DECISION

 

E.I. du Pont de Nemours and Company v. Plastic Distributors & Fabricators, Inc.

Claim Number: FA0106000097437

 

PARTIES

Complainant is E.I. du Pont de Nemours and Company, Wilmington, DE, USA (“Complainant”) represented by Leon J. Bechet.  Respondent is Plastic Distributors & Fabricators, Inc., Haverhill, MA, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <delrin.com> and <vespel.com>, registered with Network Solutions.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Sandra Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 8, 2001; the Forum received a hard copy of the Complaint on June 15, 2001.

 

On June 11, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <delrin.com> and <vespel.com> are registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 June 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@delrin.com and postmaster@vespel.com by e-mail.

 

A timely response was received and determined to be complete on July 3, 2001.

 

On July 9, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant states that Respondent knew of Complainant’s long use of the trademarks VESPEL and DELRIN for synthetic resins.  Respondent uses the identical domain names to intentionally divert consumers to Respondent’s website by creating confusion as to the source, sponsorship and affiliation of Respondent’s website.

 

B. Respondent contends that its use of VESPEL and DELRIN constitute fair use under the Lanham Act in that it only uses the marks to refer to the materials made by Complainant which Respondent uses in its fabrications.  Respondent states that it only uses the domain names to identify Complainant’s products and not as a trademark.

 

FINDINGS

Panelist finds that Complainant has met the three elements required for the transfer of a domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

Complainant’s trademarks VESPEL and DELRIN are identical to Respondent’s domain names.

 

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the domain names.  Respondent’s arguments regarding fair use are unpersuasive in the context of adopting another’s trademarks as a domain name.  Fair use of a trademark is allowed when the user must use the mark in a descriptive sense, and requires the user to prominently identify its goods or services with its own mark.  Respondent could, for example, refer to the trademarked resins in a web site under Respondent’s own name.

 

In this case, Respondent is not simply using the marks in a descriptive sense; it has named websites with Complainant’s marks.  Respondent could easily inform consumers that it handles various synthetic resins without naming web sites with Complainant’s marks.  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001).

 

Registration and Use in Bad Faith

Respondent has used the domain names with the intention of attracting persons looking for information about Complainant’s trademarked products, thereby diverting them from the source of those products to a different source, Respondent – a source of services.  A review of the page Complainant attached to its Complaint at Exhibit C shows that the Respondent does not even mention VESPEL or DELRIN.  See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000), and Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum, Feb. 23, 2000).

 

DECISION

The domain names delrin.com and vespel.com should be transferred from Respondent to Complainant.

 

 

Sandra Franklin, Panelist

 

Dated: July 23, 2001