The Valspar Corporation v. wu sanqing
Claim Number: FA1102001371871
Complainant is The Valspar Corporation (“Complainant”), represented by Andrew Ubel of The Valspar Corporation, Minnesota, USA. Respondent is wu sanqing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usvalspar.com>, registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD.
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 submitted a Complaint to the National Arbitration Forum electronically February 8, 2011; the National Arbitration Forum received payment February 8, 2011. The Complaint was submitted in both Chinese and English.
On March 2, 2011, XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <usvalspar.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. verified that Respondent is bound by the XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 7, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 28, 2011, 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@usvalspar.com. Also on March 7, 2011, 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 March 31, 2011, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. The domain name that Respondent registered, <usvalspar.com>, is confusingly similar to Complainant’s VALSPAR mark.
2. Respondent has no rights to or legitimate interests in the <usvalspar.com> domain name.
3. Respondent registered and used the <usvalspar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Under its VALSPAR mark, Complainant designs, markets, and sells paints, varnishes, stains, coating, inks, and polymers. Complainant holds multiple trademark registrations for its VALSPAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 97,293 issued May 26, 1914) and with China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 1,132,020 issued December 7, 1997).
Respondent registered the <usvalspar.com> domain name October 3, 2010. The disputed domain name resolves to Respondent’s website, which sells counterfeit versions of Complainant’s paint products.
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 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.
Complainant alleges that it has established rights in its VALSPAR mark. Evidence of federal trademark registrations 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)). Complainant holds multiple trademark registrations with the USPTO (e.g., Reg. No. 97,293 issued May 26, 1914) and SIPO (e.g., Reg. No. 1,132,020 issued December 7, 1997) for its VALSPAR mark. Therefore, the Panel finds that Complainant has shown rights in its VALSPAR mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <usvalspar.com> domain name is confusingly similar to Complainant’s VALSPAR mark under Policy ¶ 4(a)(i). When determining whether a domain name is confusingly similar, previous panels have concluded that the additions of a geographic abbreviation and a generic top-level domain (“gTLD”) are not sufficient to distinguish a domain name from a complainant’s mark. See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The <usvalspar.com> domain name attaches the geographic abbreviation “us” and the gTLD “.com” to Complainant’s VALSPAR mark. Thus, the Panel finds that Respondent’s <usvalspar.com> domain name is confusingly similar to Complainant’s VALSPAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant also alleges that Respondent has no rights to or legitimate interests in the <usvalspar.com> domain name. Once Complainant makes a prima facie case to supports its allegations, the burden of proof shifts to the respondent to prove that it does have such rights or legitimate interests under a Policy ¶ 4(a)(ii) analysis. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. A respondent’s failure to respond to the Complaint allows the Panel to make an inference that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, this Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <usvalspar.com> domain name under Policy ¶ 4(c)(ii). A respondent is not commonly known by a domain name when the complainant has not authorized the respondent to use its mark, the WHOIS information is not similar to the domain name, and no other evidence in the record supports such a finding. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). In this case, Complainant asserts that Respondent is not licensed to use Complainant’s VALSPAR mark. The WHOIS information lists “wu sanqing” as the registrant of the <usvalspar.com> domain name. The Panel fails to find any evidence in the record, or provided by Respondent, that would allow it to find that Respondent is commonly known by the disputed domain name. Consequently, the Panel holds that Respondent is not commonly known by the <usvalspar.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. A respondent’s use of a disputed domain name to sell counterfeit versions of a complainant’s products 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 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 G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
While Complainant did not specifically contend that Respondent’s use of the <usvalspar.com> domain name constitutes bad faith registration under Policy ¶ 4(b)(iii), past panels have found that use of a disputed domain name to sell counterfeit versions of a complainant’s products disrupts a complainant’s business and constitutes bad faith registration and use. 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).”). The Panel agrees and finds that Respondent’s registration and use of the <usvalspar.com> domain name evidences bad faith under a Policy ¶ 4(b)(iii) analysis.
Complainant urges as well that Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name, which also constitutes bad faith under Policy ¶ 4(b)(iv). Use of a disputed domain name to market counterfeit versions of a complainant’s products is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); 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). Respondent is using the confusingly similar <usvalspar.com> domain name to resolve to a website that sells paint products that appear to be Complainant’s paint products but are actually counterfeit products, an obvious attempt to profit from confusion among Internet users who mistakenly believe Complainant is associated with Respondent’s website and products. Therefore, the Panel finds that Respondent’s registration and use of the <usvalspar.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usvalspar.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 11, 2011.
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