national arbitration forum

 

DECISION

 

The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd.

Claim Number: FA1008001339342

 

PARTIES

Complainant is The Valspar Corporation (“Complainant”) represented by Andrew Ubel of The Valspar Corporation, Minnesota, USA.  Respondent is Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd. (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <valspar-paint.com>, <valsparchina.net>, and <vissbo.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD., XIN NET TECHNOLO.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically August 5, 2010.  The Complaint was submitted in both Chinese and English.

 

On August 5, 2010, HICHINA ZHICHENG TECHNOLOGY LTD., XIN NET TECHNOLO confirmed by e-mail to the National Arbitration Forum that the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names are registered with HICHINA ZHICHENG TECHNOLOGY LTD., XIN NET TECHNOLO and that Respondent is the current registrant of the names.  HICHINA ZHICHENG TECHNOLOGY LTD., XIN NET TECHNOLO verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD., XIN NET TECHNOLO registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 13, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 2, 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@valspar-paint.com, postmaster@valsparchina.net, and postmaster@vissbo.com> by e-mail.  Also on August 13, 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 September 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon> Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain names that Respondent registered, <valspar-paint.com>, <valsparchina.net>, and <vissbo.com>, are confusingly similar to Complainant’s VALSPAR mark.

 

2.      Respondent has no rights to or legitimate interests in the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names.

 

3.      Respondent registered and used the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Valspar Corporation, owns trademark registrations for the VALSPAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 97,293 issued May 26, 1914) and China’s State Intellectual Property Office (“SIPO”) (Reg. No. 1,132,020 issued December 7, 1997) in connection with paints and coating products and services. 

 

Respondent registered the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names no earlier than January 5, 2010.  All of the disputed domain names resolve to Respondent’s own website that sells counterfeit versions of Complainant’s paint products.

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences as 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 Complainant to 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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant alleged that the entities that control the disputed domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  The Panel concludes that the disputed domain names are controlled by the same entity based on the similar content of the disputed domain names, the similarity of the sites they resolve to, and the similarities in the WHOIS information.  For those reasons, the Panel proceeds to a review, analysis, and decision on the merits.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in its VALSPAR mark based on its trademark registrations with the USPTO (e.g., Reg. No. 97,293 issued May 26, 1914) and SIPO (Reg. No. 1,132,020 issued December 7, 1997).  Previous panels have determined that a federal trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).  Thus, the Panel finds that Complainant established rights in the VALSPAR mark under Policy ¶ 4(a)(i).

 

Complainant claims that the <valspar-paint.com>, <valsparchina.net> and <vissbo.com> domain names are confusingly similar to Complainant’s VALSPAR mark.  The disputed domain names include Complainant’s entire mark with the addition of a hyphen, the descriptive term “paint,” the geographic term “china,” and the generic top-level domain (“gTLD”) “.com” or “.net.”  The disputed domain name <vissbo> is phonetically the same as Complainant’s protected mark and in the geographical area in which it is being used, this domain name sounds the same as Complainant’s mark. The  Panel finds that this similarity of sound creates a confusingly similar mark in the area where it is used.  The Panel also finds that the other additions to Complainant’s mark do not satisfactorily distinguish the disputed domain names from Complainant’s mark.  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). 

 

The disputed <vissbo.com> domain name does not specifically contain the VALSPAR mark in English, but the Panel finds that under a Policy ¶ 4(a)(i) analysis, the disputed domain name is phonetically confusingly similar in the area in which it operates. But see Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Prop., D2005-1085 (WIPO Jan. 2, 2006) (finding no phonetic similarity where “[t]he disputed domain names do not incorporate Complainant’s mark “Le Petit Prince” but the English translation of Complainant’s trademark “The Little Prince.”); see also Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to the complainant’s CLUB 18-30 trademark). To hold otherwise would permit Respondent to opportunistically use Complainant’s protected mark by coming up with spelling in disguise that is pronounced the same as the mark. 

 

Thus, the Panel finds that Respondent’s <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names are confusingly similar to Complainant’s VALSPAR mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i);.

 

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <valspar-paint.com>, <valsparchina.net> and <vissbo.com> domain names.  Previous panels have found that when a complainant makes a prima facie case to support its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie case.  Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names.

 

However, this Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Respondent offered no evidence, and no evidence in the record suggests that Respondent is commonly known by the <valspar-paint.com>. <valsparchina.net>, and <vissbo.com> domain names.  Complainant asserts that Respondent has not received permission from Complainant to use the VALSPAR mark.  The Panel determines that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names.  Therefore, the Panel finds that Respondent has not established rights to or legitimate interests in the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).

 

Respondent uses the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names to resolve to Respondent’s website, which directly offers counterfeit paint products.  The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). 

 

The Panel finds that Respondent has no rights or legitimate interests in the <valspar-paint.com>, <valsparchina.net> and <vissbo.com> domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent uses the <valspar-paint.com>, <valsparchina.net> and <vissbo.com>  domain names to offer counterfeit paint products.  Internet users interested in Complainant’s paint products may instead purchase the counterfeit products due to Respondent’s use of the confusingly similar disputed domain names.  Based on this analysis, the Panel finds that Respondent’s use of the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names to disrupt Complainant’s business, which constitutes evidence to support findings of bad faith registration and use under Policy ¶ 4(b)(iii).  See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant alleges that Respondent is using the confusingly similar <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names to create confusion among Internet users as to Complainant’s sponsorship of or affiliation with the disputed domain names in order to sell counterfeit paint products.  In such circumstances, the Panel is permitted to make an inference that Respondent is attempting to profit from this confusion.  The Panel finds that Respondent’s use of the disputed domain names constitutes evidence of supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy in regard to the <valspar-paint.com>, <valsparchina.net>, and <vissbo.com> domain names, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <valspar-paint.com>, <valsparchina.net> and <vissbo.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: September 28, 2010.

 

 

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