Complainants are Benjamin Moore & Co. of Montvale, New Jersey, United States of America and Columbia Insurance Company, of Omaha, Nebraska, United States of America represented by Kaye Scholer, LLP, United States of America.
Respondents are Domains By Proxy, LLC / Domainsbyproxy.Com of Scottsdale, Arizona, United States of America / Kevin Earnest / Real Property Group of Clermont, Illinois, United States of America / Jeff Hogan / Jeffco of Lake Bluff, Illinois, United States of America / Robert S. Aydt / First Capital Asset Group, Inc. d/b/a The Village Paint Shoppe of Maitland, Florida, United States of America, represented by Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name . On April 9, 2015, the Registrar transmitted to the Center by e-mail its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on April 10, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an Amended Complaint on April 15, 2015 adding the Domain Names , , , , , , and to the Complaint. On April 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added Domain Names. On the same date the Registrar transmitted to the Center by email its verification response confirming that Respondents are listed as registrants and providing the contact details.
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” 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 April 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2015. The Response was filed with the Center on May 12, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 20, 2015. 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
Most of the following discussion focuses on the Domain Name , which motivated this dispute and this Complaint under the Policy. The other Domain Names were added to the case after Complainants filed their Complaint and then learned of the other Domain Names.
Complainant Columbia Insurance Company (“Columbia”) owns various BENJAMIN MOORE trademarks, and the sole licensee of such marks is Complainant Benjamin Moore & Co. (“Benjamin Moore”), a paint manufacturer for more than a century. Benjamin Moore has manufactured and marketed paint and related products for several decades under the BENJAMIN MOORE mark. One previous panel in another case under the Policy concluded that the BENJAMIN MOORE mark is “widely known.” See Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry,WIPO Case No. D2007-0741.
Complainant has owned the domain name since March 1996, and operates a website to promote its paint and related products.
Beginning some time in or after 1995, Respondent Robert Aydt (“Aydt”) was a retailer of Benjamin Moore paint products, and Aydt operated a store called The Village Paint Shoppe in Maitland, Florida. Respondent alleges that he registered the Domain Name sometime in 1997 and then “transferred” that Domain Name to the Registrar, GoD, LLC, in 2001. The WhoIs record, however, shows that the Domain Name was first created on December 20, 2001.
The other Domain Names at issue were registered on various dates between August 23, 2008 and August 16, 2013.
Respondent Aydt alleges that Benjamin Moore “was aware of my use of the domain names, and even encouraged my use.” There is some evidence in the record potentially relevant to this allegation, and there is some issue about the parties agreeing in October 2013 that the Domain Name was to be transferred to Complainants in exchange for a USD 5,000 credit. This, however, is all moot because, on March 31, 2015, Respondent Aydt sold the Domain Name to Respondent Kevin Earnest (“Earnest”).
There is no affidavit or other statement from Earnest in the record as respects his motives for purchasing this Domain Name on March 31, 2015. The Response states that “Earnest registered the domain name [] with the intent to license it to Benjamin H. Moore, a certified public accountant in Maitland, Florida.”
Until March 30, 2015, Respondent Aydt directed the Domain Name to a website owned and operated by Complainants’ competitor, Sherwin-Williams. There is no indication or allegation that Sherwin-Williams was aware that this Domain Name was being redirected to its main website.
On March 30, 2015, Complainants sent a letter to Respondent Aydt demanding that the Domain Name be transferred immediately to Complainants.
As noted, on March 31, 2015, one day after receiving the letter from Complainants, Aydt sold this Domain Name to Earnest. Even after this transfer, though, the “Tech Email” address for this Domain Name remains Aydt’s e-mail address. There is evidence in the record that Aydt and Earnest are acquaintances. Thereafter, the Domain Name resolved to a website advertising the services of Accountant Benjamin H. Moore (“Accountant Moore”).
There is no evidence in the record that Earnest and Accountant Moore actually reached some type of agreement whereby this Domain Name would point to Accountant Moore’s website. Nor, indeed, is there any evidence that Accountant Moore is even aware that the Domain Name currently points to his website.
As respects the other Domain Names, the Response alleges that “Aydt acquired all of these domain names with the purpose of selling legitimate Benjamin Moore products and used them as such.” These other Domain Names resolved, according to Complainant, at the time of the filing of the Complaint, to blank pages, except for and , which resolved to parking pages, sponsored by the Registrar and featuring various commercial hyperlinks. This contention has not been disputed by Respondents. 5. Parties’ Contentions A. Complainant
Complainants contend that they have satisfied all three elements required under the Policy for the transfer of each of the Domain Names at issue. Complainants’ salient arguments will be taken up below in context. B. Respondent
Respondents contend that the Domain Names should not be transferred. Respondents’ salient arguments will be taken up below. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Respondents concede that Complainants have rights in the mark BENJAMIN MOORE. Respondents also concede, with respect to each of the Domain Names at issue (even and ) that all of the Domain Names are identical or confusingly similar to the BENJAMIN MOORE mark.
The Panel therefore concludes that Policy paragraph 4(a)(i) has been satisfied for each of the Domain Names. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(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.
As respects the Domain Name , which now resolves to the website of Accountant Moore who, as far as the record goes, does not even know this Domain Name is pointing to his website, the Panel concludes that Respondents (and in particular the current registrant Earnest) have no rights or legitimate interests in respect of the Domain Name. The Panel concludes that Aydt’s transfer of the Domain name to his acquaintance Earnest on March 31, 2015, one day after Complainants’ demand letter, is a ruse, a shell game. The supposed agreement between Earnest and Accountant Moore is not submitted into evidence. Nor, indeed, is there even an affidavit or statement from Earnest himself – a named Respondent in this proceeding. The timing and circumstances of the March 31, 2015 transfer are too suspicious to credit, particularly in the absence of evidence as described above. Moreover, because of the transfer to a new owner on March 31, 2015, and one who (according to the record) is totally unconnected to the paint retail business, all of the past history between Aydt and Complainants, whether true or not, is irrelevant to this Domain Name.
As respects the other Domain Names, the Panel does not believe Respondents’ story. Respondents claim that “Aydt acquired all of these domain names with the purpose of selling legitimate Benjamin Moore products and used them as such.” These Domain Names were registered between August 2008 and August 2013, and they resolved to blank pages, except for and , which resolved to parking pages at the time this proceeding was commenced in April 2015. There is no evidence of actual preparations to use these Domain Names in connection with a bona fide offering of goods or services. Nor is there any explanation why, at least as of March 30, 2015, the main Domain Name at issue actually pointed to the website of Complainants’ major competitor Sherwin-Williams.
Finally, the statement by Respondents that “Aydt acquired all of these domain names with the purpose of selling legitimate Benjamin Moore products” lacks credibility because there is no explanation why Aydt purportedly believed that the Domain Names and would be useful in aid of his retail paint business.
In short, Respondents’ wide-ranging allegations do not add up, their explanations are weak, and their evidentiary support is at turns spotty, irrelevant, or absent. The Panel finds that Respondents have no rights or legitimate interests in respect of any of the Domain Names.
The Panel therefore concludes that Policy paragraph 4(a)(ii) has been satisfied for each of the Domain Names. C. Registered and Used in Bad Faith
With respect to each Domain Name at issue, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted 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 Respondent’s website or location or of a product or service on Respondent’s website or location.
For much the same reason why the Panel found in favor of Complainants under the “rights or legitimate interests” head, the Panel also finds in Complainants’ favor under the “bad faith” head. Respondents’ credibility in this proceeding is slim to none. What we do know is that some of the Domain Names have resolved to parking pages containing sponsored commercial links while other resolved to blank pages. We also know that, for a time, the Domain Name was redirected to the Sherwin-Williams website.
The Panel concludes that Respondent Earnest registered and is using the Domain Name in bad faith by seeking to prolong and support the shell game his acquaintance Aydt is playing with that Domain Name vis-à-vis Complainants.
The Panel concludes that Respondents registered the Domain Names and in order to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the sites to which these Domain Names were pointed. This constitutes bad faith registration and use within the meaning of Policy paragraph 4(b)(iv).
Respondent Aydt argues that the other Domain Names were registered in good faith because “he was a licensed distributor of Benjamin Moore products at the time of registration, and Benjamin Moore even approved of his domain name use.” In support of this proposition, Respondents cite three annexes to the Response, none of which mentions or even alludes to these other Domain Names. As to the remaining additional Domain Names, in light of the overall circumstances, the Panel finds that their passive holding constitutes bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel concludes that Policy paragraph 4(a)(iii) has been satisfied for each of the Domain Names. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , , , , and be transferred to Complainant Benjamin Moore & Co.
Robert A. Badgley
Sole Panelist
Date: May 28, 2015
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