Valspar Sourcing, Inc. v. TIGRE
Claim Number: FA0204000112596
PARTIES
The
Complainant is Valspar Sourcing, Inc.,
Minneapolis, MN (“Complainant”) represented by Cindy Smith. The Respondent
is TIGRE, Yuma, AZ (“Respondent”) Pete Erlenbach.
The
domain name at issue is <paint.biz>,
registered with BB Online UK Limited.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no conflict in serving as Panelist in this
proceeding.
Judge
Karl V. Fink (Ret.) is Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”), as it
timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 30, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 21,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 1, 2002.
An
Additional Submission was received from Complainant on May 6, 2002. An Additional Submission was received from
Respondent on May 8, 2002.
All
submissions were considered by the Panel.
On May 22, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Karl V. Fink (Ret.)
as the single Panelist.
The
Complainant requests that the domain name be transferred from Respondent to
Complainant.
A.
Complainant
Complainant
is the wholly owned subsidiary of a multinational coatings company, the Valspar
Corporation (“Valspar”). Valspar has
been in existence and has been serving the coatings industry for almost 200
years. Complainant or its affiliated
companies have developed various trademarks and trade names for use in
connection with their many thousands of products. These trademarks and trade names are owned and managed by
Complainant and are licensed to the various affiliated companies throughout the
world.
Complainant
owns and has developed rights in the trademark “PAINT.BIZ” in various countries
around the world.
Complainant
is the registered owner of the trademark “PAINT.BIZ” in France.
Complainant
has developed and owns various trade names and slogans for use in the Untied
States of America by its parent, Valspar.
One of these marks is “PAINT.BIZ”.
Valspar has used and continues to use the name “PAINT.BIZ” on its
merchandise. Complainant and its parent
Valspar have developed certain common law rights in the term PAINT.BIZ. Complainant also owns a pending U.S.
trademark application for the mark PAINT.BIZ.
Complainant
is also the owner of additional registrations and applications that contain the
word “PAINT.”
106,293
cartons of Complainant’s product, containing 4 gallons each, were sold in 2001
displaying Complainant’s PAINT.BIZ mark.
To date for 2002, the Complainant has sold 63,180 cartons of its
product, containing 4 gallons each, displaying the mark PAINT.BIZ.
Subsequent
to Complainant’s development and/or filing of its trademarks for PAINT.BIZ,
Respondent sought to register a domain name that is identical to Complainant’s
PAINT.BIZ trademarks.
This
domain name is identical to the French trademark Registration and U.S. application
for PAINT.BIZ and the common law rights owned by Complainant, its parent,
subsidiaries or predecessors.
By
registering the domain name <PAINT.BIZ>, Respondent is attempting
to appropriate, in its entirety, Complainant’s rights in the PAINT.BIZ mark
with a clear intent to trade off the reputation of Complainant and the
PAINT.BIZ mark.
The
Respondent is not the owner of any trade or service mark that is identical to
the domain name and has no rights or legitimate interest in this domain name.
Respondent
has no basis to argue that its use of the <PAINT.BIZ> domain name
could qualify as a legitimate interest or use under the Policy.
Respondent
is clearly not making a legitimate noncommercial use of the domain name, nor
has Respondent commonly been known as PAINT.BIZ.
Respondent
has registered the domain name primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the Complainant or to
a competitor of the Complainant.
The
.BIZ Whois database indicated that Respondent is a company by the name of
“TIGRE” located at 8036 Olive Lane in Yuma, Arizona. Complainant was unable to locate or confirm the existence of any
such company in Arizona.
The
word paint is a generic term that refers to an entire class of products. Within the purview of trademark law, this
term lacks the distinctiveness necessary for a name or a mark to be given
Federal Trademark Law protection.
Respondent
is a small business owner and operator in the City of Yuma, Arizona, Business
License No. 11402, licensed to conduct a Home Occupation Business at 8036 E.
Olive Ann Lane.
Respondent’s
business is engaged in the limited manufacture, production, and sale, of fine
craftsmanship quality wood products such as chairs, benches, stools, cabinets,
tables, and picture frames.
Respondent’s
drying process produces a unique, one-of-a-kind, coating on the finished wood
products created by Respondent.
Respondent
has a bonafide intention to use <paint.biz> to commence www
commerce to increase sale of Respondents’ unique products. Complainant’s applications for Federal
Trademark Protection of paint.biz and paint.info do not predate the ICANN
announcements of *BIZ and *INFO names.
Complainant’s Federal Trademark Protection applications are an
afterthought, intended to increase its market dominance and disrupt or
eliminate market competition.
Respondent is not engaged in the act of competition with Complainant or
Complainant’s competitors and has no intention of doing so.
Prior
to receipt of said Complaint from Complainant on April 26, 2002, Respondent
possessed no prior knowledge of the existence of Complaint or Complainant’s
Business.
Respondent
has not registered the domain name in order to prevent the Complainant from
reflecting the mark in a corresponding domain name.
Respondent
has not registered the domain name primarily for the purpose of disrupting the
business of a competitor.
Respondent
has no purpose or intent to create a likelihood of confusion with the
Complainant’s mark.
C.
Additional Submissions
The
term “paint” is not at issue in this dispute.
Rather, the Complainant owns and has developed rights in the trademark
“PAINT.BIZ” in various countries around the world.
Respondent
ignores the fact that Complainant has established and owns rights to the
trademark PAINT.BIZ in the U.S. and other countries.
Respondent’s
proposed use of the domain name PAINT.BIZ will infringe Complainant’s exclusive
trademark rights protected under the laws of the United States, as well as the
laws of France.
Respondent’s
proposed use of PAINT.BIZ to sell wood products in connection with a “unique,
one-of-a-kind coating” on the finished wood products created by Respondent
further illustrates that Respondent’s proposed use of <PAINT.BIZ>
will be a token use and not for any legitimate business purpose. Respondent has failed to provide any
evidence of any sales.
If
in the future, Respondent’s business does, as it asserts, offer waterborne
coatings via the <PAINT.BIZ>, domain name that would likely cause
worldwide confusion in the marketplace.
It is well known that Complainant offers thousands of waterborne
coatings products for sale. Some of
those products have been marketed using the PAINT.BIZ mark and Complainant’s
customers have become accustomed to associating the mark PAINT.BIZ with the
Complainant.
Respondent’s
business license was obtained in August 2001.
This was after Complainant’s IP Claim to the name PAINT.BIZ was
submitted (on or about June 26, 2001) and after Complainant’s U.S. Trademark
Application was filed (May 23, 2001).
U.S.
trademark law provides that registration of a mark shall be constructive notice
of the registrant’s claim of ownership.
ICANN
announced the new domain suffix *.biz on May 15, 2001. Complainant’s French trademark registration
is dated May 23, 2001. Complainant’s
U.S. trademark application is September 27, 2001. Complainant sought to establish a vested right in paint.biz only
upon learning of ICANN’s plan to establish *.biz domain names.
Complainant
presents no information supporting a case for a vested right in paint.biz prior
to ICANN’s*.biz announcement on May 15, 2001.
Adding
a generic term, such as paint, to a *.biz should not create exclusive rights to
use the generic term simply because it is attached to a *.biz.
For the reasons set forth below, the
Panel finds Complainant has proven the required elements to have the name
transferred.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant has
demonstrated that it has used the mark in commerce, has the mark registered in
France and has applied to have the mark registered in the United States. All this took place before the domain name
was registered and this dispute was filed.
Complainant has
proven the required element that it has rights in the mark in question.
The Panel finds
that Respondent cannot use the domain name for a bona fide offering of goods or
services because any use by Respondent would be trading off of Complainant’s
goodwill created by Complainant’s extensive use of PAINT.BIZ as a trade name
and slogan representing its paint products.
See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat.
Arb. Forum March 21, 2002) (finding
the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated the Respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence Respondent or any business
affiliated with Respondent is commonly known as PAINT.BIZ or <paint.biz>. The Panel finds that Respondent has no
rights or legitimate interests in the disputed domain name pursuant to STOP
Policy ¶ 4(c)(iii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Respondent
has presented no evidence of its use of the <paint.biz> domain
name. See Twentieth Century Fox Film
Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the
respondent’s assertion that she registered the domain name
<foxstudios.biz> in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that she
had rights or interests in respect to the domain name at issue).
Complainant
has proven this element. Respondent has
no rights or legitimate interest in the domain name.
Respondent
was on notice of Complainant’s rights in PAINT.BIZ when it registered the
disputed domain name, because Respondent received notice of Complainant’s IP
Claim. Respondent’s registration of the
disputed domain name despite this notice when Respondent had no right or
legitimate interest in the domain name is evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (evidence of bad faith includes actual or constructive knowledge of
commonly known mark at the time of registration).
Complainant
has proven this element.
DECISION
Complainant
has proven each of the required elements.
Therefore, it is ordered that the domain name <paint.biz>, be transferred to Complainant. Further challenges under the STOP Policy shall
not be permitted.
Judge Karl V. Fink (Ret.) Panelist
Dated: June 4, 2002
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