WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pebeo Of America, Inc. v. David Small
Case No. D2002-0617
1. The Parties
The Complainant is Pebeo of America, Inc. with its principal place of business at 1905 Roy Street, Sherbrooke, Quebec, JIK 2X5, Canada. The Complainant is represented by Paul Frank & Collins, One Church Street, PO Box 1307, Burlington, Vermont, 05402-1307, United States of America.
The Respondent is David Small of 9 Crofts Avenue #249, Hurtsville, NSW22201 Australia. The Respondent in this proceeding is not represented.
2. The Domain Name and Registrar
The domain name in issue is <setacolor.com> (the "Domain Name").
The Registrar is Innerwise, Inc d/b/a ItsYourDomain.com (the "Registrar").
3. Procedural History
The Complaint is dated July 4, 2002, and was received by the Center on the same day by e-mail and in hard copy on July 9, 2002.
Confirmation from Registrar, was received by the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2002, stating that <setacolor.com> is registered with it and that the Respondent is the current registrant of <setacolor.com>.
On July 11, 2002, the Notification of Complaint was sent to the Respondent by e-mail and the enclosures by post/courier in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy"). On the same day, an e-mail was received by the Center from Small Expressions stating that the attachments to the e-mail were "opened as unreadable characters".
On July 12, 2002, a Notification of Complaint was sent again and the Respondent replied that he was unable to read the attachment.
On August 2, 2002, the Notification of Complaint was sent by courier to the Respondent.
On August 2, 2002, Notification of Default was given to the Respondent. On the same day the Respondent reiterated that he had been unable to open the attachments to the Notification of Complaint and was therefore not in default.
On August 6, 2002, an e-mail was sent to both the Center and the Complainant stating that the Domain Name had been sold together with the company Setacolor Fabrics. The e-mail states "any further communication shall be directed to Setacolor Fabrics, 9 Crofts Avenue #249 Hurtsville, NSW 22201 AU." There is no evidence of sale attached to the e-mail. The e-mail concludes that "Setacolor Fabrics is entirely owned and operated in AU." The Panel notes that it is no longer associated with Mr. Smallís company, Small Expressions. The address given for "Setacolor Fabrics" address is the same address as that shown on the "WHOIS" search for the Registrant of the Domain Name, David Small.
A Panel was constituted on August 14, 2002, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.
4. Factual Background
The Complainant has been using the name SETACOLOR since 1961 and in commerce since 1982. The date of the earliest trade mark application is July 21, 1984 (filing date).
The Complainant is the registered owner of a number of trade marks for SETACOLOR that have been registered in the USA, Canada, France, South Africa, Italy and Turkey. These registrations cover paints for fabrics.
It appears from an ItsYourDomain WHOIS search dated August 19, 2002, the Respondent registered the Domain Name on October 26, 2000. The Registrant is shown as David Small, with the address in Australia identified in section 1 above. The Administrative Contact is again shown as Mr. Small, at the same address, and with an e-mail address of "firstname.lastname@example.org". The Technical Contact is described as the "SE Webmaster" with an e-mail address of "email@example.com". An address of PO Box 186, Kennebunkport, ME 04046, in the United States of America is given for the technical contact.
Hard copy printouts of the Respondentís web site operated under the under the domain name <setacolor.com> have been provided and annexed to the Complaint. These show a detailed web site which contains a huge amount of information about crafts, specifically the craft of quilting. The web site uses the name "Small Expressions" as a trading name or style on most of the pages. The address of the PO Box 186, Kennebunkport, ME 04046, United States of America is given. Information throughout the pages indicates the site was set up by David K Small and shows his work as a quilter, and describes how he became involved in the craft. The site is commercial in the sense that various quilting related products are offered for sale via the site.
Correspondence took place between the parties. On April 26, 2001, Mr. Small, wrote on notepaper headed "Small Expressions" indicating that he used Setacolor products in producing materials he used in his fabric painting classes, and that he used <setacolor.com> "with the sole purpose of expanding my business with regard to this product". Mr. Small refused in the letter to relinquish the domain, but said he would give the Complainant "first refusal" if he decided to review or change profession.
On June 18, 2001, the Complainantís attorneys wrote to the Respondent insisting that the Domain Name be assigned to the Complainant without cost to the Complainant. The Complainantís solicitors stated in their June 18, 2001, letter that if assurance of assignment did not take place by June 30, 2001, the Complainant would bring legal proceedings to compel an assignment.
On July 8, 2002, the Complainant received an email from Small Expressions stating "The domain name setacolor.com is currently for sale. You were given first right of refusal which we feel obligated to extend. You may make a reasonable offer before July 15, 2002, after which time it will be sold to another party who has currently requested it. Direct all concerns regarding this matter to firstname.lastname@example.org or
c/o General Manager,
PO Box 186 Kennebunkport
5. The Complainantís Contentions
These may be summarised as follows:
The Domain Name is identical to the SETACOLOR trade mark used by the Complainant;
The Complainant is the registered owner of the trade mark registration for SETACOLOR in USA and Canada and other parts of Europe for paints;
The Respondent has no rights or legitimate interests in the Domain Name and the Domain Name has been registered, and is being used in bad faith;
The Respondentís registration of the Domain Name is calculated to deceive the public with a view to passing off the Respondentís goods or services as those of the Complainant or is an attempt to pressurise the Complainant to pay the Respondent a large sum of money;
Since the word SETACOLOR is unusual, the name was deliberately chosen by the Respondent; it does not bear any resemblance to any personal or trading name of the Respondent; and
The Respondent (or someone acting on its behalf) has offered to sell the Domain Name to the Complainant.
6. Discussion and Findings
The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material this Panelís findings are set out below.
The Domain Name (ignoring the .com suffix) is identical to the registered trade mark belonging to the Complainant.
The evidence does not indicate that the Respondent had any legitimate basis to register the Domain Name. There is no clear indication why Mr. Small, or "Small Expressions" decided to operate what appears otherwise to be a perfectly bona fide web site devoted to quilting under the domain name "setacolor". This is clearly a reference to the Complainantís product which appears to be well known in the field of fabrics and textiles. The Panel does not accept the explanation in the letter of April 16, 2001, as entitling the Respondent to use the term in this manner. The Panel concludes the use by the Respondent has amounted to an attempt to attract for commercial gain Internet users to the site at the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondentís web site or of products or services featured on the web site. Such use constitutes evidence of use in bad faith under section 4b(iv) of the Policy.
The Panel therefore concludes that the Complainant is correct and that the name was registered in bad faith. Subsequent events whereby the Respondent first offered to sell the domain name to the Complainant and then, when faced with the present proceedings, purported to transfer the domain name to what was said to be an unconnected entity, but which operates from an address associated with the Respondent, confirms the Panelís view that the Domain Name was registered and is being used in bad faith.
In the light of the above findings, the Panelís decision is as set out below.
The Domain Name is identical to the Complainantís trade mark (see paragraph 4(a)(i) of the Policy). The Respondent has no rights or legitimate interests in the Domain Name (see paragraph 4(a)(ii). The Domain Name was registered and is being used in bad faith (see paragraph 4(a)(iii) of the Policy). It was on the balance of probabilities registered primarily to attract Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís registered mark.
The Panel directs the domain name be transferred to the Complainant.
Dated: August 26, 2002