The Valspar Corporation v. Trendware Internet Services
Claim Number: FA0204000112595
Complainant is The Valspar Corporation, Minneapolis, MN, USA (“Complainant”) represented by Cindy Smith. Respondent is Trendware Internet Services, Hamburg, GERMANY (“Respondent”).
The domain name at issue is <eps.biz>, registered with CORE.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, 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”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following allegations:
The <eps.biz> domain name is identical to Complainant’s EPS mark. Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered the disputed domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant is a multinational coatings company that has been serving the coatings industry for almost 200 years. Complainant has registered the EPS mark with the United States Patent and Trademark Office (USPTO) as Reg. No. 2,019,516. Also, Complainant owns registered trademarks for EPS in Canada (Reg. No. 482,375) and Mexico (Reg. No. 501,324). Complainant first used EPS-branded products in 1996 and continues to use the EPS mark to identify its products.
Respondent registered the <eps.biz> domain name on March 27, 2002. Complainant’s investigation reveals that Respondent has made no use of the domain name and has no intent to use it. Respondent conducts business as an Internet service provider.
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide a complaint on the basis of statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
Paragraph 4(a) of the STOP Policy requires that 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 Complainant has rights; and
(2) 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 Complainant asserts rights.
Complainant established its rights in the EPS mark through its continuous use and by its registration of the mark with the United States Patent and Trademark Office. Respondent’s <eps.biz> domain name is identical to Complainant’s EPS mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Complainant demonstrated its rights to and interests in the EPS mark in this proceeding. Respondent has not submitted a Response in this matter and the Panel may properly presume Respondent has no rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that it has no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent has not provided evidence showing that it owns or is a beneficiary of a trade or service mark identical to <eps.biz> pursuant to STOP Policy ¶ 4(c)(i), nor has Respondent provided evidence that it is commonly known by EPS or <eps.biz> pursuant to STOP Policy ¶ 4(c)(iii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
No evidence in this proceeding suggests and Respondent has not come forward to produce evidence, that Respondent intends to use <eps.biz> in connection with a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights or legitimate interests in the disputed domain name Respondent must establish with valid evidence “a course of business under the name, or at least significant preparation for use of the name prior to learning of the possibility of a conflict” with an IP Claimant); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <eps.biz> domain name in bad faith because Respondent was aware of Complainant’s rights in EPS by virtue of the Principal Register registration status of the mark with the USPTO as well as the unique nature of STOP registration procedure and notification. Respondent registered the disputed domain name despite constructive notice of Complainant’s rights in the EPS mark and this constitutes bad faith infringement upon said mark. See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse")..
Given Respondent’s constructive knowledge of Complainant’s rights in the EPS mark, it can be inferred that Respondent registered the domain name for the purpose of attracting users to the a website explicitly trading on Complainant’s goodwill. Therefore, Respondent’s actions demonstrate bad faith registration pursuant to STOP Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the STOP Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <eps.biz> domain name be transferred from Respondent to Complainant, and that subsequent challenges under the STOP Policy against this domain name shall not be permitted.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 2, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page