WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Russell & Miller, Inc. v. Store Supply Warehouse, Inc.
Case No.�D2005-0719
1. The Parties
The Complainant is Russell & Miller, Inc., Santa Fe Springs, United�States�of�America, represented by Seyfarth Shaw, United�States�of�America.
The Respondent is Store Supply Warehouse, Inc., Saint�Louis, Missouri United�States�of�America.
2. The Domain Names and Registrar
The disputed domain name is registered with R Services�Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on July�7,�2005. On July�8,�2005, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On July�20,�2005, NameScout informed the Center via email that the domain name in issue is registered with R Corp., a sister corporation, and confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On July�27,�2005, the Center informed Complainant’s counsel that the complaint would have to be amended to identify the correct registrar. On July�27,�2005, Complainant submitted to the Center an “Amendment to the Complaint” identifying the registrar as R Services Corp. The Center, thereafter, verified that the Complaint, together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on July�29,�2005. In�accordance with the Rules, paragraph�5(a), the due date for Response was August�18,�2005. The Response was filed with the Center on August�12,�2005.
The Center appointed Jeffrey�M.�Samuels as the Sole Panelist in this matter on September�7,�2005. 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.
4. Factual Background
Complainant sells, via mail order and the Internet, products for use by retail stores. Complainant has provided these services under the service mark VALUDISPLAY since at least as early as March�24,�2001. Complainant is the owner of U.S. Trademark Registration No.�258022 for the mark VALUDISPLAY, as used for “mail order catalog services directed to retail stores, featuring display products, which hold, retail merchandise”. Complainant also owns the domain name at which Complainant advertises and promotes its goods and services.
Respondent registered the domain name in dispute on May�17,�2003.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name in dispute is identical and confusingly similar to its registered mark VALUDISPLAY, except for the additional letter “e”.
Complainant further argues that Respondent has no rights or legitimate interests in the domain name . According to Complainant, it is not aware of evidence that Respondent has ever used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of services. Complainant also maintains that Respondent is not making a legitimate noncommercial or fair use of the domain name. Complainant points out that the domain name forwards to Respondent’s website at “”, at which Respondent offers for sale, in competition with Complainant, items for use by retail establishments.
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent has registered the domain name in order to divert customers familiar with Complainant’s brand and name to Respondent’s website, where it offers for sale the same types of products as Complainant. Thus, Complainant argues, Respondent has registered and is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on Respondent’s website.
B. Respondent
In its “Response”, Respondent argues that its use of the domain name refers to its competitively priced store displays and store fixtures and is not intended to confuse consumers or steal web traffic from Complainant. Respondent contends that it has the right to attract consumers with a claim of value because that is what it offers and, therefore, its use of is a bona fide use.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is, for all intents and purposes, identical to the registered mark VALUDISPLAY. As Complainant notes, the only difference between the domain name and the mark is that the former includes the letter “e”. However, it is clear that the name and mark would be pronounced the same and that they create the same commercial impression. See Marshalls of Nevada v. Jongsub, FA 495434 (Nat. Arb. Forum, August�10,�2005) (domain name is confusingly similar to MARSHALLS mark).
The Panel further determines that Complainant, through its use and registration of the mark VALUDISPLAY, has rights in the VALUDISPLAY mark.
B. Rights or Legitimate Interests
Respondent’s principal argument centers on the contention that it has a right to use the term “value” in connection with its domain name since it offers its customers a good value. However, Respondent’s domain name is . In the Panel’s view, such name is not merely descriptive of the nature of the goods offered at Respondent’s website and, thus, does not constitute “fair use” of the domain name. Further, the Panel notes that an Internet user who keys in the domain name “www.” is forwarded to Respondent’s website at “”, at which items in competition with those sold by Complainant are offered for sale. Such evidence suggests that Respondent’s primary motivation in adopting and using the disputed domain name was not to accurately describe the nature or quality of its goods but, rather, to trade on the goodwill established by Complainant in its VALUDISPLAY mark. Thus, the Panel further finds that Respondent lacks the requisite good faith to rely on the “fair use” defense.
The Panel also concludes that, given its finding regarding the identity between the disputed domain name and Complainant’s mark, Respondent may not contend that it uses the domain name in connection with the “bona fide” offering of goods or services. See Nikon, Inc. v. Technilab, Inc., WIPO Case No.�D2000-1774 (February�26,�2001) (holding that respondent’s use of trademark owner’s mark to promote and sell competitive goods does not constitute legitimate use).
C. Registered and Used in Bad Faith
The Panel determines that the disputed domain was registered and is being used in bad faith. In the Panel’s opinion, by using the domain name, Respondent intentionally attempted to attract, for commercial gain, internet users to its “” site by leading consumers to the mistaken belief that Complainant is the source of the “www.” site and of the goods offered through the accessing of such site. In reaching this determination, the Panel deems it reasonable to conclude that many consumers will not be familiar with the unconventional spelling of Complainant’s mark and will type in the disputed domain name believing they were accessing Complainant’s site.
7. Decision
For all the foregoing reasons, in accordance with paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: September�16,�2005
Full & Egal Universal Law Academy