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Permatex, Inc. v. Mounir Mati / Glob2.com and Mohammed Khalid [2005] GENDND 1937 (16 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Permatex, Inc. v. Mounir Mati / Glob2.com and Mohammed Khalid

Case No. D2005-0954

1. The Parties

The Complainant is Permatex, Inc., of Hartford, Connecticut, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.

The Respondents are Mounir Mati of Amman, Jordan and Glob2.com / Mohammed Khalid of Dubai, United Arab Emirates.

2. The Domain Names and Registrars

The disputed domain names <permatex-me.com> and <permetex-me.com> are registered with Go Daddy Software and eNom, respectively (herein “the domain names in dispute”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2005. On September 7, 2005, the Center transmitted by email to Go Daddy Software and eNom requests for registrar verification in connection with the domain names at issue. On the same date, Go Daddy Software transmitted its verification response confirming that the Respondent Mounir Mati is listed as the registrant of the domain name <permatex-me.com> and providing the contact details for the administrative, billing, and technical contact, while eNom transmitted it verification response on September 8, 2005, confirming that the Respondent Glob2.com / Mohammed Khalid is listed as the registrant of the domain name <permetex-me.com> and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 21, 2005. 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 the Respondents of the Complaint, and the proceedings commenced on September 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2005. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2005.

The Center appointed Mr. J. Nelson Landry as the sole panelist in this matter on November 7, 2005. 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 been using the trademark PERMATEX in association with its automotive repair and maintenance products since 1915, through a predecessor-in-interest and is the owner of hundreds of registrations for the trademark PERMATEX (hereinafter the “Trademark” or “PERMATEX Trademark”) in the world including United States, European Community (CTM), Japan, China, Pakistan, Turkey, Greece, and Iran.

The Complainant has, in 2004, sold throughout the world, in excess of US$ 111 million in products bearing the PERMATEX Trademark and has for many years sold its products throughout North, Central and South America, Asia, Africa, Europe, and the Middle East - in particular, it currently sells its products bearing the PERMATEX Trademark in the United Arab Emirates (over US$ 290,000 in the U.A.E. alone in 2001) and Jordan.

The Complainant is the owner of the domain name <permatex.com> and a verification made on September 1, 2005, indicates that PERMATEX’s website receives thousands of hits each day.

According to the evidence, Annex I, verified on August 28, 2005, the domain name <permetex-me.com> was registered by Respondent Mounir Mati on May 4, 2005, and the domain name <permatex-me.com> was registered by Respondent Mounir Mati on June 28, 2005. Upon verification by the Center with the respective registrars after reception of the Complaint, the registrant for the domain name <permetex-me.com> was then Glob2.com / Mohammed Khalid.

The Complainant has not licensed or otherwise authorized the Respondent to use its Trademark in registering these two domain names.

The domain name <permatex-me.com> leads to a website which shows a notice “Website coming soon!” and features trademarks owned by Complainant. The website at <permatex-me.com> is titled “Permatex Middle East” and provides a link to a travel website at “www.safarat.com”, offered by Al Safarat Group with whom the Complainant is not affiliated or has not endorsed.

The domain name <permetex-me.com> features a website advertising Respondent’s own web hosting services. Nowhere on the site does the name or Trademark PERMATEX or Permetex appear. Rather, Respondent Mounir Mati is simply using the domain name <permetex-me.com>.

Respondent’s website shows the “Permatex Brand Selector” from Complainant’s own website, and features other registered trademarks of Complainant.

The Complainant has received email correspondence from Respondent Mati from freelancer.uae@[email address] confirming his receipt of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that Mohammed Khalid as listed in the eNom WHOIS information for <permetex-me.com> is a pseudonym or “front” for Mounir Mati, and that the domain name <permetex-me.com> is in reality owned and controlled by Mounir Mati. The Complainant notes that at the time the Complaint was filed, the registrant for <permetex-me.com> was listed as Freelancer-uae, Mounir Mati, with an address in Dubai, United Arab Emirates.

The Complainant also represents that both Mati and Khalid receive correspondence at post office boxes in Dubai, United Arab Emirates. Furthermore Complainant has received email correspondence from Respondent Mati after the Complaint was filed, in which Respondent Mati did not deny ownership of the domain name <permetex-me.com> and that, according to the WHOIS information, both websites are hosted on the same server and that each website at <permatex-me.com> and <permetex-me.com> currently proclaims that the domain name is for sale and make an offer to Mounir Mati.

The Complainant submits that Respondent Mati changed the registrant information for <permetex-me.com> upon receiving the electronic copy of the Complaint and before Registrar eNom locked the domain name.

The Complainant contends to be a well-known developer and distributor of automotive repair and maintenance products and has been using the Trademark PERMATEX in connection with such products and services since at least as early as 1915, through a predecessor-in-interest.

The Complainant alleges that the Trademark PERMATEX is not a descriptive word and has no meaning in English or any other language, thus being a distinctive Trademark, entitled to significant protection because it is extremely well-known both in the United States and throughout the world including in the United Arab Emirates, Jordan and Saudi Arabia where the Respondents appear to be located or doing business.

According to the Complainant the domain names in dispute consists of the Trademark PERMATEX followed by a hyphen and the letters “me” which the letters “me” referring to “Middle East”. Consequently the distinctive part “permatex” of this domain name is identical to the Complainant’s Trademark and the Complainant relies on Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, in which the domain name <porsche-me.com> was considered confusingly similar.

In respect of the domain name <permetex-me.com>, the Complainant represents that it consists of a misspelling of the Complainant’s PERMATEX Trademark, followed by a hyphen and the letters “me” and that the substitution of an “e” for the “a” in Complainant’s Trademark constitutes a minor difference phonetically and visually, and does not obviate a finding of confusing similarity. In this case, the Complainant relies on earlier UDRP decisions which have found in similar situations that the domain name was confusingly similar and refers to Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970; Accor v. Brigit Klostermann, WIPO Case No. 2005-0627; PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865 and Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709.

The Complainant contends that the Respondents have no rights or legitimate interests in the domain names in dispute in that the Complainant has not licensed or otherwise authorized the Respondents to use its Trademark and further, that the Respondents are not commonly known by Permatex or Permetex, and have acquired no trademark or service mark rights in the name.

In addition, according to the Complainant, the Respondents are not making a legitimate noncommercial or fair use of the domain names nor are they using the domain names in dispute in connection with any bona fide offering of goods or services as shown by the fact that the domain name <permatex-me.com> points to a site that says “Website coming soon!” and features trademarks owned by Complainant. The site then provides a link to a travel website at “www.safarat.com”, offered by Al Safarat Group. The Respondents are using the domain name <permatex-me.com> to unfairly trade on Complainant’s name and Trademark, by diverting users to another website and thereby consumers will believe that the Complainant is affiliated with or has endorsed the Al Safarat Group, which it is not and has not.

Similarly according to the Complainant, the Respondents are not making a legitimate noncommercial or fair use of the domain name <permetex-me.com> because the Respondents are using this domain name to feature a website advertising their own web hosting services and thus are unfairly trading on Complainant’s name and Trademark.

The Complainant submits that the Respondents registered and are using the domain names in dispute in bad faith, with knowledge of Complainant’s ownership of the Trademark Permatex in that the website at <permatex-me.com> is titled “Permatex Middle East” and features the Complainant’s PERMATEX & Design Trademark prominently at the top of the page and also features other trademarks of Complainant, including THE RIGHT STUFF, NO TOUCH, FAST ORANGE. Thereby the Respondents are using the domain name <permatex-me.com> to imply Complainant’s sponsorship, affiliation or endorsement, and unfairly trades on the goodwill of Complainant’s name and Trademark to confuse Internet users and divert Internet traffic.

According to the Complainant, the Respondents also registered and are using the domain name <permetex-me.com> in bad faith being aware of Complainant’s trademark rights in the Trademark PERMATEX, and are using the domain name, which includes a misspelling of the Trademark as Permetex, to redirect Internet traffic to a website promoting his own web hosting services. Respondents thus use this domain name as an unfair method to divert consumers looking for Complainant’s products to Respondents’ site promoting their web services and consumers encountering such site will be confused into believing that Respondents are affiliated with or endorsed by Complainant.

B. Respondent

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

6. Discussion and Findings

Prior to engaging into the discussion, the Panel considers it appropriate to comment on the evidence relating to the identity of the Respondents in this case.

There is apparently divergence of views as to the identity of the Respondent in this file. When the Center received the Complaint and, on September 7, 2005, verified the identity of the person who has registered the two different domain names in dispute with the two different registrars, it was informed by Go Daddy Software that the current registrant of the domain name <permatex-me.com> is Mounir Mati of Amman, Jordan and was on the next day informed by registrar eNom.com that the current registrant of the domain name <permetex-me.com> is Glob2.com / Mohammed Khalid of Dubai. However when the Complainant performed, on August 22, 2005, its research on WHOIS database for both domain names <permatex-me.com> with Go Daddy and <permetex-me.com> with eNom, the registrant, for both of these domain names, was disclosed as Mounir Mati.

Pursuant to a notice of deficiency issued by the Center, an Amended Complaint was filed and notified to the parties disclosing also Mohammed Khalid as Respondent. The Panel finds that the Complainant has engaged in all reasonable efforts to identify prior to filing and notifying the Complaint as well as thereafter pursuant to the Notice of Deficiency to identify the person who has registered and the persons who are the current registrants of both domain names. The Panel furthermore finds that the representations advanced by the Complainant to the effect that Mohammed Khalid is either a front or a pseudonym for Mounir Mati is plausible. However, the Panel has chosen to refer to both current registrants as the “Respondents”, when appropriate.

A. Identical or Confusingly Similar

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(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, and

(ii) The respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel has considered the evidence provided by the Complainant, the longstanding use of the Trademark PERMATEX and its registration in numerous countries as well as the use of domain names incorporating the distinctive element PERMATEX and has no difficulty in finding that the Complainant has rights in the Trademark along with significant goodwill associated thereto.

The Panel finds that the two domain names in dispute are confusingly similar to the Complainant’s Trademark. The domain name <permatex-me.com> includes the distinctive term “permatex” of the Trademark with the simple addition of the letters “me” which has properly been submitted by the Complainant to stand for Middle East. The domain name <permetex-me.com> is also confusingly similar in that the sole difference with the Trademark and the other domain name is the deliberate change of the letter “a” for “e” in the distinctive element. The Complainant relies on and cites UDRP decisions in which the panel held that such minor distinctions did not prevent them from stating that domain names were confusingly similar to the trademark. The Panel agrees with such position.

The first criterion has been met.

B. Rights or Legitimate Interests

Respondents have not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the original and Amended Complaint as true. The Complainant has made a prima facie case that the Respondents lack right or legitimate interest in the domain names in dispute by stating that the Respondents have never made any legitimate noncommercial or fair use of the domain names in dispute.

According to the evidence, the Complainant has never given a license nor in any way authorized either Respondents to make use of Complainant’s Trademark. There is no evidence that any of the Respondents has ever engaged in any legitimate business under the Complainant’s Trademark.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain names in dispute were registered and used in bad faith.

The Panel has already found that the PERMATEX Trademark of Complainant which is made of an inventive word is distinctive and has significant goodwill associated therewith. Considering the wide-spread use and international registrations of the Trademark on the one hand and the use of the distinctive term “PERMATEX” or a deliberate modification in one letter associated with “me” for Middle East on the other hand, this Panel is convinced that at the time of registration of the two domain names in dispute, Respondent Mounir Mati had knowledge of this well-known Trademark and had the intention to capitalize on it, and benefit from sponsorship, affiliation or endorsement of his websites.

Considering further that the domain names in dispute are confusingly similar with Complainant’s Trademark and that the Complainant has not authorized or licensed Respondent Mounir Mati to register those domain names in dispute, the Panel finds that the said domain names have been registered in bad faith.

According to the evidence, the domain name <permatex-me.com> points to a site that says “Website coming soon” and features other trademarks owned by the Complainant thereby generating confusion and causing Internet users to believe they have reached a legitimate website offered by or sponsored by the Complainant. Yet the website provides a link to a website of Al Safarat Group which is not associated with the Complainant. This is unfairly trading on Complainant’s Trademark and such activities in Panel’s view constitute use of this domain name in dispute in bad faith. As to the other domain name in dispute, <permetex-me.com> it is being used to feature a website advertising Respondents’ owns hosting services. This, again, also amounts to unfair trading on Complainant’s Trademark and in the Panel’s view, it is use of this domain name in bad faith.

Although the Complainant did not cite any UDRP decision in support of its bad faith contention, the Panel is aware of such decisions where it had been held that intention by the Respondent to divert Internet users to its website constitutes use in bad faith. See International Business Publishers, Inc. v. The Center for Business Intelligence, LLC, WIPO Case No. D2001-0181. In Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, the panel applied the accepted test of the knowledge of the trademark at the time of registration followed by use in commerce without a legitimate interest and likely to create confusion, thus allowing respondent to free ride on the Complainant’s goodwill. The present Panel has followed and applied these two decisions when he rendered a decision in Lifetime Products, Inc v. IQ Management Corporation, WIPO Case No. D2004-0719.

The Panel has thus found that both domain names in dispute have been registered in bad faith and are used in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain names <permatex-me.com> and <permetex-me.com> are confusingly similar to the Complainant’s Trademark;

(b) the Respondents have no rights or legitimate interest in the domain names in dispute;

(c) the domain names in dispute have been registered and are being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <permatex-me.com> and <permetex-me.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Date: November 16, 2005