Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

On March 28, 2000, the WIPO Arbitration and Mediation Center received from Complainant, Georgia Gulf Corporation, a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

The instant Administrative Proceeding was commenced on April 5, 2000. Pursuant to Administrative Order No. 1, dated May 10, 2000, the due date of the Panel’s decision was extended from May 15 to June 14, 2000, in order to permit Respondent to file a response to Complainant’s "Additional Filing to Complaint." Such a response was filed and has been considered by the Panel.

The domain name in dispute is "georgiagulf.com".

Complainant has been using the mark GEORGIA GULF since Complainant’s inception in 1984. The mark is used by Complainant on commodity chemicals, particularly compounding resin, resin and compound resin.

Complainant has not registered the GEORGIA GULF mark with the U.S. Patent and Trademark Office, although it recently filed an application for registration of the mark.

Respondent registered the domain name in dispute on January 4, 1999.

Respondent’s principal and administrative contact, Michael Ross, is an officer of Roscom, Inc., which is a competitor of Complainant.

Respondent does not use the domain name to offer or sell any goods or services on the Web site established under the domain name in dispute. Rather, Respondent merely displays thereon that the domain name "www.georgiagulf.com" has been reserved and offers its principal’s e-mail address -- mross@T5trading.com -- as a contact for further information. See Annex D to Complaint.

Respondent also has registered the domain names www.bayshorevinyl.com and www.hoffmanplastics.com. Bayshore Vinyl Compounds, Inc. and Hoffman Plastics, Inc. also are competitors of Roscom, Inc. Respondent does not conduct any business under these domain names, but, merely, as with regard to "wwwgeorgiagulf.com", indicates that the domain names have been reserved and offers Michael Ross’ e-mail address as a contact for further information. See Annexes F and G to Complaint.

Upon being informed of the filing of Complainant’s Complaint, Michael Ross, on March 28, 2000, sent an e-mail to Complainant offering to sell the domain name in dispute to Complainant for $36,000.

In the instant administrative proceeding, Complainant must prove each of the following elements: (1) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) that Respondent has no rights or legitimate interests in respect of the domain name in dispute; and (3) that Respondent registered and use the domain name in dispute in bad faith. The Panel determines that Complainant has met its burden.

Respondent’s domain name is identical to Complainant’s GEORGIA GULF mark. The evidence also establishes that Complainant, through long use of GEORGIA GULF in connection with commodity chemicals, has rights in the mark. There is no requirement, at least under U.S. law, for a mark to be registered before rights attach. Rather, under U.S. trademark law, rights attach upon use of the mark in commerce. Moreover, contrary to Respondent’s contention (see paragraph 15 of Response and paragraph 7 of "Response to Complainant’s Answer to Respondent’s Response"), there is no requirement under U.S. trademark law that a term be "uniquely" associated with a source or that one have "universal" rights to a term before rights accrue.

The Panel further determines that Respondent has no rights or legitimate interests in the domain name in dispute. In paragraph 12 of its Response, Respondent admitted that "it had not yet made use of the domain name, and is currently warehousing it." There also is no evidence that Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name.

In its "Response to Complainant’s Answer to Respondent’s Response," Respondent cited the decision of the Administrative Panel in Penguin Books Ltd. v. The Katz Family and Anthony Katz, (WIPO Case No D2000-0204) (May 20, 2000), for the proposition that the warehousing of a domain name constitutes noncommercial or fair use of the name without intent for commercial gain to misleadingly divert consumers or to tarnish the mark of the Complainant, within the meaning of paragraph 4. c. (iii) of the Policy. The instant Panel has reviewed the decision in Penguin Books and concludes that it does not support the proposition for which it was cited. While the Penguin Books panel found that the respondent in that case had established a legitimate interest in the domain name, it did so solely on the grounds that respondent had, for many years, been known by the nickname "Penguin."

Finally, there is more than ample evidence of "bad faith" registration and use. The panel’s decision in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc v. Shane Brown, d/b/a Big Daddy’s Antiques (WIPO Case No. D2000-0004) (Feb. 16, 2000), cited by Complainant at paragraph 7(d) of its "Answer," is instructive. In that case, the panel found bad faith where, after the respondent received notification of the complaint, it offered to sell the domain name to the Complainant/trademark owner for an amount in excess of costs. In addition, the finding of bad faith was based on the respondent’s failure to make use of the domain name during the time it owned the name. As noted above, in this case, Respondent offered to sell the domain name to Complainant for $36,000, far in excess of its documented out-of-pocket costs, after learning of the filing of the Complainant, and also failed to make use of the domain name.

The evidence also established that Respondent registered the domain name to prevent Complainant from reflecting the mark in a corresponding domain name and that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4. b. (ii) and (iii) of the Policy. Respondent, the evidence reveals, has engaged in a pattern of registering domain names corresponding to the names of competitors 1 for the sole purpose of obtaining business leads.

In view of the above, the Panel orders that the contested domain name be transferred to Complainant.

Jeffrey M. Samuels
Panelist

Dated: June 14, 2000

Footnotes:

1. While Respondent Ross Group, technically, may not be a competitor of Complainant or of Bayshore Vinyl and Hoffman Plastics, Respondent’s contact, Michael Ross, is an officer of Roscom, Inc. which does compete with these entities. Under such circumstances, the Panel concludes that Respondent may be considered a "competitor" within the meaning of paragraph 4. b. (iii) of the Policy.