The Valspar Corporation v. Ho Nim
Claim Number: FA1004001319987
Complainant is The Valspar Corporation (“Complainant”), represented by Andrew
Ubel, of The Valspar Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <valsparcorporate.com>, registered with Above.com Pty Ltd.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2010.
On April 21, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <valsparcorporate.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 April 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@valsparcorporate.com. Also on April 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <valsparcorporate.com> domain name is confusingly similar to Complainant’s VALSPAR mark.
2. Respondent does not have any rights or legitimate interests in the <valsparcorporate.com> domain name.
3. Respondent registered and used the <valsparcorporate.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Valspar
Corporation, holds a trademark registration for its VALSPAR mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 97,293 issued
January 19, 1914) and with
Respondent, Ho Nim, registered the <valsparcorporate.com> domain name on November 5, 2009. The disputed domain name resolves to a website with links to third-party websites that compete with Complainant. The disputed domain name is listed on a third-party website as available for sale.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar 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 and is being used in bad faith.
Complainant asserts its trademark rights in the VALSPAR mark
through its registrations with the USPTO (Reg. No. 97,293 issued January 19,
1914) and the SIPO (Reg. No. 1,132,020 issued December 7, 1997). The Panel
finds that Complainant’s registrations of its mark with the USPTO and the CSIPO
are sufficient to establish Complainant’s rights in the VALSPAR mark pursuant to
Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <valsparcorporate.com> domain name is confusingly similar to Complainant’s mark. Complainant contends that Respondent’s disputed domain name merely adds a generic term (“corporate”) and a generic top-level domain (“gTLD”) (“.com”). The Panel finds that these alterations do not sufficiently distinguish the disputed domain name from Complainant’s mark, rendering the <valsparcorporate.com> domain name confusingly similar to Complainant’s VALSPAR mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The elements of Policy ¶ 4(a)(i) have been satisfied by Complainant; the Panel finds Respondent’s disputed domain name is confusingly similar to Complaint’s mark.
The Panel finds a prima facie case has been established by Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). With a prima facie case established, the burden shifts to Respondent to prove the allegations wrong. Respondent has failed to respond to these proceedings, thereby declining to provide any evidence to the Panel of Respondent’s rights or legitimate interests in the disputed domain name. However, the Panel may choose, in its discretion, to review the case under Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The WHOIS information for the <valsparcorporate.com> domain name lists the registrant as “Ho Nim.” Complainant argues that this does not suggest that Respondent is commonly known by the disputed domain name. The Complainant asserts that it has not provided license or authorization for Respondent to use the VALSPAR mark. The Panel finds Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent’s disputed domain name resolves to a website with links to third-party websites that compete with Complainant. The Panel finds that offering links to third-party websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and further finds that diverting business from Complainant in such a manner is not making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The elements of Policy ¶ 4(a)(ii) have been satisfied by Complainant; the Panel finds Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent has the disputed domain
name listed for sale on a third-party website. The Panel presumes that
Respondent was attempting to sell the <valsparcorporate.com>
domain name for more than Respondent’s out-of-pocket costs. The
Panel finds this evidence, in connection with its previous determination that
Respondent’s disputed domain name is confusingly similar to Complainant’s mark,
constitutes bad faith registration and use pursuant to Policy. See
CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing
inherently wrongful in the offer or sale of domain names, without more, such as
to justify a finding of bad faith under the Policy. However,
the fact that domain name registrants may legitimately and in good faith sell
domain names does not imply a right in such registrants to sell domain names
that are identical or confusingly similar to trademarks or service marks of
others without their consent”); see also Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain
names for sale).
The Panel has previously determined that Respondent’s
disputed domain name is confusingly similar to Complainant’s mark. Complainant argues
that Respondent’s disputed domain name resolves to a website with links to
third-party websites that compete with Complainant, creating a disruption of
Complainant’s business. The Panel finds Respondent’s use is evidence of bad
faith registration and use under Policy ¶ 4(b)(iii). See David
Hall Rare Coins v.
Complainant contends that Internet users will be confused as to the sponsorship or affiliation between Complainant and Respondent’s disputed domain name. Complainant alleges that Respondent likely profits from this confusion by gaining click-through fees when Internet users select links on the website resolving from the disputed domain name. The Panel infers that Respondent uses the confusingly similar disputed domain name for commercial gain, and finds this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The elements of Policy ¶ 4(a)(iii) have been satisfied by Complainant; the Panel finds Respondent’s disputed domain name was registered and used in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <valsparcorporate.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 3, 2010
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