Valspar Sourcing, Inc. v. TIGRE
Claim Number: FA0204000112596
The Complainant is Valspar Sourcing, Inc., Minneapolis, MN (“Complainant”) represented by Cindy Smith. The Respondent is TIGRE, Yuma, AZ (“Respondent”) Pete Erlenbach.
The domain name at issue is <paint.biz>, registered with BB Online UK Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no conflict in serving as Panelist in this proceeding.
Judge Karl V. Fink (Ret.) is Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”), as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.
On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 1, 2002.
An Additional Submission was received from Complainant on May 6, 2002. An Additional Submission was received from Respondent on May 8, 2002.
All submissions were considered by the Panel.
On May 22, 2002, pursuant to STOP Rule 6(b), the Forum appointed Judge Karl V. Fink (Ret.) as the single Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the wholly owned subsidiary of a multinational coatings company, the Valspar Corporation (“Valspar”). Valspar has been in existence and has been serving the coatings industry for almost 200 years. Complainant or its affiliated companies have developed various trademarks and trade names for use in connection with their many thousands of products. These trademarks and trade names are owned and managed by Complainant and are licensed to the various affiliated companies throughout the world.
Complainant owns and has developed rights in the trademark “PAINT.BIZ” in various countries around the world.
Complainant is the registered owner of the trademark “PAINT.BIZ” in France.
Complainant has developed and owns various trade names and slogans for use in the Untied States of America by its parent, Valspar. One of these marks is “PAINT.BIZ”. Valspar has used and continues to use the name “PAINT.BIZ” on its merchandise. Complainant and its parent Valspar have developed certain common law rights in the term PAINT.BIZ. Complainant also owns a pending U.S. trademark application for the mark PAINT.BIZ.
Complainant is also the owner of additional registrations and applications that contain the word “PAINT.”
106,293 cartons of Complainant’s product, containing 4 gallons each, were sold in 2001 displaying Complainant’s PAINT.BIZ mark. To date for 2002, the Complainant has sold 63,180 cartons of its product, containing 4 gallons each, displaying the mark PAINT.BIZ.
Subsequent to Complainant’s development and/or filing of its trademarks for PAINT.BIZ, Respondent sought to register a domain name that is identical to Complainant’s PAINT.BIZ trademarks.
This domain name is identical to the French trademark Registration and U.S. application for PAINT.BIZ and the common law rights owned by Complainant, its parent, subsidiaries or predecessors.
By registering the domain name <PAINT.BIZ>, Respondent is attempting to appropriate, in its entirety, Complainant’s rights in the PAINT.BIZ mark with a clear intent to trade off the reputation of Complainant and the PAINT.BIZ mark.
The Respondent is not the owner of any trade or service mark that is identical to the domain name and has no rights or legitimate interest in this domain name.
Respondent has no basis to argue that its use of the <PAINT.BIZ> domain name could qualify as a legitimate interest or use under the Policy.
Respondent is clearly not making a legitimate noncommercial use of the domain name, nor has Respondent commonly been known as PAINT.BIZ.
Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
The .BIZ Whois database indicated that Respondent is a company by the name of “TIGRE” located at 8036 Olive Lane in Yuma, Arizona. Complainant was unable to locate or confirm the existence of any such company in Arizona.
The word paint is a generic term that refers to an entire class of products. Within the purview of trademark law, this term lacks the distinctiveness necessary for a name or a mark to be given Federal Trademark Law protection.
Respondent is a small business owner and operator in the City of Yuma, Arizona, Business License No. 11402, licensed to conduct a Home Occupation Business at 8036 E. Olive Ann Lane.
Respondent’s business is engaged in the limited manufacture, production, and sale, of fine craftsmanship quality wood products such as chairs, benches, stools, cabinets, tables, and picture frames.
Respondent’s drying process produces a unique, one-of-a-kind, coating on the finished wood products created by Respondent.
Respondent has a bonafide intention to use <paint.biz> to commence www commerce to increase sale of Respondents’ unique products. Complainant’s applications for Federal Trademark Protection of paint.biz and paint.info do not predate the ICANN announcements of *BIZ and *INFO names. Complainant’s Federal Trademark Protection applications are an afterthought, intended to increase its market dominance and disrupt or eliminate market competition. Respondent is not engaged in the act of competition with Complainant or Complainant’s competitors and has no intention of doing so.
Prior to receipt of said Complaint from Complainant on April 26, 2002, Respondent possessed no prior knowledge of the existence of Complaint or Complainant’s Business.
Respondent has not registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.
Respondent has not registered the domain name primarily for the purpose of disrupting the business of a competitor.
Respondent has no purpose or intent to create a likelihood of confusion with the Complainant’s mark.
C. Additional Submissions
The term “paint” is not at issue in this dispute. Rather, the Complainant owns and has developed rights in the trademark “PAINT.BIZ” in various countries around the world.
Respondent ignores the fact that Complainant has established and owns rights to the trademark PAINT.BIZ in the U.S. and other countries.
Respondent’s proposed use of the domain name PAINT.BIZ will infringe Complainant’s exclusive trademark rights protected under the laws of the United States, as well as the laws of France.
Respondent’s proposed use of PAINT.BIZ to sell wood products in connection with a “unique, one-of-a-kind coating” on the finished wood products created by Respondent further illustrates that Respondent’s proposed use of <PAINT.BIZ> will be a token use and not for any legitimate business purpose. Respondent has failed to provide any evidence of any sales.
If in the future, Respondent’s business does, as it asserts, offer waterborne coatings via the <PAINT.BIZ>, domain name that would likely cause worldwide confusion in the marketplace. It is well known that Complainant offers thousands of waterborne coatings products for sale. Some of those products have been marketed using the PAINT.BIZ mark and Complainant’s customers have become accustomed to associating the mark PAINT.BIZ with the Complainant.
Respondent’s business license was obtained in August 2001. This was after Complainant’s IP Claim to the name PAINT.BIZ was submitted (on or about June 26, 2001) and after Complainant’s U.S. Trademark Application was filed (May 23, 2001).
U.S. trademark law provides that registration of a mark shall be constructive notice of the registrant’s claim of ownership.
ICANN announced the new domain suffix *.biz on May 15, 2001. Complainant’s French trademark registration is dated May 23, 2001. Complainant’s U.S. trademark application is September 27, 2001. Complainant sought to establish a vested right in paint.biz only upon learning of ICANN’s plan to establish *.biz domain names.
Complainant presents no information supporting a case for a vested right in paint.biz prior to ICANN’s*.biz announcement on May 15, 2001.
Adding a generic term, such as paint, to a *.biz should not create exclusive rights to use the generic term simply because it is attached to a *.biz.
For the reasons set forth below, the Panel finds Complainant has proven the required elements to have the name transferred.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has demonstrated that it has used the mark in commerce, has the mark registered in France and has applied to have the mark registered in the United States. All this took place before the domain name was registered and this dispute was filed.
Complainant has proven the required element that it has rights in the mark in question.
The Panel finds that Respondent cannot use the domain name for a bona fide offering of goods or services because any use by Respondent would be trading off of Complainant’s goodwill created by Complainant’s extensive use of PAINT.BIZ as a trade name and slogan representing its paint products. See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated the Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence Respondent or any business affiliated with Respondent is commonly known as PAINT.BIZ or <paint.biz>. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to STOP Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Respondent has presented no evidence of its use of the <paint.biz> domain name. See Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Complainant has proven this element. Respondent has no rights or legitimate interest in the domain name.
Respondent was on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed domain name despite this notice when Respondent had no right or legitimate interest in the domain name is evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).
Complainant has proven this element.
Complainant has proven each of the required elements. Therefore, it is ordered that the domain name <paint.biz>, be transferred to Complainant. Further challenges under the STOP Policy shall not be permitted.
Judge Karl V. Fink (Ret.) Panelist
Dated: June 4, 2002
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