DECISION

Kryton Marketing Division, Inc. v. Patton General Contracting

Claim Number: FA0208000123868

PARTIES

Complainant is Kryton Marketing Division, Inc., Knoxville, TN (“Complainant”) represented by William Y. Klett, III, of Nexsen Pruet Jacobs & Pollard, LLC.  Respondent is Patton General Contracting, Summerville, SC (“Respondent”) represented by Alice F. Paylor.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <liquidsiding.com>, registered with Domain Registration Services.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Daniel B. Banks, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2002; the Forum received a hard copy of the Complaint on August 26, 2002.

On September 10, 2002, Domain Registration Services confirmed by e-mail to the Forum that the domain name <liquidsiding.com> is registered with Domain Registration Services and that the Respondent is the current registrant of the name.  Domain Registration Services has verified that Respondent is bound by the Domain Registration Services registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@liquidsiding.com by e-mail.

A timely Response was received and determined to be complete on October 1, 2002.

On October 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant:

Complainant holds an exclusive license for use of the federally registered trademark, LIQUID SIDING (U.S. Reg. No. 1,217,180).  This trademark was registered with the U.S. Patent and Trademark Office on November 23, 1982.   This license was obtained from the owner, Kryton Holdings, Inc., a Canadian corporation.  Complainant has used the mark LIQUID SIDING continuously in interstate commerce for 3 years prior to Respondent’s registration of the <liquidsiding.com> domain name.  Complainant markets coatings under the brand names LIQUID VINYL and LIQUID SIDING in the United States. The term LIQUID SIDING is a presumptively distinctive mark as evidenced by its trademark registration and thus is entitled to a broad scope of protection.

Respondent is the owner of a website found at <liquidsiding.com> on which it advertises its coatings, and which infringes on Complainant's LIQUID SIDING mark.  Respondent provides the coatings for sale to retailers and directly to the public.  They compete directly with Complainant's coatings. 

Respondent's use of Complainant's trademark in connection with its website would cause a likelihood of confusion in consumers attempting to find Complainant and its products and services.  Since Complainant's trademark is registered, and has been since 1982, Respondent is charged with constructive notice of the registration.  Respondent selected its domain name with knowledge of the existence of Complainant and the goods and services it provides.  This conduct constitutes bad faith on the part of Respondent.

B. Respondent:

Respondent contends that the domain name is not identical or confusingly similar to a

trademark or service in which the complainant has rights.  ICANN 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).  In particular, Complainant's registered marks violate the Lanham Act which requires that no mark which is merely descriptive or generic be registered.  The validity of Complainant's rights in the mark is already the subject of a pending federal lawsuit in South Carolina. 

Before any notice of the dispute, Respondent used, or demonstrably prepared to use the disputed domain name in connection with a bona fide offering of goods or services.  Respondent purchased its product from a third-party business known as American Vinyl Coatings, Inc., which has marketed this product since the mid-1980's.  Respondent has used the terms Liquid Siding and Liquid Vinyl Siding as part of the legitimate marketing of its product.  Respondent has been commonly known by the domain name and has used the phrase "liquid siding" in it's marketing since the 1990's.

Complainant has failed to offer proof that the disputed domain name was registered and is being used in bad faith under any of the circumstances outlined in ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).

FINDINGS

1 - The disputed domain name is identical to Complainant's registered trademark.

2 - Respondent has rights or legitimate interests in respect of the domain name.

3 - Respondent did not register the disputed domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

     

The disputed domain name <liquidsiding.com> is identical to Complainant's registered trademark LIQUID SIDING in which Complainant has rights.

Rights or Legitimate Interests

Respondent has demonstrated rights and legitimate interests in respect of the domain name.  Respondent has been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since purchasing it from American Vinyl Sidings in the 1990's.

Registration and Use in Bad Faith

Complainant has offered no evidence to support a finding that the disputed domain name was registered or is being used in bad faith.  There is only the bare allegation that, because of the trademark registration of the name LIQUID SIDING, Respondent had knowledge of Complainant's rights in the mark.  That is not sufficient to establish bad faith under the Policy.  It has been held that a party is entitled to capture generic trademark names that become available in the marketplace.  See Canned Foods, Inc. v. Ultimate Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001); First Am. Funds v. Ult. Search, D2000-1840 (WIPO Apr. 20, 2001).

DECISION

Complainant's request that the domain name <liquidsiding.com> be transferred to Complainant is DENIED.  This case is DISMISSED.

Daniel B. Banks, Jr., Panelist
Dated: October 21, 2002

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