The Valspar Corporation v. Belize Domain WHOIS Service
Claim Number: FA1102001372046
Complainant is The Valspar Corporation (“Complainant”), represented by Andrew Ubel of The Valspar Corporation, Minnesota, USA. Respondent is Belize Domain WHOIS Service (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <devinepaint.com>, registered with ASSORTED, LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2011; the National Arbitration Forum received payment on February 8, 2011.
On February 18, 2011, ASSORTED, LTD confirmed by e-mail to the National Arbitration Forum that the <devinepaint.com> domain name is registered with ASSORTED, LTD and that Respondent is the current registrant of the name. ASSORTED, LTD has verified that Respondent is bound by the ASSORTED, LTD 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 February 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@devinepaint.com. Also on February 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and of the deadline for a response, was transmitted via post and fax to Respondent and 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 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant uses its DEVINE trademark and service mark in connection with the marketing of paints and related consulting services.
Complainant holds registrations for the DEVINE mark with trademark authorities worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,972,541, issued July 19, 2005).
Respondent registered the <devinepaint.com> domain name on May 5, 2005.
This domain name resolves to a website that displays adult-oriented content.
Respondent’s <devinepaint.com> domain name is confusingly similar to Complainant’s DEVINE mark.
Respondent is not commonly known by the disputed domain name, and Respondent has not received permission from Complainant to use its DEVINE trademark and service mark.
Respondent does not have any rights to or legitimate interests in the domain name <devinepaint.com>.
Respondent registered and uses the disputed <devinepaint.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Under Policy ¶ 4(a)(i), Complainant has rights in its DEVINE trademark and service mark by virtue of its registration of the mark with national trademark authorities, including the USPTO. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purpose of ¶ 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of the respondent’s place of business, it being sufficient that a complainant can demonstrate that it has such rights in some jurisdiction).
Respondent’s <devinepaint.com> domain name is confusingly similar to Complainant’s DEVINE mark. In forming the contested domain name, Respondent has merely added the term “paint,” which is descriptive of Complainant’s business. Additionally, the disputed domain name appends the generic top-level domain (“gTLD”) “.com.” These alterations of the mark to form the disputed domain name do not avoid a finding of confusing similarity. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety, and merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); 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.
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <devinepaint.com> domain name is confusingly similar to Complainant’s DEVINE trademark and service mark.
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), once Complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also 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 a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has met its prima facie burden of proof under this head of the Policy, while Respondent, for its part, has failed to respond to the allegations of the Complaint filed in the proceeding. We are therefore free to conclude that Respondent lacks rights to or legitimate interests in the contested domain name sufficient to satisfy the requirements of the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we elect to examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name and has not received permission from Complainant to use its DEVINE mark. Moreover, the WHOIS information for the contested domain name identifies the registrant only as “Belize Domain WHOIS Service,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
We next observe that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website that features adult-oriented images and content. In the circumstances here presented, we may comfortably presume that Respondent profits from its use of the disputed domain name for this purpose. Therefore, we conclude that Respondent is not using the disputed domain name to make 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 Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a adult-oriented website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)); see also Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003):
Respondent uses …[a contested domain name]… in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the contested domain name, which is confusingly similar to Complainant’s DEVINE mark, to profit from the display of adult-oriented images and content, demonstrates bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting in the process); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that a respondent’s use of the <googlesex.info> domain name to attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
Additionally, Respondent’s use of the disputed domain name to feature adult-oriented images and content is, in and of itself, evidence of Respondent’s bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003):
[W]hatever the motivation of Respondent, the diversion of the domain name to a [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.
See also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“this association with a [adult-oriented] web site can itself constitute a bad faith”).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <devinepaint.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 30, 2011
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