EI du Pont de Nemours and Company v. Eric Stone dba BioExchange.com
Claim Number: FA0110000100649
The Complainant is E.I. du Pont de Nemours and Company, Wilmington, DE (“Complainant”) represented by Leon J. Bechet, of E.I. du Pont de Nemours and Company. The Respondent is Eric Stone BioExchange.com, San Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zodiacstone.com>, <coriandealer.com>, and <zodiaqdealer.com>, registered with Register.com.
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.
Panelist is Judge Karl V. Fink (Retired).
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 17, 2001; the Forum received a hard copy of the Complaint on October 24, 2001.
On October 17, 2001, Register.com confirmed by e-mail to the Forum that the domain names <zodiacstone.com>, <coriandealer.com>, and <zodiaqdealer.com> are registered with Register.com and that the Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com 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 October 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 20, 2001 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on November 19, 2001.
On December 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The domain names are confusingly similar to Complainant’s federal trademarks.
Respondent knew that Zodiaq and Corian are well known trademarks of Complainant and used by Complainant for a number of years.
Complainant’s products are sold only by authorized distributors. Respondent has no relationship with Complainant and is not an authorized dealer or distributor of Complainant’s products.
Respondent’s use of the domain names, causes consumers to believe Respondent’s web site is authorized or sponsored by Complainant.
Respondent, by using the domain names, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship and affiliation of Respondent’s websites.
Circumstances indicate the domain names were registered primarily for the purpose of deceiving customers as to Respondent’s relationship with Complainant and diverting customers from Complainant’s internet sites.
Respondent denies all claims by Complainant.
In no part of the Complaint has Complainant provided any factual evidence demonstrating any of the eight federal criteria for trademark or trade name infringement.
With respect to the domain name <zodiacstone.com>, Respondent should be considered as having rights or legitimate interests in respect of the domain name due to the fact that the name is distinctly different from Complainant’s mark.
The name <zodiacstone.com> has as its root the word “Zodiac” which is not a mark covered by Complainant’s federal trademark, which is “Zodiaq”. The word “Zodiac” a common word, is derived from the Greek’s terminology referencing constellations in the sky – the Respondent’s last name (Eric Stone) is “Stone” – therefore, the Respondent chose the name”zodiacstone”.com.
The name “zodiacstone”.com is not confusingly similar to the Complainant’s mark, “Zodiaq”. There are hundreds of businesses in the United States with the root name “Zodiac” and hundreds of domain names contain this very common word that is older than written history.
Respondent should be considered as having rights or legitimate interests in respect of the domain name <coriandealer.com>. Respondent runs a web site that aggregates dealers of Complainant’s product, Corian, and provides access and information about dealers of these products. The name <coriandealer.com> and “Corian” are not confusingly similar, as the former implies the use of third party resources and the latter references the material Corian only.
End users who access <coriandealer.com> know that the site itself is not authorized or sponsored by Complainant. However, all of the dealers listed in <coriandealer.com>are authorized distributors of Complainant’s product Corian.
Respondent should be considered as having rights or legitimate interests in respect of the domain name <zodiaqdealer.com>. Respondent runs a web site that aggregates dealers of Complainant’s product, Zodiaq, and provides access and information about dealers of these products. The name <zodiaqdealer.com> and Zodiaq are not confusingly similar, as the former implies the use of third party resources and the latter references the material Zodiaq only.
End users who access <zodiaqdealer.com> know that the site itself is not authorized or sponsored by Complainant, however, all of the dealers listed in <zodiaqdealer.com> are authorized distributors of the Complainant’s product, Zodiaq.
Respondent began a new Internet based venture in 2001 that is focused on the surfacing industry, targeting natural and artificial surfaces for commercial and residential use. Respondent has created Internet based information directories of dealers, installers, and other services and goods-related businesses in the surfacing industries.
Needing a more specific presence in the surfacing industry, Respondent sought to create Internet sites that were focused on specific materials in the surfacing industry, aggregating authorized, legitimate dealers and other providers of goods and services by material.
By choosing the (material)dealer.com naming convention, Respondent sought to effectively communicate that the presence of the web site was a resource for finding authorized, legitimate dealers of specific surfacing materials. Only authorized, legitimate dealers of specific materials are included in these web sites.
C. Additional Submissions: None
For the reasons set forth below the Panel finds that Complainant has proven that <zodiaqdealer.com> and <coriandealer.com> should be transferred to Complainant. Complainant has not proven that <zodiacstone.com> should be transferred.
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 Panel finds that Respondent’s <zodiaqdealer.com> and <coriandealer.com> domain names are confusingly similar to Complainant’s ZODIAQ and CORIAN registered trademarks because the addition of a generic term like “dealer” does not defeat a Complainant’s claim of confusing similarity. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).
The domain names <zodiaqdealer.com> and <coriandealer.com> are confusingly similar to Complainant’s marks because Internet users are likely to believe that Respondent’s web sites are associated with Complainant. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website); see also Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”).
Complainant has failed to show the <zodiacstone.com> domain name is confusingly similar.
Complainant does not hold rights to the “zodiac” and “stone” terms as they are generic and Complainant has failed to show that it has established secondary meaning in these terms which are not registered by Complainant. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights); see also FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that Respondent did not have rights or legitimate interests in the <filmnet.com> domain name, where the disputed domain name is comprised of generic words, even though Complainant is the owner of the FILMNET mark); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).
Complainant has proven this element as to <zodiaqdealer.com> and <coriandealer.com>. Complainant has not proven this element as to <zodiacstone.com>.
Rights or Legitimate Interests
Respondent has no relationship with Complainant and is not an authorized dealer or distributor of Complainant’s products.
Respondent’s unauthorized use of the domain names <zodiaqdealer.com> and <coriandealer.com> to aggregate dealers that sell Complainant’s goods is not a bona fide offering of goods pursuant to ¶ 4(c)(i). See National Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a mark to sell complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Respondent is not commonly known by any of the domain names, and as a result does not have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in the domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent’s unauthorized use of the domain names at issue to attract Internet users for commercial gain that associate a connection between Respondent’s site and Complainant is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(ii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Complainant has proven this element as to <zodiaqdealer.com> and <coriandealer.com>. Since Complainant did not prove <zodicstone.com> was identical or confusingly similar, no decision is made as to whether Respondent has rights or legitimate interests in that name.
Respondent’s use of the domain names <zodiaqdealer.com> and <coriandelaer.com> to attract Internet consumers into thinking there is an association with Complainant indicates bad faith use pursuant to Policy ¶ 4(b)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”)
Respondent’s claim that it provides general information about Complainant’s services does not defeat a bad faith claim. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contains information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, where a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).
Complainant has proven this element as to <zodiaqdealer.com> and <coriandealer.com>. Since Complainant did not prove <zodiacstone.com> was identical or confusingly similar, no decision is made as to whether Respondent has rights or legitimate interests in that name.
The panel directs that the domain name <zodiacstone.com> be retained by Respondent and that the domain names <coriandealer.com> and <zodiaqdealer.com> be transferred to Complainant.
Judge Karl V. Fink (Retired), Panelist
December 14, 2001
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