Russell & Miller, Inc. v. Store Supply Warehouse, Inc

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 <valuedisplay.com> is registered with Rebel.com

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 Rebel.com 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 Rebel.com 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 <valudisplay.com> at which Complainant advertises and promotes its goods and services.

Respondent registered the domain name in dispute <valuedisplay.com>

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 <valuedisplay.com>. 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 <valuedisplay.com> forwards to Respondent’s website at “www.storedisplay.com”, 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 <valuedisplay.com> 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 <valuedisplay.com> is a bona fide use.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <valuedisplay.com> 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 <marshals.com> 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 <valuedisplay.com>. 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.valuedisplay.com” is forwarded to Respondent’s website at “www.storesupply.com”, 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 <valuedisplay.com> domain name, Respondent intentionally attempted

to attract, for commercial gain, internet users to its “www.storesupply.com”

site by leading consumers to the mistaken belief that Complainant is the source

of the “www.valuedisplay.com” 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 <valuedisplay.com> be transferred to the Complainant.

Jeffrey M. Samuels

Sole Panelist

Dated: September 16, 2005