ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Bayshore Vinyl Compounds, Inc., of Route 522, Tennent, NJ USA 07763.
The Respondent is Michael Ross of 2925 State Road, Croydon, PA USA 19021.
The contested domain name is www.bayshorevinyl.com.
2. Procedural History
The electronic version of the Complaint Form was filed on-line through eResolution's Website on April 18, 2000. The hardcopy of the Complaint Form was received on May 26, 2000. Payment was received on April 18, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 25, 2000. The requested information was received on May 30, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 6, 2000. That date is the commencement date of the administrative proceeding.
3. Factual Background
The Complainant has been operating under the name Bayshore Vinyl Compounds, Inc, for the past fourteen years, that is, since 1986. The Complainant sells all types of specialty flexible vinyl compounds for all uses, including exterior and interior applications and medical application. The Complainant's current domain name is www.bayshorevinylcompounds.com.
The Complainant's current website states that Bayshore Vinyl Compounds, Inc. is part of the Bayshore Group. Another member of the Bayshore Group is said to be Bayshore Rigids LLC.
The Complainant provided no evidence of any trademark or service mark registration or application for or similar to "Bayshore Vinyl."
The Respondent is Michael Ross. The current entry in the WHOIS database for www.bayshorevinyl.com states that the Registrant is "Ross Group" from Boca Raton, Florida. The current administrative contact, as shown in the WHOIS database, is Michael Ross, with the email address email@example.com.
The domain name www.bayshorevinyl.com was first registered in January 1999.
When the panel visited the website www.bayshorevinyl.com, the panel found a single page stating that the website has been reserved, and the message "Please contact firstname.lastname@example.org." This was also alleged in the Complainant's Complaint Form.
(The www.t5trading.com domain name is also registered by The Ross Group, from Boca Raton, Florida. When the panel visited the website www.t5trading.com, the panel found a single page stating "Coming Soon" with Roscom, Inc. in the header.)
The Complaint Form, lodged by the Complainant on 18 April 2000, states that the registrant of the domain name is "Michael Ross of Roscom, Inc." of 2925 State Road, Croydon, Pennsylvania.
Roscom, Inc. of Croydon, Pennsylvania has a website, www.vinylcompounds.com, that states:
"Roscom leads the industry in flexible and rigid PVC (Poly-Vinyl Chloride) manufacturing and distribution. We produce high-quality compounds for a wide array of extruded, injection molding, and sheeting applications including medical, automotive, electronic, construction, and plumbing, just to name a few."
Apart from in the Registrant section of the Complaint Form, there is no mention of Roscom, Inc. in either the Complainant's or Respondent's submissions.
According to the Respondent's Response Form, Michael Ross controls and is owner of "Tektube Group" that manufactures vinyl tubing.
4. Parties' Contentions
The Complainant contends that it is the owner of the common law trademark "Bayshore Vinyl Compounds". The Complainant contends that it has developed considerable goodwill among its customers and a considerable commercial reputation behind its name among buyers and sellers of specialty vinyl compounds. The Complainant states that the Respondent's domain name is confusingly similar to its trademark. The Complainant contends that the Respondent has no legitimate interest in the use of the domain name in commerce. The Complainant also contends that any use of the domain name will severely infringe the Complainant's common law trademark rights and would be actionable under United States' Federal and/or State law.
The Respondent concedes that the Complainant may have acquired a common law trademark for use of the mark "Bayshore Vinyl" in association with "specialty flexible vinyl compounds for all uses, including exterior and interior applications and medical application". However, the Respondent contends that the Respondent does not compete for the same customers, as the corporation controlled by the Respondent, Tektube Group, manufactures and sells vinyl tubing, which is different from specialty flexible vinyl compounds. The Respondent states that although both products involve the same material, raw material and finished goods are dissimilar products. The Respondent states that minimal, if any, overlap exists between the target markets of the Respondent and the Complainant. The Respondent also states that even if some overlap exists, when non-competitive goods are sold to discriminating customers, the mere purchase of goods or services by the same institution does not establish confusion. The Respondent contends that the business customers of the Respondent and the Complainant are sophisticated purchasers that can discern the difference between raw materials and tubing.
The Respondent contends that it has legitimate interests in the domain name and that the domain name was not registered in bad faith as it registered the domain name in anticipation of a marketing promotion including the tagline "from the Bay to the Shore: vinyl tubing from Tektube". It is claimed that Tektube Group markets its product from the San Francisco Bay area to the shores of the Atlantic.
The Respondent contends that it has not used the domain name in bad faith as the Respondent has not made use of the domain name at this time. The Respondent states that is has merely warehoused the domain name and has used a simple web page as a place marker to merely note its warehousing; the domain name is not being used in association with e-mail or in any other Internet capacity. The Respondent contends that a web surfer viewing the notice at the URL would realize that the site is not associated with the Complainant, and such non-association does not constitute infringement.
5. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
The onus of proving these elements is that of the Complainant.
5.1 Identical or confusingly similar to a trademark or service mark
The panel finds that the Complainant is the owner of the common law trademarks "Bayshore Vinyl" and "Bayshore Vinyl Compounds".
The Respondent appears to agree with this finding. The Respondent states that the "Complainant, Bayshore Group, uses Bayshore Vinyl as a tradename for one of its operating units" and that it may have acquired common law trademark rights to "BAYSHORE VINYL".
The Respondent does not contest that the domain name in issue and Complainant's common law trademark are not identical.
The panel finds that the Complainant's common law trademark "Bayshore Vinyl" is identical to the domain name in issue.
As a result, the panel finds that the Complainant has established this element.
The Complainant contends that the Respondent has no legitimate interest in the use of the domain name. The domain name currently resolves to a reservation screen directing visitors to contact Michael Ross at mross@T5trading.com.
The Respondent appears to have no trademark rights in the words "BAYSHORE VINYL" in any country.
The mere registration of a domain name without making preparations to use the domain name for the bona fide offering of goods or services is not sufficient to demonstrate the rights or legitimate interests required by Paragraph 4 (a) of the ICANN Policy. LIBRO AG v. NA Global Link Limited, Case No. D 2000-0186. The fact that the Respondent registered the domain name 18 months ago (compared to use of BAYSHORE VINYL by the Complainant for over 14 years) and has used it as a mere placeholder suggest that the Respondent has no rights in it. Ventura Foods LLC v. Pathi, Case No. AF-0136.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondent's legitimate rights in the domain name. The Respondent does not meet any of the three elements in this paragraph. The Respondent is not commonly known by the name "Bayshore Vinyl". The Respondent is not currently using "Bayshore Vinyl" for noncommercial or fair use. The Respondent has provided no demonstrable evidence of use or preparations to use the domain name in connection with a bona fide offering of goods or services.
The Respondent's assertion that the domain name is an abbreviated version of its intended tagline "from the Bay to the Shore: vinyl tubing form Tektube" is not supported by any evidence of the Respondent's preparations to use the domain name for this purpose. There is no evidence such as business plans, correspondence, reports or other forms of evidence before the panel that show that the Respondent is engaged in any activities to use the domain name for the bona fide offering of goods or services. The tagline does not appear on the website. The domain name has been registered for over 18 months, but has not been used by the Respondent during this period in connection with this tagline. It seems highly unlikely that the abbreviation of the intended tagline to the Complainant's trademark is the result of a coincidence.
In short, the Respondent has not provided any evidence of facts that indicate that it has made preparations to use the domain name for the alleged purpose.
The panel finds that the Complainant has established this element.
5.3 Bad Faith
As stated above, the Complainant has the onus of proving that the domain name has been registered and is being used in bad faith.
Both registration and use in bad faith are required. "Use" is not necessarily use on the Internet (World Wrestling Entertainment Inc. v Michael Bosman, Case No. D99-0001; Sporoptic Pouilloux S.A. v William H. Wilson, Case No. D2000-0265).
The panel concludes that the Respondent has registered the domain name and is using the domain name for the purposes of the ICANN Policy. The development of the reservation screen directing visitors to the Respondent's email address and the intended use of the domain name to promote the products of Tektube Group constitutes "use" of the domain name for the purposes of the ICANN Policy.
The Complainant states that its business directly competes with that of the Respondent's business, but does not directly name or identify the Respondent's business. On reading the Complaint Form as a whole, the business of the Respondent that Complainant appears to refer to is Roscom, Inc. This is the only business identified in the Complaint Form, and is listed in the section titled "Registrant's Name."
The panel notes that the WHOIS database entry for www.bayshorevinyl.com states that the entry was last updated on 30 May 2000, after the Complaint Form was filed. The Complaint Form lists a different Registrant (Michael Ross of Roscom, Inc.) to that in the current WHOIS database entry (Ross Group). The exact relationship between Michael Ross, Ross Group and Roscom, Inc. is not clear from any of the papers filed in this matter.
The panel concludes that the domain name was registered and used by the Respondent in bad faith for the following reasons:
(a) The Complainant's business is in direct competition with Roscom, Inc.
(b) Michael Ross is somehow associated with Roscom, Inc. Michael Ross controls the website www.t5trading.com, which is titled Roscom, Inc. Michael Ross is listed as being from Roscom, Inc. in the Complaint Form.
(c) Michael Ross has tried to give the impression that the domain name is associated with the Tektube Group. The domain name was not registered by the Tektube Group. The Tektube Group does not appear in the WHOIS database entry for the domain name. There is no evidence that the Tektube Group has ever used the domain name.
(d) The statement by the Respondent that the Tektube Group has an intended tagline "from the Bay to the Shore: vinyl tubing from Tektube" and that this was the reason that the domain name was registered by Michael Ross is made without any evidence and completely lacks creditability.
In short, the panel finds that the only reasonable inference that can be drawn from the Respondent's registration and use of the domain name, which is the same as a competitor's common law trademark and similar to its corporate name, is primarily for the purpose of disrupting the business of the Complainant. Compare Clark Pest Control of Stockton, Inc. v. Mike Rogers, Case No. AF-0216.
As a result, the panel finds that the Complainant has established this element.
The Complainant has established all required elements.
The Complaint seeks cancellation of the domain name.
For the reasons set forth above, the Complainant's request to cancel the domain name www.bayshorevinyl.com is granted.
Dated July 17, 2000 at Brisbane, Australia
(s) John V. Swinson