Thermal Solutions, Inc.”, and the “Contact Us” pages for the websites direct Internet users to “Commercial Thermal Solutions, Inc. / Foam Products Division”. These facts, together with the absence of evidence in the record to the contrary, allow the Panel to find that Respondents are not commonly known by the Domain Names pursuant to Policy, paragraph 4(c)(ii). Alpha One Foundation, Inc. v Alexander Morozov, NAF Case No. 766380.

The record shows that Respondents are not using the Domain Names in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondents are using each of the Domain Names in connection with a website that offers goods and services that compete with the goods and services offered by Complainants under the DOW and FROTH-PAK trademarks. Respondents’ websites using the Domain Names promote “quick curing, disposable, two-component spray polyurethane foam insulation kits” sold under the brand name “Tiger Foam” by Respondent Commercial Thermal Solutions. Such use of the Domain Names in connection with a competitive product is not a bona fide offering of goods or services under the Policy. See, e.g., Abraxis BioScience, LLC v. Les Rubin, WIPO Case No. D2008-0066; Dart Industries Inc. v. Leslie Rubin, WIPO Case No. D2006-0146; Sanrio Company Ltd v. Neric Lau, WIPO Case No. D2000-0172 (interests in the domain name not legitimate where there is no authorized association with trademark owner); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Beemak Plastics, Inc. v. WestRep Group, WIPO Case No. D2001-1023 (no rights or legitimate interests where the domain name at issue resolved to Complainant’s competitor’s web site at which products were offered for sale that directly competed with Complainant’s trademarked products).

Finally, the nature and content of Respondents’ websites show further that Respondents are not making a fair or noncommercial use of the Domain Names. Policy, paragraph 4(c)(iii). Respondent is using the Domain Names to direct consumers to a website that offers for sale a product that competes with the products Complainants offer under the DOW and FROTH-PAK marks. Six Continents Hotels, Inc. fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292 (“Respondent’s chosen use of the domain names to promote services arguably competitive to, and certainly related to Complainant’s services, dispels any doubt as to the lack of fair use and the commercial nature of Respondent’s unauthorized use).

Respondents, having defaulted, fail to come forward with any evidence to rebut Complainants’ substantial prima facie case. The Panel concludes, therefore, that Respondents have no rights or legitimate interests in either Domain Name and that Complainants have proved the second element of their case.

C. Registered and Used in Bad Faith

Complainants must show that the Domain Names were registered and are being used in bad faith.

The registration of a domain name that is confusingly similar to a famous trademark by a person who has no relationship to that mark may in itself constitute sufficient evidence of bad faith registration and use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). Complainant Dow’s widely-known DOW trademark clearly was used in registering the Domain Name <dowfrothpak.com> by someone who has no apparent relationship to Complainant or to the mark, thus evidencing bad faith registration of that mark.

While Complainants’ FROTH-PAK mark has not been shown to be a widely-known trademark generally, the mark clearly was known to Respondents at the time they registered both Domain Names. The mark was used by Complainants for some 40 years in connection with the polyurethane foam product and was registered long before Respondents chose to use the mark in registering their Domain Names. The Panel notes further that Respondent Commercial Thermal Solutions is using the Domain Names to market and sell a foam product that competes directly with Complainants’ FROTH-PAK product thus rendering it conclusive, in the Panel’s view, that Respondents had actual knowledge of Complainants’ FROTH-PAK mark when Respondents used it in registering the Domain Names. There is ample authority to the effect that registration of a domain name with actual knowledge that it incorporates or uses another’s trademark is evidence of bad faith registration and use. See Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922; Marriott International, Inc. v Momm Amed Ia, NAF Case No. FA95573; Research In Motion Limited v. Dustin Picov, supra. See also Telstra Corporation Limited supra (“it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the [disputed] domain name”); Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035 (“it [is] inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business”); and Kate Spade LLC v. IQ Management Corporation, WIPO Case No. D2005-0109 (“Respondent knew what it was doing: registering another domain name that incorporated entirely in itself a highly publicized trademark belonging to a third party. This pattern of conduct falls under the category of bad faith.”).

The evidence further supports a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Respondents have intentionally attempted to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the DOW and FROTH-PAK trademarks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website. Respondents are using Complainants’ trademarks to attract or divert Internet users searching for Complainants’ foam product to Respondents’ website where they offer their own competing “Tiger Foam” product for sale. This constitutes bad faith use of the Domain Names and evidences bad faith registration. The fact that the Internet user reaching Respondents’ website might be able to determine that it is not a site actually affiliated with Complainants is of no consequence. By that point, the damage has been done, and Respondents’ bad faith use has succeeded in its objective of diverting potential customers for polyurethane insulation foam from Complainants’ website to their own by misleading the customer.

The Panel does not however consider the record to show that Respondents registered the Domain Names in order to prevent Complainants from reflecting the DOW and the FROTH-PAK trademarks in a corresponding domain name based on the fact that a Respondent, Domain Discreet, engaged in a pattern of such conduct, in violation of paragraph 4(b)(ii) of the Policy. There is no showing of a pattern of conduct with respect to Respondent Commercial Thermal Solutions, and the Panel is reluctant to draw the conclusion that there is a pattern of conduct concerning Respondent Domain Discreet, given the nature of that Respondent.

The Panel also does not find sufficient evidence to conclude that Respondents registered the Domain Names primarily for the purpose of disrupting the business of a competitor in violation of paragraph 4(b)(iii) of the Policy. While Respondents have clearly used the Domain Names and Complainants’ marks to attract Internet users to Respondents’ website, where they offer for sale a spray foam insulation product competing with Complainants’ Froth-Pak product, there is no evidence of the extent to which this actually results in sales of Respondents’ Tiger Foam over Complainants’ FROTH-PAK and thereby disrupts Complainants’ business and whether disruption of Complainants’ business was in fact Respondents’ primary purpose in registering the Domain Names, as opposed to attracting business for itself.

The Panel finds bad faith registration and use of the Domain Names and concludes that Complainants have established the third element of their case.

 

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 names, <dowfrothpak.com> and <frothpakfoam.com>, be transferred to Complainant The Dow Chemical Company.

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John R. Keys, Jr.
Sole Panelist

Dated: August 19, 2008