The Valspar Corporation v. liu guoyong
Claim Number: FA1006001332949
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 <valsparqi.com>, registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010 in both the Chinese and English languages.
On July 1, 2010, XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <valsparqi.com> domain name is registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. and that Respondent is the current registrant of the name. XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. has verified that Respondent is bound by the XIAMEN CHINASOURCE INTERNET SERVICE CO., 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 July 7, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 27, 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@valsparqi.com by e-mail. Also on July 7, 2010, the Chinese language 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 July 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 "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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <valsparqi.com> domain name is confusingly similar to Complainant’s VALSPAR mark.
2. Respondent does not have any rights or legitimate interests in the <valsparqi.com> domain name.
3. Respondent registered and used the <valsparqi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Valspar, Inc., is the owner of the VALSPAR mark that relates to its painting and coating product and service offerings. Complainant owns numerous trademark registrations with many governmental trademark authorities worldwide for its VALSPAR mark, including with the State Intellectual Property Office of China (“SIPO”) (Reg. No. 1410122 issued June 21, 2000) and the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 97,293 issued May 26, 1914).
Respondent, liu guoyong, registered the <valsparqi.com> domain name on June 7, 2010. Respondent’s disputed domain name resolves to a website that offers counterfeit and unauthorized paint products of Complainant 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.
The Panel finds that Complainant has provided sufficient evidence of its rights in the VALSPAR mark under Policy ¶ 4(a)(i) through its multiple trademark registrations around the world including with the SIPO (Reg. No. 1410122 issued June 21, 2000) and USPTO (e.g., Reg. No. 97,293 issued May 26, 1914). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that the <valsparqi.com> domain name contains its VALSPAR mark entirely while adding the descriptive term “qi” and the generic top-level domain (“gTLD”) “.com.” Complainant alleges that the term “qi” in Chinese means paint, thereby making the addition of the term “qi” descriptive in nature. Complainant contends that the disputed domain name is confusingly similar to Complainant’s VALSPAR mark under Policy ¶ 4(a)(i). The Panel agrees and finds that Respondent’s <valsparqi.com> domain name is confusingly similar to Complainant’s VALSPAR mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to 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 Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights and legitimate interests in the <valsparqi.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of such contentions. Once Complainant has met its burden the burden of proof shifts to Respondent to establish rights or legitimate interests in the domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has met its burden in the instant case. Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights and legitimate interests in the domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will continue to evaluate the evidence on record to determine whether Respondent holds rights and legitimate interests in the <valsparqi.com> domain name under Policy ¶ 4(c).
Complainant contends that Respondent has not been authorized
to use its mark within a domain name and that Respondent is not commonly known
by the <valsparqi.com>
domain name. In support of Complainant’s
contentions it submits that the WHOIS information for the disputed domain name
identifies “liu guoyong” as the registrant. The Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because the
WHOIS information gives no indication of such and Respondent failed to produce
any evidence indicating that it is commonly known by anything other than “liu
guoyong.” See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant alleges
that Respondent is using the <valsparqi.com>
domain name, which translates from Chinese to English as “Valspar Paint” to
sell counterfeit or unauthorized paint products of Complainant. Complainant argues that such commercial and
trademark infringing use of the domain name is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use. The Panel
finds that Respondent’s use of the disputed domain name to sell unauthorized or
counterfeit products under Complainant’s VALSPAR mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones
HP Milenium
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent is using the <valsparqi.com> domain name to resolve to Respondent’s website that looks like Complainant’s official <valspar.com> website and sells counterfeit or unauthorized versions of Complainant’s painting products. Previous panels have determined that a respondent’s use of confusingly similar domain name to offer complainant’s products for sale without authorization is evidence that respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii), and so this Panel finds. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Further, Complainant contends that Respondent’s use of the disputed domain name is an attempt to attract Internet users who are searching for Complainant’s products to Respondent’s website that sells counterfeit painting products while purporting them to be from Complainant. Complainant argues that such use is further evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where Respondent is using the confusingly similar domain name to offer unauthorized or counterfeit products of Complainant for sale to the general public. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <valsparqi.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 5, 2010
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