Complainant is Jerry G. Roper of Payson, Utah, United States of America ("US").
Respondents are Dave Chretien and Color Spot Carpet of Torrance, California, US. 2. The Domain Names and Registrar
The disputed domain names and (collectively, the "Domain Names", individually, the "Domain Name") are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2014. On May 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that Dave Chretien is listed as the registrant for the Domain Name and Color Spot Carpet as the registrant for the Domain Name , and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint and an amendment to the Complaint on May 27, 2014, and June 2, 2014, respectively.
The Center verified that the Complaint together with the amendment to the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 Respondents of the Complaint, and the proceedings commenced on June 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2014. On June 23, 2014, Respondents requested an extension of the Response due date. On June 24, 2014, Complainant objected to Respondents' request. On June 25, 2014, the Center informed Respondents that the request for extension of the Response due date was denied given that there did not appear to be exceptional circumstances to justify an extension. On June 25, 2014, Respondents submitted an informal late Response. On June 26, 2014, the Center acknowledged receipt of the Response and informed Respondents that it would be in the Panel's sole discretion whether to admit and/or consider the late-filed Response.
On June 30, 2014, the Center invited Complainant to submit a suspension request. On the same day Complainant informed the Center that it was "not in favor of having a suspension". On July 1, 2014, the Center informed the parties that it would proceed with appointment of the administrative panel.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 2, 2014. 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 registered the domain name on October 13, 2000 and Respondents registered the Domain Name and the Domain Name on December 21, 2012. Respondent Chretien had a website which used the domain name until approximately 2012.
The Domain Names resolve to Respondents' website on which carpet stain repair services are offered. 5. Parties' Contentions A. Complainant
In October 2000, Complainant began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added. Complainant contends he sold that system using the domain name and used the phrase "bleach stain carpet repair" in describing the process. In March 2003, Complainant received a United States patent on the process (U.S. Patent No. 6,533,824 ('824 Patent)) - Method for Restoring Original Color to Bleached Regions of Nylon Carpets). Complainant explains that the cause of color loss or discoloration can occur as a result of many different chemicals that come in contact with the carpet, and that he repairs these either by selling the consumer a Color Repair Kit or having a professional repair the carpet using our system. According to Complainant, the patented system is sold throughout the world with many positive independent reviews, including selling on Amazon and eBay, with a high rating.
Complainant asserts that "B" has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years. The use of the domain name does not describe what Complainant does nor does it accurately describe discoloration of a carpet. Complainant chose this domain name from the phrase "bleach stain carpet repair". Complainant used this phrase to distinguish himself from the competitor at the very startup of his business. The "Bleach Stain" word usage greatly increased after Complainant advertised the term "Bleach Stain Carpet Repair. Bleach spills, bleached out spots and bleach marks were the common terminology in describing carpet color loss, according to Complainant.
Because Complainant was involved in the bleaching of stains and not just dyeing spots with an eyedropper, Complainant used the term "bleach stain carpet repair" as a name for his business. This phrase relates to bleaching out impossible stains and then color correcting the area. This is mentioned in the '824 Patent.
Complainant's domain name is unique in that it is the only carpet dye company selling a patented process for carpet color restoration. Complainant's method has changed the industry and the way carpet color repair is preformed worldwide. Complainant was the first company to sell and advertise carpet color repair for the homeowner. Shortly after starting business in 2001 Complainant's website stated in part:
"(It is our opinion that bleach stain repair is a growing field and will continue to grow, largely ignored in the past. One of the reasons for growth is the recognition that has taken place when bleach stains are dyed correctly. When performed correctly, it is impossible to tell where the stain had occurred . This in itself would be reason enough; for to replace sections of a carpet is not always practical, nor is the appearance always acceptable. A bleach stain should always be dyed first. If this should fail, which is rare, then plugging or cutting a section and replacing it should be performed.
Another reason for growth is the recognition of partial bleach stains. These occur when one of the three primary colors is missing in a small degree. All shades and colors of carpet on the market today are composed by combining a different ratio of only three primary colors. All it takes is a slight amount of any one of these colors missing to produce a partial bleach stain. This occurrence is very frequent in the off white and lighter colored carpets popular today.
According to Complainant KIK CUSTOM PRODUCTS makes a variety of consumer products (e.g., shampoos, soaps, body lotions, sunscreens, household bleach, and cleansers) that can remove color from a carpet. Complainant claims that KIK CUSTOM PRODUCTS has recommended and will continue recommending "" to their consumers for color correction of stains caused by these products.
"We would like to extend our sincerest compliment to you and your company for being instrumental in satisfying numerous consumers over the past 12 years. Your color correcting kit has been successfully used by consumers to restore the color loss to their carpeting with very positive results, even calling it a "magic wand". We thank you for your excellent service and will continue to use your product for years to come.
Many thanks,
[…] | Consumer Claims Supervisor | [KCP Logo] | 33 MacIntosh Blvd. |
Concord, Ontario L4K 4L5 | 1 (800) 479 6603 ext 200684|
[…]@
Complainant states he has targeted his advertising towards the homeowner and non-professional. Thus, his business is ranked higher on Google listings, usually within the first five listings, than Complainant's competitors.
Complainant contends he had a unique business that clearly defined his product and service for the consumer. Complainant further contends that there is now a great amount of confusion from consumers regarding services offered by and . Not only are the domain names similar in sound and spelling but Respondents have recently used the term, "carpet bleach stain repair" in most of their advertisement listings, according to Complainant. Within the last year, Respondents have produced 23 YouTube videos with most of these having the title "carpet bleach stain repair". Respondents' use of the term "Carpet Bleach Stain Repair" and the domain name has greatly increased the confusion amongst consumers.
The Meta Description and website titles for Respondents are both listed as "Carpet Bleach Stain Repair". A search engine will also bring up both sites with similar keywords in close proximately. Many consumers mistakenly go to Respondents' website believing that the companies are the same. Complainant often receives calls from consumers who are confused.
Complainant contends that Respondents have no rights or legitimate interests in the Domain Names. Respondent Chretien does not have any rights superior to the common law rights of the name "", in the United States or elsewhere. Complainant has not granted him a license to use Complainant's name or system. Respondent Chretien does not have a business license, a registration of a business name for "", or any other business name within the state of California. His website states the name of his business as "". He also does not have a listed business phone number. The number posted on his website is a mobile phone number. Respondent Chretien is not listed with the better business bureau. When entering information with BBB in his area, information for "" shows up as Complainant's business 570 miles away. He is not known anywhere except for the website which is confusingly similar to Complainant's site. Respondent Chretien's previous website "www." has been totally abandoned. In viewing that website from Jan 24, 2002, using the WayBackMachine, it states Respondent's process is for fixing small bleach spots. Nothing indicates the usage of the term "Bleach Stain Carpet Repair". Respondent Chretien also had a carpet spot dye business called "color spot carpet service" that is no longer active and is never brought up in his written experiences. This also does not use the term "bleach stain carpet repair". He claims to have been associated with for 25 years on his Facebook, titled Bleach Stain Carpet Repairs and LinkedIn without acknowledgement of any previous business. Respondent Chretien has only owned from April of 2006.
Complainant contends that Respondents registered and are using the Domain Names in bad faith. Respondent Chretien knowingly registered the Domain Name in 2006 with an actual awareness of a confusingly similar name prior to registration. He would surely know Complainant and Respondents were competitors for six years. He had a website prior to "www." using and a business name called "Color Spot Carpet Service". Respondent Chretien's focus was on the repair of small carpet spots. He did not refer to his services as "bleach stain carpet repair". He acquired as a means of creating confusion amongst the consumers for financial gain. Respondent Chretien registered in 2006 but did not have a website associated with that name until 2010. He had directed to from 2007 until 2010. The name server for had the same IP address as . If a consumer made the mistake of making plural, then it was directed to Respondents' website. It is abundantly clear that was registered to gain financially from . B. Respondents
Respondents did not submit a timely response to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Late Filed Response
Respondents offered no credible reason why they could not have filed a response on time, thus the informal document they filed late has not been considered by the Panel. B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Names are identical or confusingly similar "to a trademark or service mark in which Complainant has rights." Here Complainant is relying on alleged common law rights in his domain name . On the record here, the Panel finds that Complainant has failed to demonstrate the requisite trademark rights in "".
In its Complaint, Complainant states that his domain name has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO 2.0"), at paragraph 1.7 (emphasis added), to prove common law rights:
"The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. . . . . However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness..."
Complainant argues that the use of the domain name does not describe what his company does nor does it accurately describe discoloration of a carpet. In fact "" describes an important aspect of what Complainant's company does and Complainant's arguments actually demonstrate that. For example, Complainant explains that he chose his domain name from the phrase "bleach stain carpet repair" which he used to distinguish his company from a competitor at the inception of his business. He goes on to explain that his business was involved in the "bleaching of stains" thus he used the term "bleach stain carpet repair" as the name for his business. Complainant further explains that the phrase relates to bleaching out impossible stains and then color correcting the area and that this is mentioned in the '824 Patent. In fact the Patent confirms this, for example in the Abstract it states: "The method can also be employed to repair stained areas of a carpet by simply bleaching the stained area and redyeing the bleached area." Complainant claims that "" is unique in that it is the only carpet dye company selling a patented process for carpet color restoration and that its method has changed the industry and the way carpet color repair is preformed worldwide. Even if Complainant's business and patented process of bleach stain carpet repair are distinctive in the relevant industry, that distinctiveness does not in turn make the otherwise highly descriptive term "" into a distinctive term in the trademark sense. Thus, without having an inherently distinctive mark the onus on Complainant is greater to present compelling evidence of secondary meaning or distinctiveness of "". That he has not done.
Complainant alleges that in October 2000, he began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added. He sold that system on a website having the associated domain name . On the portion of the website provided to the Panel from the WayBackMachine, the only use of "" was as a domain name, not a trademark. Complainant also alleges on that early website he used the phrase "bleach stain carpet repair" in describing the process. Indeed, he did use that descriptive phrase to describe a "NEW and Improved method for restoring color to regions of missing color on nylon carpet." The phrase "bleach stain carpet repair" was not used as a trademark on the website. Complainant did not provide the Panel with evidence of its use of "" for the last thirteen years on his company website. If the use is akin to its early usage, then it is solely as a domain name and not as a trademark. Looking at the current website, the only use of "" is as the website's domain name and in Complainant's email address: "[…]@". On the Home Page the question is posed: "Have you been searching for a way to repair your bleach stained carpet? … we will help you fix your stained carpet, so it will be back to its original color that it once was when you purchased it." On the Products Page it states: "Unlike most other products that repair bleach coloring stains, our product does not require the consumer to mix or match dyes. There are no color charts used in our repair process. We have made it very simple for everyone to use, since our process restores only the lost ratio of the missing primary color." Accordingly, as used on Complainant's website, "bleachstain" describes Complainant's business and at least one of its products – getting rid of bleach stains on carpets. That term alone or with ".com" has not been used as a trademark.
Complainant points to a company called KIK CUSTOM PRODUCTS that makes a variety of consumer products, which can remove color from a carpet. The company has recommended Complainant's bleach stain removal product to their consumers for color correction of stains caused by their products. Regardless of the success KIK's customers might have had with Complainant's product this complement does not establish that "" has become a distinctive mark. Complainant also claims that its patented system is sold throughout the world with many positive independent reviews, including selling on Amazon and eBay, with a high rating. These conclusory remarks also are not evidence to prove any use of "" as a trademark.
Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Because Complainant has not carried his burden on this element, the Panel need not decide whether Complainant has met his burden on the other elements. 7. Decision
For the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Sole Panelist
Date: July 7, 2014
Full & Egal Universal Law Academy