WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry
Case No. D2007-0741
1. The Parties
The Complainants are Columbia Insurance Company, Omaha, Nebraska, United States of America (“Complainant Columbia Insurance”); and Benjamin Moore & Co., Montvale, New Jersey, United States of America (“Complainant Benjamin Moore”), represented by Kaye Scholer, LLP, United States of America.
The Respondents are Whois Data Shield, Jupiter, Florida, United States of America, (“Respondent Whois Data Shield”) and St Kitts Registry, St. Kitts, Olam, of St. Kitts and Nevis (“Respondent St. Kitts Registry”). Unless otherwise stated, a reference herein to “the Respondent” will mean Respondent St. Kitts Registry, the registrant of the domain name at issue.
2. The Domain Name and Registrar
The disputed domain name <benjaminemoore.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2007. On May 22, 2007, and again on June 1, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2007, the Registrar transmitted by email to the Center its verification response stating that Respondent St. Kitts Registry is the current registrant of the Domain Name and providing the contact details. In response to a notification by the Center conveying the Registrar’s confirmation that St. Kitts Registry is the current registrant of the Domain Name and request for amendment of the Complaint, the Complainants filed an amendment to the Complaint on June 4, 2007, adding St. Kitts Registry as a Respondent (the “Amended Complaint”). The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified both Respondents of the Complaint, and the proceedings commenced on June 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2007. Neither Respondent submitted any response. Accordingly, the Center notified the Respondents’ default to Respondent Whois Data Shield on June 26, 2007, and to Respondent St. Kitts Registry on July 17, 2007.
The Center appointed Dana Haviland as the sole panelist in this matter on July 6, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Since Respondent Whois Data Shield is simply a privacy domain name registration service, and the Registrar has confirmed that the registered owner of the Domain Name is Respondent St. Kitts Registry, the Panel will treat Respondent St. Kitts Registry as the sole Respondent in this proceeding See Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070. Due to exceptional circumstances, the Panel extended the projected Decision Date from July 20 to July 25, 2007.
4. Factual Background
Complainant Benjamin Moore is a well-known paint manufacturer which specializes in producing and marketing premium paint products for use by consumers and professionals.
Complainant Columbia Insurance is the owner of numerous trademarks incorporating the mark BENJAMIN MOORE, which are licensed to Complainant Benjamin Moore, and used in connection with the sale of Benjamin Moore paint products.
Complainant Columbia Insurance is the owner, and Complainant Benjamin Moore is the licensee, of all rights to United States trademark registration, U.S. Trademark Reg. No. 2,823,878, issued March 16, 2004, covering the design mark BENJAMIN MOORE and Benjamin Moore’s distinctive triangle logo for use in connection with “Interior and exterior paints and coatings in the nature of paint,” “Printed materials, brochures, manuals, catalogues, color cards, newsletters and instructional materials relating to paints, coatings, paint brushes and paint applicator rollers” and “Clothing, namely shirts, caps, sweatshirts and paint aprons”, U.S. Trademark Reg. No. 3,054,517, issued January 31, 2006, covering the mark BENJAMIN MOORE for use in connection with “Caulking; adhesive sealant and caulking”, U.S. Trademark Reg. No. 3,142,250, issued September 12, 2006, covering the mark BENJAMIN MOORE for use in connection with “Clear and pigmented coatings used in the nature of paint; enamel paints; epoxy coating for use on concrete industrial floors; exterior paint; glazes; house paint; interior paint; lacquers; mixed paints; paint for concrete floors; paint primers; paint sealers; paints; sealer coatings for use in home maintenance; varnish; wood stains”, U.S. Trademark Reg. No. 3,142,087, issued September 12, 2006, covering the mark BENJAMIN MOORE for use in connection with “Paint applicator rollers; Paintbrushes” and U.S. Reg. No. 3,217,277, issued March 13, 2007, covering the BENJAMIN MOORE BENJAMIN MOORE PAINTS design mark in connection with “retail stores featuring paint, paint sundries, coatings and design, retail paint and coating store”. The registrations described above are collectively referred to herein as the “BENJAMIN MOORE Mark”.
The Complainants’ adoption, use and initial registration of the BENJAMIN MOORE Mark in the United States of America and elsewhere precedes Respondent’s registration of the Domain Name <benjaminemoore.com> on November 27, 2005.
The Domain Name website contains pay-per-click links to a variety of goods and services, including paint and painting-related services, and some of the links are to websites offering for sale products that compete with Complainant Benjamin Moore’s products.
5. Parties’ Contentions
According to the Complaint, Benjamin Moore has produced quality paints since 1883. Benjamin Moore markets and sells its premium paint products to consumers and professionals throughout the United States of America and numerous foreign countries. Benjamin Moore is the licensee of all rights to the BENJAMIN MOORE Mark and has used variations of the BENJAMIN MOORE Mark in connection with the sale of paints and related products continuously since 1953.
Complainants allege that Benjamin Moore has made exclusive use of the BENJAMIN MOORE Mark and has expended substantial efforts and sums of money to advertise and promote its products under this trademark, with the result that the BENJAMIN MOORE Mark has become well-known among consumers, who have come to associate it with Benjamin Moore and to recognize Benjamin Moore as the exclusive source of paint and coating products sold under the BENJAMIN MOORE Mark. Benjamin Moore has developed for itself and its BENJAMIN MOORE Mark substantial goodwill and an excellent reputation among actual and potential purchasers and users of its products.
Complainant Benjamin Moore owns the domain name <www.benjaminmoore.com>, which it uses to host a website to communicate with the public about Benjamin Moore and its products.
(1) Identical or Confusingly Similar
Complainants allege that the Domain Name incorporates wholesale the well-known BENJAMIN MOORE Mark, merely interposes within the BENJAMIN MOORE Mark the letter “e”, is confusingly similar to Benjamin Moore’s own domain name <www.benjaminmoore.com>, and is so clearly similar to the BENJAMIN MOORE Mark that it is likely to cause confusion among purchasers of Benjamin Moore paints and the consuming public.
(2) Rights or Legitimate Interests
The Complainants assert that the Respondent has no right or legitimate interest in the BENJAMIN MOORE Mark or in the Domain Name. They state that they are not affiliated in any way with Respondent and have never authorized Respondent to register or use the domain name at issue or the BENJAMIN MOORE Mark, and that Respondent has no trademark rights in the BENJAMIN MOORE Mark or the term Benjaminemoore. Upon information and belief, they allege, Respondent is not commonly known by the name “Benjamin Moore”, “Benjamin E. Moore,” or any variation thereof. The Complainants’ adoption, use and registration of the BENJAMIN MOORE Mark in the United States and elsewhere precedes Respondent’s registration of the domain name at issue on November 27, 2005. Moreover, they contend, given the widespread publicity and fame of the BENJAMIN MOORE Mark as applied to paint and related products and given the repeated references to painting-related activities (e.g., links labeled “House paint colors” and “Interior house paint”) on the Domain Name website, Respondent must have had knowledge of Complainants’ famous BENJAMIN MOORE Mark prior to the registration of the Domain Name.
Complainants further argue that the Respondent cannot claim that it is using the Domain Name in connection with the bona fide offering of goods and services, nor with a legitimate non-commercial or other fair use, because the evidence shows that Respondent is using the misleading Domain Name for a for-profit site that collects fees for click-through traffic by Internet users and includes pay-per-click links to Complainant Benjamin Moore’s competitors. According to the Whois printout attached as Exhibit 1 to the Complaint, the DNS settings for Respondent’s Domain Name are listed with “Hitfarm.com,” a service provider that offers pay-per-click advertising portals. Thus, Complainants contend, Respondent has been diverting Benjamin Moore’s customers to Respondent’s for-profit search engine website, which misuses and infringes the BENJAMIN MOORE Mark, features revenue-generating links relating to paint and painting-related goods and services, and includes pay-per-click links to websites offering for sale paint products that directly compete with Benjamin Moore’s paint products. Complaint, Exhibit 5 (excerpts from Respondent’s Domain Name website). Thus, Complainants contend, there is no evidence that Respondent has any right or legitimate interest in the Domain name.
(3) Registration and Use in Bad Faith
Complainants argue that under paragraph 4(b)(iv) of the Policy it is bad faith to register and use a domain name to intentionally attract Internet users to a respondent’s site for commercial gain “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the respondent’s site or “of a product or service” on the respondent’s site. Here, they assert, Respondent has registered and is using the Domain Name intentionally to misdirect and divert customers looking for information about Benjamin Moore and its products to Respondent’s for-profit search portal which links to various websites offering Benjamin Moore’s products as well as non-Benjamin Moore products that are in direct competition with Benjamin Moore’s products. They assert that this creates a likelihood of confusion with Benjamin Moore’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s search portal, the websites to which Respondent’s site links visitors, and the non-Benjamin Moore products offered on those sites. According to Complainants, the Respondent’s purposefully deceptive use of the Domain Name anticipates, relies on and profits from this consumer confusion or mistake, and constitutes bad faith use of the domain name under the Policy.
Neither Respondent submitted any reply to the Complainants’ contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith. Policy, paragraph 4(a).
The Policy, in paragraph 4(c), sets forth various ways in which the evidence may show that a respondent has rights and legitimate interests in the domain name, and, in paragraph 4(b), also sets forth various circumstances that can constitute evidence of registration and use in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided evidence of their rights to the BENJAMIN MOORE Mark, and the Respondent has neither objected nor provided any evidence in opposition.
The Domain Name consists of nothing more than Complainants’ BENJAMIN MOORE Mark plus the letter “e” and the suffix “.com”. Here, as has been held in numerous cases, the formation of a domain name by the mere addition of a single letter to Complainants’ widely known trademark is not sufficient to preclude a finding of confusing similarity. See, e.g., CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493 (<careeerbuilder.com> confusingly similar to complainant’s CAREERBUILDER mark and <careerbuilder.com> domain name); Planetrx.com, Inc. v. Intertainment, Inc., Nat. Arb. Forum Case No. 92973 (<planetrxx.com> confusingly similar to PLANETRX trademark). Nor does the addition of the “.com” suffix diminish the similarity.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainants have rights, within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants state that they have not licensed or otherwise authorized Respondent to register any domain name incorporating the BENJAMIN MOORE Mark and allege that Respondent has no independent rights or interests with respect to the Domain Name. The Domain Name resolves to a commercial website with advertisements and sponsored links to other commercial websites selling paint and paint-related services, some in competition with Complainant Benjamin Moore. Such use of Complainants’ BENJAMIN MOORE Mark does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. “Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or service.” Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.
Nor does such use constitute a “legitimate noncommercial or fair use under Paragraph 4(c)(iii) of the Policy. See LTD Commodities LLC v. Mahmoud Nadim, Nat. Arb. Forum Case No. FA0311000207281 (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii), because it routes unsuspecting Internet users, who are seeking Complainant, to a website containing a series of links to commercial sites, presumably for referral fees”). The panel in Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021 addressed this issue: “Based on the evidence presented, the Panel can only conclude that the disputed domain name has been and is being used for diverting Internet users to sponsored links. The purpose of using the Complainant’s broadly recognized UNILEVER trademark in the <unilevericecream.com> domain name has been and is to capture consumers who are seeking the Complainant’s products, or other information about the Complainant, and to redirect them to other websites. The Panel does not consider such use of a domain name to be either legitimate or in good faith”.
Respondent has not asserted any right or interest and has presented no evidence in opposition to Complainants’ assertions in this regard. “[W]here Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416.
For these reasons, the Panel finds that Complainants have proved that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that Complainants have shown bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Domain Name leads to a website consisting of advertisements and sponsored links to various sellers of paint and paint-related services, including competitors of Complainant Benjamin Moore. It thus appears that Respondent has used the Domain Name in order to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products or services offered there. As stated in Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. 2003-0640, “the Respondent’s domain name points to a website which is a mere collection of links to other websites…[T]his website is obviously merely a vehicle for generating advertising revenue. By using the domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks. Policy, paragraph 4(b)(iv) is therefore satisfied”.
In Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, the panel agreed that such activity constitutes bad faith: “As regards Respondent’s use of the domain names, it appears that under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078, ‘it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.’ Therefore…it seems evident that the Respondent has registered and used the domain names with the intent to attract to his websites Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links.” Similarly, in Bilfinger Berger AG v eService Finance Dept., WIPO Case No. D2003-0827, the Panel noted that “it appears that the Respondent, by using the Domain Name…tried to attract consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant. […] The websites to which the links in the directory resolve are commercial sites”.
In the instant case, the Complainants have shown that the Respondent’s Domain Name has been registered and used with Hitfarm.com, a service provider that offers pay-per-click advertising portals. Complaint, Exhibit 1. Where a domain name is confusingly similar to the complainant’s trademark, a conclusion of bad faith registration and use for commercial gain under paragraph 4(b)(iv) of the Policy is “corroborated by the fact that the domain name is parked with a domain server operated by a company, which, on its website, promises easy revenues and offers sponsored links to domain name holders parking their domain names there”. Authorize.Net Corporation v. Services LLC, WIPO Case No. D2007-0021 (transferring autorize.net domain name using Hitfarm website service to complainant).
Respondent has failed to submit any evidence in rebuttal to the evidence submitted by Complainants, and the Panel therefore finds that the registration and use of the Domain Name as set forth above constitute bad faith within the meaning of the Policy, paragraph 4(b)(iv).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <benjaminemoore.com> be transferred to the Complainants.
Dated: July 25, 2007