Paper Denim & Cloth, LLC v. VertMarkets, Inc.
Claim Number: FA1011001356783
Complainant is Paper Denim & Cloth, LLC (“Complainant”), represented by Gary H. Fechter of McCarter & English, LLP, New York, USA. Respondent is VertMarkets, Inc. (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <resin.com>, registered with CSC CORPORATE DOMAINS, INC.
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.
Hon. Nelson A. Diaz (ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2010; the National Arbitration Forum received payment on November 8, 2010.
On November 15, 2010, CSC CORPORATE DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <resin.com> domain name is registered with CSC CORPORATE DOMAINS, INC. and that Respondent is the current registrant of the name. CSC CORPORATE DOMAINS, INC. has verified that Respondent is bound by the CSC CORPORATE DOMAINS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@resin.com. Also on November 16, 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.
A timely Response was received and determined to be complete on December 6, 2010.
On December 7,2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Pursuant to Rule 7(a) of the National Arbitration Forum (FORUM) Supplemental Rules (Supp. Rules), Complainant Paper Denim & Cloth, LLC ("Complainant") submitted an Additional Submission on December 10, 2010 in further support of its Complaint ("Complaint") against Vertmarkets, Inc. ("Respondent") and its Amended Complaint filed on November 15, 2010. Complainant's Additional Submission is timely filed since Respondent submitted its Response on December 6, 2010 ("Response").
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant believes the domain name at issue, <resin.com>, was registered by or transferred to Respondent on April 9, 1998. Respondent's domain name, RESIN.COM, is confusingly similar to Complainant's RESIN trademark. The only difference between Complainant's federally registered RESIN mark and Respondent's <resin.com> domain name is the addition of the generic top-level domain ("gTLD") ".com The RESIN trademark was adopted and used by Complainant as a trademark since at least as early as March I, 2010. Although Respondent's registration of the disputed domain name predates Complainant's use of the mark, Complainant's rights to the mark RESIN do not need to predate Respondent's use of the disputed domain name. Respondent has no affiliation or ties with Complainant. Respondent is not commonly known by the Domain Name because the WHOIS information lists Respondent as Vertmarkets, Inc. Respondent owns about one hundred forty six (146) other domain names. (Annex, Exh. B.) Respondent has never made any use of the disputed Domain Name since it was registered in April 1998, and never developed a website that resolves from the Domain Name. Since Respondent is not using the website, Respondent cannot be making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
An industry has developed in which companies, such as the Respondent's, use domain names not as a basis for producing and selling goods but, instead, primarily for obtaining fees. For these companies, an offer to buy the domain name is a bargaining tool to charge exorbitant fees to companies that seek to buy the domain name. If the offer to buy is not to the company's likeness, the company denies it, and sits on the domain name until a more lucrative offer comes along. Respondent is one such company. Respondent is not using the domain name and has no plans to use it. Respondent is waiting for the right number to come along, but as he waits, the Complainant, a bona fide owner and user of the RESIN trademark, cannot use his RESIN trademark as a domain name.
B. Respondent
The Respondent asserts that it purchased the disputed domain name in 1998 because of its market value related to its Plasticsnet.com business. The Respondent's ownership of <resin.com> is not confusingly similar to a trademark or service mark in which the Complainant has rights, because the trademark the Complainant has rights in is a common broad and generic term that required the Complainant to specify it's use as "in connection with jeans" or "in connection with pants, sweaters, jackets, coats, shorts, t-shirts, skirts, vests, and tops." The Respondent has been using broad and generic term domain names in the Business-to-Business online procurement and sourcing space for over fifteen (15) years.
The domain in question, <resin.com> was acquired to be a sister/related site to PlasticsNet.com. It has nothing to do with their pending trademark and it's claimed "connections." The below definition of resin found on Merriam-Webster's website (from www.merriam-webster.com) further supports our broad and generic term position and explains it's connection with our Plastics portal.
Respondent acknowledges the ownership of one hundred and forty six (146) domains as stated by the Complainant. The Complainant did not state that a substantial majority of these are currently used in Respondent's business. All of the domains registered are within industries that Respondent has determined through due diligence and analysis are a target Market for Respondent's business model. Currently dormant domains are either alternative names, or related names to their active 70 portals.
The Respondent has not violated ICANN Policy ¶ 4(a)(ii) and 4(a)(iii).
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."
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 evidence shows that it owns a trademark registration for the RESIN mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,804,847 filed November 5, 2008; issued June 15, 2010).
Respondent argues that its disputed domain name was registered prior to Complainant’s alleged rights in the mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(iii).
Respondent contends that the disputed domain name is comprised of a common and generic term and thus cannot be deemed identical to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and 4(a)(iii).
Respondent alleges that it is a leader in supplier enablement, with solutions that connect buyers and suppliers through industry-specific public and private marketplaces while operating seventy online marketplaces. Respondent submits that it does own 146 domain names, but specifies that a substantial number of those domain names are used in Respondent’s business. Further, Respondent contends that it is commonly known by the domain names that it owns, including the disputed domain name. Further, Respondent alleges that a single content management system and database structure operates all of its active domain names, which is why Respondent registered the disputed domain name in its legal name and not on a domain-by-domain basis. The Panel finds that Respondent is using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Respondent also argues that the term of the <resin.com> domain name is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term(s) on the Internet. The Panel agrees with Respondent and fnds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has rights or legitimate interests in the <resin.com> domain name pursuant to Policy ¶ 4(a)(ii), therefore the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent argues that since it registered the disputed domain name in 1998 that it could not have possibly registered the domain name in bad faith where Complainant did not acquire trademark rights until 2010. The WHOIS information lists the registration date of the disputed domain name as April 9, 1998. Further, Respondent states that it is using the disputed domain name for a legitimate business practice, and either way it could not have known when it registered the domain name of Complainant’s potential future use of its now registered trademark. Lastly, Respondent submits that it has not sold a domain name in over ten years. Therefore, the Panel finds that Respondent did not register and use the disputed domain name in bad faith where it registered the domain name in 1998 and Complainant did acquire rights in its mark until 2010. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED
Hon. Nelson A. Diaz (ret.), Panelist
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