Kryton Marketing Division, Inc. v. Patton
General Contracting
Claim Number: FA0208000123868
PARTIES
Complainant
is Kryton Marketing Division, Inc.,
Knoxville, TN (“Complainant”) represented by William Y. Klett, III, of Nexsen
Pruet Jacobs & Pollard, LLC.
Respondent is Patton General
Contracting, Summerville, SC (“Respondent”) represented by Alice F. Paylor.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <liquidsiding.com>,
registered with Domain Registration
Services.
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.
Daniel
B. Banks, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 23, 2002; the Forum received a hard copy of the
Complaint on August 26, 2002.
On
September 10, 2002, Domain Registration Services confirmed by e-mail to the
Forum that the domain name <liquidsiding.com>
is registered with Domain Registration Services and that the Respondent is the
current registrant of the name. Domain
Registration Services has verified that Respondent is bound by the Domain
Registration Services 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
September 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 2,
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@liquidsiding.com by e-mail.
A
timely Response was received and determined to be complete on October 1, 2002.
On October 11, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Daniel B. Banks,
Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
Complainant
holds an exclusive license for use of the federally registered trademark,
LIQUID SIDING (U.S. Reg. No. 1,217,180).
This trademark was registered with the U.S. Patent and Trademark Office
on November 23, 1982. This license was
obtained from the owner, Kryton Holdings, Inc., a Canadian corporation. Complainant has used the mark LIQUID SIDING
continuously in interstate commerce for 3 years prior to Respondent’s
registration of the <liquidsiding.com> domain name. Complainant markets coatings under the brand
names LIQUID VINYL and LIQUID SIDING in the United States. The term LIQUID
SIDING is a presumptively distinctive mark as evidenced by its trademark
registration and thus is entitled to a broad scope of protection.
Respondent
is the owner of a website found at <liquidsiding.com> on which it
advertises its coatings, and which infringes on Complainant's LIQUID SIDING
mark. Respondent provides the coatings
for sale to retailers and directly to the public. They compete directly with Complainant's coatings.
Respondent's
use of Complainant's trademark in connection with its website would cause a
likelihood of confusion in consumers attempting to find Complainant and its
products and services. Since
Complainant's trademark is registered, and has been since 1982, Respondent is
charged with constructive notice of the registration. Respondent selected its domain name with knowledge of the
existence of Complainant and the goods and services it provides. This conduct constitutes bad faith on the
part of Respondent.
B. Respondent:
Respondent contends that the domain name
is not identical or confusingly similar to a
trademark
or service in which the complainant has rights. ICANN 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i). In particular, Complainant's registered marks
violate the Lanham Act which requires that no mark which is merely descriptive
or generic be registered. The validity
of Complainant's rights in the mark is already the subject of a pending federal
lawsuit in South Carolina.
Before
any notice of the dispute, Respondent used, or demonstrably prepared to use the
disputed domain name in connection with a bona fide offering of goods or
services. Respondent purchased its
product from a third-party business known as American Vinyl Coatings, Inc.,
which has marketed this product since the mid-1980's. Respondent has used the terms Liquid Siding and Liquid Vinyl
Siding as part of the legitimate marketing of its product. Respondent has been commonly known by the
domain name and has used the phrase "liquid siding" in it's marketing
since the 1990's.
Complainant
has failed to offer proof that the disputed domain name was registered and is
being used in bad faith under any of the circumstances outlined in ICANN Rule
3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
FINDINGS
1 - The disputed domain name is identical
to Complainant's registered trademark.
2 - Respondent has rights or legitimate
interests in respect of the domain name.
3 - Respondent did not register the
disputed domain name in bad faith.
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.
Identical and/or Confusingly Similar
The disputed domain name <liquidsiding.com>
is identical to Complainant's registered trademark LIQUID SIDING in which
Complainant has rights.
Rights or Legitimate Interests
Respondent has demonstrated rights and
legitimate interests in respect of the domain name. Respondent has been commonly known by the domain name and has
been using the name "liquid siding" in marketing its goods and
services since purchasing it from American Vinyl Sidings in the 1990's.
Registration and Use in Bad Faith
Complainant has offered no evidence to
support a finding that the disputed domain name was registered or is being used
in bad faith. There is only the bare
allegation that, because of the trademark registration of the name LIQUID
SIDING, Respondent had knowledge of Complainant's rights in the mark. That is not sufficient to establish bad
faith under the Policy. It has been
held that a party is entitled to capture generic trademark names that become
available in the marketplace. See
Canned Foods, Inc. v. Ultimate Search Inc., FA 96320 (Nat. Arb. Forum Feb.
13, 2001); First Am. Funds v. Ult. Search, D2000-1840 (WIPO Apr. 20,
2001).
DECISION
Complainant's
request that the domain name <liquidsiding.com> be transferred to
Complainant is DENIED. This case
is DISMISSED.
Daniel B. Banks, Jr., Panelist
Dated: October 21, 2002
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