WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sherwin-Williams Company et al. v. Xtreem Trux Corp.
Case No. D2000-1569
1. The Parties
Complainants are the Sherwin-Williams Company ("Complainant" and
"Sherwin-Williams") a corporation incorporated under the laws of the State of Ohio, with a principal place of business at 101 Prospect Avenue, NW, Cleveland, Ohio 44115 USA and its wholly-owned subsidiary, SWIMC, Inc. ("SWIMC") a corporation incorporated under the laws of the State of Delaware with a principal place of business at 300 Delaware Avenue, Suite 522, Wilmington, Delaware 19801 USA.
Respondent is Xtreem Trux Corp. ("Respondent" or "Xtreem"), located at 1616 Cape Coral Parkway, #141, Cape Coral, Florida 33914 USA.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are "sherwin-williamspaints.com" and "sherwinwilliamspaint.com"
(the "Domain Names"). The registrar is Dotster, Inc. (the "Registrar") 11807 NE 99th Street, Suite 1100, Vancouver, Washington 98682 USA.
3. Procedural History
On November 14, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 15, 2000, the Center received hardcopy of the Complaint. The Complainant paid the required fee.
On December 1, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
On December 4, 2000, the Center requested clarification of the Complaint. On December 4, 2000, the Center received clarification of the Complaint from Complainant.
The Center verified that the Complaint with clarification satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On December 5, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On January 10, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On January 22, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist "), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.
4. Factual Background
Co-Complainant SWIMC is a wholly-owned subsidiary of Complainant
Sherwin-Williams and was incorporated in 1991. Co-Complainant SWIMC has granted Co-Complainant Sherwin-Williams a license to use certain marks incorporating the term "SHERWIN-WILLIAMS" which are the basis for this Complaint in connection with the provision of paints, coatings and other goods and services.
Co-Complainant Sherwin-Williams is a global producer of paints and coatings, originally founded in 1866, and has used the term "SHERWIN-WILLIAMS" to identify its goods and services since that time. Since long prior to Respondents’ registration of the Domain Names, Co-Complainant Sherwin-Williams has continuously owned, and/or used under license from Co-Complainant SWIMC, a family of Sherwin-Williams names and marks, including SHERWIN-WILLIAMS (the "SHERWIN-WILLIAMS Marks") in connection with Co-Complainant
Sherwin-Williams’s products and services. Numerous registrations of the
SHERWIN-WILLIAMS Marks with the United States Patent and Trademark Office ("USPTO") are owned by Co-Complainant SWIMC and utilized under license by
Complainants’ right to use and/or license the following registered
SHERWIN-WILLIAMS Marks in the United States has become incontestable under 15 U.S.C. § 1065 and 1115: 438,455 and 1,013,114. The certificates of registration thereof constitute "conclusive evidence" of "the validity of the registered mark[s] and of the registration of the mark[s], of the registrant’s ownership of the mark[s], and of the registrant’s exclusive right to use the registered mark[s] in commerce on or in connection with the goods or services specified in the registration." 15 U.S.C. § 1115.
Co-Complainant Sherwin-Williams has spent millions of dollars in advertising and promoting the SHERWIN-WILLIAMS Marks in connection with its products and services throughout the United States, and Co-Complainant Sherwin-Williams has sold hundreds of millions of dollars worth of these products and services under and in connection with the SHERWIN-WILLIAMS Marks throughout the United States.
Co-Complainant Sherwin-Williams also owns one or more trademark registrations for "SHERWIN-WILLIAMS" in block letters and/or stylized form in at least the following countries outside of the United States: Africa (OAPI), Algeria, Antigua, Barbuda, Argentina, Austria, Bahamas, Benelux (Belgium, Netherlands, Luxemburg), Barbados, Bermuda, Bolivia, Bosnia-Herzegovina, Brazil, Canada, Chile, Colombia, Costa Rica, Croatia, Cyprus, Czech Republic, Denmark, Dominica, Dominican Republic, Ecuador, Egypt, El Salvador, Finland, France, Germany, Greece, Guatemala, Guyana, Haiti, Honduras, Hong Kong, Indonesia, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kenya, Korea, Kuwait, Lebanon, Macedonia, Montserrat, Morocco, Netherland Antilles, Nicaragua, Norway, Panama, Paraguay, Peru, Philippines, Poland, Portugal, Romania, Russian Federation, St. Kitts and Nevis, St. Lucia, Saudi Arabia, Singapore, Slovenia, South Africa, Spain, Sudan, Suriname, Sweden, Switzerland, Syria, Taiwan, Thailand, Trinidad and Tobago, Tunisia, Turkey, United Arab Emirates, Uruguay, Venezuela, Vietnam, Yemen and Yugoslavia.
By virtue of Complainants’ long use, widespread advertising and enormous sales, the SHERWIN-WILLIAMS Marks in the U.S. and throughout the world have become
well-recognized and famous, and represent goodwill of extraordinary value.
Co-Complainant Sherwin-Williams owns, has registered and uses several domain names that include SHERWIN-WILLIAMS, including but not limited to "sherwinwilliams.com", "sherwinwilliamspaints.com", and "sherwin-williams.com". One of the principal websites for goods and services supplied by the Co-Complainant Sherwin-Williams is "sherwin-williams.com" which provides over 12,000 pages of information about goods and services provided by Co-Complainant Sherwin-Williams as well as investor relation information, employment information and more. More specifically, "sherwin-williams.com" provides information about the various types of goods available from the Co-Complainant Sherwin-Williams, the history of The Sherwin-Williams Company, the stores where goods bearing the Sherwin-Williams Marks can be purchased, and contract information.
5. Parties’ Contentions
Complainant contends that it has several registrations of the SHERWIN-WILLIAMS Marks. Complainant further contends that the Domain Names are identical with and confusingly similar to the SHERWIN-WILLIAMS Marks pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
Respondent failed to contest Complainants’ assertion that they have registered the SHERWIN-WILLIAMS Marks or that the Domain Names are identical with and confusingly similar to the SHERWIN-WILLIAMS Marks.
Respondent failed to contest Complainants’ assertion that Respondent has no rights or legitimate interest in the Domain Names.
Respondent failed to contest Complainants’ assertion that Respondent registered and used the Domain Names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainants and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Even though Respondent has failed to file a Response or to contest Complainants’ assertions, the Sole Panelist will review the evidence proffered by Complainants to verify that the essential elements of the claims are met.
Identity or Confusing Similarity.
Complainants contend that they have several registrations of the SHERWIN-WILLIAMS Marks. Complainants further contend that the Domain Names are identical with and confusingly similar to the SHERWIN-WILLIAMS Marks pursuant to the Policy paragraph 4(a)(i).
Prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No.
Complainants contend that they have registered trademarks in the
SHERWIN-WILLIAMS Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the SHERWIN-WILLIAMS Marks 15 U.S.C. § 1115. Complainants further allege that the SHERWIN-WILLIAMS Marks are incontestable and conclusive evidence of Complainants’ ownership of the marks and exclusive right to use the marks in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).
Respondent has not contested the assertions by Complainants that they have valid registrations of the SHERWIN-WILLIAMS Marks. Therefore, the Sole Panelist finds for purposes of this proceeding that Complainants have enforceable rights in the SHERWIN-WILLIAMS Marks.
Complainants further contend that the Domain Names are identical with and confusingly similar to the SHERWIN-WILLIAMS Marks pursuant to the Policy paragraph 4(a)(i).
Respondent has not contested the assertions by Complainants that the Domain Names are confusingly similar to the SHERWIN-WILLIAMS Marks.
The Sole Panelist notes that the entirety of the phrase "Sherwin-Williams" is included in the Domain Names.
Generally, a user of a mark "may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998). The addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain name. Similarly, the phrase "paint" is merely descriptive of the products sold by Complainants.
In addition, the Domain Names are confusingly similar in that they are misleading. The Domain Names suggest an association or relationship to Complainants which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., WIPO Case No. D2000-0167, id.
Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark. See Panavision Int’l, L.P. v. Toeppen , 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name . . . . [A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." (citations omitted)). Thus, consumers would expect to find an official Sherwin-Williams website at a domain name comprised of the SHERWIN-WILLIMAS Marks.
Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the SHERWIN-WILLIAMS Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Complainants contend that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainants for the use of the SHERWIN-WILLIAMS Marks.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Names:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Complainants set forth facts which they assert show the bad faith of Respondent. Respondent has offered to sell the Domain Names to Complainants. On July 30, 2000, Complainants received an email stating, "we have a list of domain names going to auction on 8/10/00," and offering to sell the Domain Names (as well as the domain name "sherwin-williams.ws") to Complainants. That email was sent from the email address firstname.lastname@example.org which, as the following facts show, is the email address of Respondent’s president, Tom Lento. First, the Domain Name
"sherwin-williamspaints.com" was offered for sale at Ebay.com. The email address given on the bidding page as the seller’s contact information is email@example.com. Second, the domain name "x-treem.com" is registered to one "Tom Linto," as shown on the WhoIs page of Network Solutions, Inc. (dated November 12, 2000). The email address of "Tom Linto" is firstname.lastname@example.org, and the full address and telephone number of the registrant and Administrative and Technical Contact is identical to the Administrative and Technical Contact information set forth on the WhoIs pages for the Domain Names (excepting minor spelling variations). Third, Respondent is a privately owned Florida corporation with one employee: its president, Tom Lento. Respondent’s address on the Dun & Bradstreet report is identical to Respondent’s address on the NSI WhoIs pages for the Domain Names. All these facts show that the originator of the July 30, 2000, email from email@example.com to Complainant is Respondent, acting via its president, Tom Lento.
The Sole Panelist finds that Complainants’ allegations show the necessary elements of bad faith under the Policy paragraph 4(b)(i). Therefore, the Sole Panelist finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Names "sherwin-williamspaints.com" and "sherwinwilliamspaint.com" are confusingly similar to Complainants’ registrations of the SHERWIN-WILLIAMS Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to either The Sherwin-Williams Company or SWIMC, Inc. at their option.
Richard W. Page
Date: February 11, 2001