Owens Corning Fiberglas Tech-nology, Inc v. Hammerstone

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Owens Corning Fiberglas Technology, Inc v. Hammerstone

Case No. D2003-0903

1. The Parties

The Complainant is Owens Corning Fiberglas Technology, Inc, Illinois, United States of America,

represented by Dinsmore & Shohl LLP, United States of America.

The Respondent is Hammerstone, Fredericksburg, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cultured-stone.com> is registered with Network Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on November 12, 2003. On November 13, 2003, the Center transmitted

by email to Network Solutions, Inc. a request for registrar verification in

connection with the domain name at issue. On November 18, 2003, Network

Solutions, Inc. transmitted by email to the Center its verification response

confirming that the Respondent is listed as the registrant and providing the

contact details for the administrative, billing, and technical contact. The

Center verified that 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 November 19, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

December 9, 2003. The Response was filed with the Center on December 2, 2003.

The Center appointed Jeffrey M. Samuels as the Sole Panelist in this matter

on December 15, 2003. 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 Owens-Corning Fiberglas Technology, Inc. is a holding company owned

by Owens-Corning. Owens-Corning is a well-known industry leader in the field

of building materials and related products. Owens-Corning acquired Cultured

Stone in 1997. Cultured Stone is one of the world’s leading makers of manufactured

stone veneer, selling its product in over twenty (20) countries. Hundreds of

precast stone veneers and related products make up the CULTURED STONE line,

all of which are sold under the CULTURED STONE mark. These goods are sold not

only by Owens-Corning, but also by authorized dealers across the U.S. and other

countries.

Complainant owns a number of trademarks, including the mark CULTURED STONE,

as used since July 1969, in connection with manufactured stone veneer. The mark

is the subject of U.S. Trademark Registration No 925,359, which issued on December 14, 1971.

Respondent registered the domain name in dispute, <cultured-stone.com>;

with Network Solutions, Inc. on December 5, 2002. On August 28, 2003,

Owens-Corning sent a letter to Respondent via "Certified Mail" asserting

that the registration and use of "www.cultured-stone.com" violates

Complainant’s rights.

5. Parties’ Contentions

A. Complainant

Complainant contends that the <cultured-stone.com> domain name is confusingly

similar to Complainant’s registered mark CULTURED STONE, given that they differ

only in that the domain name uses a hyphen instead of a space between the terms

CULTURED and STONE and that the domain name includes the top-level domain ".com."

Complainant further asserts that Respondent has no legitimate rights in the

disputed domain name. It alleges that the domain name is not associated with

Respondent’s own web page but instead is used to redirect Internet users to

Respondent’s home page at "www.hammerstone.net." Respondent advertises

its goods, including veneer stone products, at this site.

It is also maintained by Complainant that Respondent is not commonly known

by the domain name or any portion thereof, that Complainant has never assigned,

sold, or transferred any rights in its CULTURED STONE mark to Respondent or

granted permission to Respondent to use or register the CULTURED STONE mark

as a domain name, and that, prior to notice of this dispute, Respondent was

not using the domain name in connection with a bona fide offering of

goods or services. Finally, Complainant asserts that Respondent is not making

a legitimate noncommercial or fair use of the domain name.

With respect to the issue of "bad faith" registration and use, Complainant

asserts that Respondent had both actual and constructive knowledge of Complainant’s

CULTURED STONE mark at the time the domain name was registered. Complainant

further argues that Respondent registered the domain name primarily for the

purpose of disrupting the business of a competitor, i.e., Owens-Corning, and

that Respondent registered and is using the domain name in an intentional attempt

to attract Internet users to its website by creating a likelihood of confusion

with Complainant’s mark as to the source, sponsorship, affiliation or endorsement

of Respondent’s website and the products advertised thereon.

B. Respondent

In its Response, Respondent points out that its masonry division, HammerStone

Masonry, installs all brands of manufactured stone, including Owens-Corning.

The disputed website, it contends, is owned and intended for use to legitimately

showcase its masonry work of all cultured stone products. Respondent contends

that it is "appropriate, legitimate and lawful" to promote its masonry

work and to reference all the masonry products it installs.

Respondent further argues that the term "cultured stone" is generic

and that such term has been used by Respondent and others for over 30 years,

predating Complainant’s date of first use.

Respondent disputes Complainant’s contention that the disputed website diverts

customers from purchasing Complainant’s products, noting that Respondent bids

on projects, not products. According to Respondent, "[m]ost inquiries are

requests for masonry labor, and the product has already been specified by plans.

To change those plans and substitute another product is impossible. HammerStone

Masonry in fact purchases Cultured Stone brand products when the project specifies

them, which gets to the real reason [HammerStone] Masonry established the ‘www.cultured-stone.com’

website."

Respondent accuses Complainant of having established an anticompetitive, monopolistic

distribution system in Virginia. According to Respondent, Owens-Corning distributors

have caused HammerStone Masonry to lose many projects by failing to provide

timely delivery of product and/or samples. "HammerStone Masonry established

the "www.cultured-stone.com" website to sell masonry services

against a monopolistic, closed distribution channel established by [Owens-Corning].

It did NOT, nor does it today, sell competitive products."

6. Discussion and Findings

A. Identical or Confusingly Similar

There appears to be no dispute, and the Panel finds, that Respondent’s domain

name, <cultured-stone.com>, is confusingly similar to Complainant’s mark

CULTURED STONE. The addition of a hyphen and the top-level domain designation

"com" are not sufficient to avoid the conclusion that the domain name

and mark are confusingly similar. (See, e.g., Rolls Royce PLC v. Hallofpain,

WIPO Case No. D2000-1709 (February 19, 2001)

(stating that "[t]he use or absence of punctuation marks, such as hyphens

and spaces, does not alter the fact that a domain name is identical to a mark");

Busy Body, Inc. v. Fitness Outlet Inc., WIPO

Case No. D2000-0127 (April 22, 2000) (stating that "the addition

of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance

since use of a gTLD is required of domain name registrants").

Respondent, however, does appear to dispute that Complainant has any rights

in the term "Cultured Stone," contending that the term is generic.

The Panel notes, however, that Complainant owns a registration for the mark

CULTURED STONE and that such registration carries with it a presumption[1]

that the mark is valid, i.e., not generic. While the Response indicates that

Respondent commissioned a survey on the issue of whether "Cultured Stone"

is generic, the results of such survey were not presented to the Panel. Giving

due deference to the determination of the United States Patent and Trademark

Office, the administrative agency charged with responsibility for determining

the registrability of marks, and in the absence of any evidence to the contrary,

the Panel concludes that Complainant has rights in the mark CULTURED STONE.

B. Rights or Legitimate Interests

The Panel concludes that Complainant has established that Respondent does not

have rights or legitimate interests in the subject domain name. First, the Panel

concludes that Respondent is not using the domain name in connection with a

bona fide offering of goods or services. Panel decisions are legion

to the effect that use of a domain name that is either identical or confusingly

similar to Complainant’s mark renders such use illegitimate. See, e.g., Chase

Manhattan Corp. v. John Whitely, WIPO

Case No. D2000-0346 (June 12, 2000); Chanel, Inc. v. Estco

Technology Group, WIPO Case No. D2000-0413

(September 18, 2000) (stating that "the Panel finds that, in

order for [r]espondent’s Internet business to be ‘legitimate’ under the Policy,

it must make non-infringing use of [c]omplainant’s world-famous trademark.")

Further, the Panel finds no evidence that Respondent is commonly referred to

by the challenged domain name or that it is engaged in noncommercial or fair

use of the name. With respect to the latter, the evidence indicates that the

domain name is used to redirect Internet users to Respondent’s home page and

to promote the products advertised there[2].

C. Registered and Used in Bad Faith

Finally, the Panel concludes that Complainant has established that the domain

name was registered and is being used in "bad faith." While Respondent

maintains that it does not sell products that compete with Complainant’s products,

the evidence, in particular Exhibit 5 to the complaint, demonstrates otherwise[3].

Thus, the Panel holds that Respondent registered the domain name "primarily

for the purpose of disrupting the business of a competitor," within the

meaning of paragraph 4(b)(iii) of the Policy.

The evidence also indicates, and the Panel so holds, that Respondent uses the

domain name in an intentional attempt to attract, for commercial gain, Internet

users to its "hammerstone.net" site by creating a likelihood of confusion

with Complainant’s CULTURED STONE mark as to the source, sponsorship, affiliation,

or endorsement of the website, within the meaning of paragraph 4(b)(iv)

of the Policy. That is to say, consumers are likely to believe, based on Respondent’s

use of the <cultured-stone.com> domain name, that such site and/or the

"hammerstone.net" site, have some relationship with Complainant.

There is also other indications of "bad faith" in this case, including

Respondent’s apparent failure to ever respond to Complainant’s letter of August 28, 2003.

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 <cultured-stone.com>

be transferred to the Complainant.

Jeffrey M. Samuels

Sole Panelist

Dated: December 29, 2003

1. See Section 7(b) of U.S. Trademark Act,

15 U.S.C. §1057(b).

2. Respondent concedes, in its Response,

that such a link was established but was to have been discontinued on November

13, 2003. However, according to Respondent, the website has been frozen by Network

Solutions, Inc. pending the outcome of this proceeding.

3. Exhibit 5 is a printout from the website

located at "www.hammerstone.net." This is the site Internet users are redirected

to when they search for the "cultured-stone.com site." The "hammerstone.net"

site notes that HammerStone is the source of concrete stone products, including

veneer stone.