Spectrumbagsonline.com

The timeline behind spectrumbagsonline.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Spectrum Plastics Inc. v. RAINBOW BAG COMPANY Claim Number: FA0809001226144 PARTIES Complainant is Spectrum Plastics Inc. (“Complainant”), represented by Nhut Tan Tran, of Hermes Sargent Bates LLP, Texas, USA. Respondent is RAINBOW BAG COMPANY (“Respondent”), represented by William C. Martin, Attorney at Law, Ohio, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <spectrumbagsonline.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Beatrice Onica Jarka as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2008. Following the National Arbitration Forum’s request the Complainant submitted a amended Complaint on October 3, 2008. On September 24, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <spectrumbagsonline.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 October 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 2008 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@spectrumbagsonline.com by e-mail. A timely Response was received and determined to be complete on October 27, 2008. On November 3m 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant The Complainant contends that: · Itself and its related companies and affiliates are the owner of a family of verbal and figurative trademark and service marks. The verbal trademarks and service family is SPECTRUM PLASTIC and the figurative one comprises a sign with six spokes. The trademarks and service mark family is registered for goods plastic bags for packaging, plastic bags used to carry retail merchandise; · The disputed domain name is identical and/or confusingly similar with the SPECTRUM marks. So is similar the Respondent’s logo with the Complainant’s one; · Respondent has no rights or legitimate interests in the disputed domain name as it is not known by the disputed domain name; · Respondent has not used and is not using the disputed domain name in connection to a bona fide offering of goods as it has been using initially the disputed domain for selling exactly the same products and goods as Complainant’s and after being confronted with its infringing actions redirected the Domain Name to a blank URL page; · Respondent has registered and used the disputed domain name in bad faith as the disputed domain name creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s affiliate or commercial web site. B. Respondent In the Response, the Respondent answers that: · The disputed domain name is not particularly similar to the Complainant’s Marks, as the only word in common is “Spectrum”. “Spectrum Bags” are not necessarily plastic, and “Spectrum Plastics” are not necessarily bags. · Respondent’s logo is not “almost indistinguishable” from Complainant’s logo as it includes five spokes, though, and the Complainant’s logo has six spokes. The spokes themselves are completely different in form and orientation. Consumers are not likely to confuse the logos. · It operates its business on a local level since 2000, and utilized both the <spectrumtrashbags.com> and <spectrumbagsonline.com> domain names to sell stock colored trash bags and other related goods, whereas Complainant conducts business on a broader scale and sells custom imprinted merchandise and food service bags; therefore Respondent’s business does not compete with Complainant’s. · Following a cease and desist letter sent by the Complainant on February 29, 2008, the Respondent removed the content from the website resolving from the <spectrumbagsonline.com> domain name and ceased doing business as “Spectrum Bags” because it could not afford to go through the expense of litigation. · The Respondent denies that its use of the domain name infringes upon the Complainant’s Spectrum Marks. Its business of selling plastic bags online was conducted in good faith. It is the Complainant’s rapacious behavior which is in bad faith. · Complainant has intentionally misled the Panel throughout these proceedings, and has acted in bad faith by initiating the instant dispute. In this sense, the Complainant previously identified itself on its website as “Spectrum Plastics” however before filing the instant Complaint, changed its self-reference on its website to “Spectrum Bags, Inc.” The Complainant did this to fraudulently harm Respondent and to mislead the Panel. FINDINGS The disputed domain name use and registration are infringing Complainant’s rights in the SPECTRUM PLASTIC family of trademarks and service marks. 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 Complainant asserts rights in the SPECTRUM PLASTICS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,899,010 issued November 2, 2004). The Panel finds that Complainant’s trademark registration adequately confers rights in the SPECTRUM PLASTICS mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)). Respondent’s <spectrumbagsonline.com> domain name contains the “spectrum” portion of Complainant’s alleged mark but removes the term “plastics,” and instead adds the words “bags” and “online” as well as the generic top-level domain (“gTLD”) “.com.” The addition of the gTLD is irrelevant under an analysis of the Policy. When analysing differences between Respondent’s disputed domain name and Complainant’s mark, the Panel finds that the removal of the word - “plastic”- of the verbal trademark - SPECTRUM PLASTIC - and addition of terms “bags” and “online” does not distinguish the disputed domain name from the Complainant’s verbal trademark. On the contrary it increases the similarity as the Complainant is in the business of selling plastic bags and containers on the Internet. The “spectrum” portion of Complainant’s mark remains the dominant portion of the disputed domain name, and the Respondent’s changes are indicative of the Complainant’s business and misleading for anyone who would look for the Complainant on Internet. It is the opinion of the Panel that first element of the Policy should not be analysed strictly in relation with the trademarks but also elements of the business under the trademark should be considered. In this sense, the Panel finds that the Complainant succeeded to prove the first element of the Policy. Rights or Legitimate Interests Complainant contends that Respondent has never used the <spectrumbagsonline.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. There are two periods of time in the use of the disputed domain name by the Respondent: (1) the initial use until the cease and desist letter sent by the Complainant to the Respondent and (2) the use after the letter. In its initial use, the Respondent used the <spectrumbagsonline.com> domain name to sell stock colored trash bags and other related goods. The Complainant contends that in this initial use the Respondent’s business under <spectrumbagsonline.com> domain name has been competing with the Complainant’s business. The Complainant indicates the intent from the Respondent in this initial use of the disputed domain name to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s affiliate or commercial web site. In this sense the Complainant points also to a certain similarity between the logo displayed by the Respondent on website resolving to the disputed domain name and the one use by the Complainant also as figurative trademark for its business. Such issue shall be addressed later in the decision. The Complainant documented its allegations by submitting evidence of the federal registration of its trademarks in 2004 with first use in commerce in 1999. The Complainant has also submitted a print screen of its website <spectrumbags.com>. According to WHOIS, the Complainant’s domain name <spectrumbags.com> has been registered in March 2000. The print screen of the Complainant website shows among the products sold by the Complainant trash can liners. The Complainant has also submitted a print screen of the Respondent’s website under the disputed domain name dated March 26, 2008. Among the products sold under the disputed domain name the trash can liners are also indicated. The disputed domain name had been registered in January 2001. On the other side, the Respondent claims that it operates its business on a local level since 2000, and utilized both the <spectrumtrashbags.com> and <spectrumbagsonline.com> domain names to sell stock colored trash bags and other related goods, whereas Complainant conducts business on a broader scale and sells custom imprinted merchandise and food service bags. The Respondent claims that it has been known by the disputed domain name since 2000. The only evidences presented by the Respondent in this sense are the correspondence with the Complainant and a print screen of the Complainant’s website under <spectrumbags.com> dated October 10, 2008. None of such evidences supports the claims of the Respondent as to the use of the disputed domain name. After Complainant sent Respondent a cease-and-desist letter, Respondent removed its content from the website resolving from the disputed domain name, which has since resolved to a blank website. The Panel cannot identify any circumstance of rights and legitimate interest in the use of the disputed name by the Respondent in initial or after the cease-and-desist letter. The WHOIS information identifies Respondent as “Rainbow Bag Company.” Except for the allegations in the Response as to making business under the disputed domain name, the Panel could not rely on any evidence that the Respondent is commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). Therefore the Panel determines that Respondent is not commonly known by the <spectrumbagsonline.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name). The Respondent has started to use the disputed domain name in order to sell products some of which are competing with those of the Complainant (January 2001), after the moment the Complainant became active on the bags market under SPECTRUM trademarks (March 2000 registration of <spectrumbags.com> and 1999 first use in commerce of the SPECTRUM BAGS). The fact that the Respondent presented itself as a small local business in comparison with that of the Complainant cannot be considered a sufficient reason to distinguish such business under the disputed domain name from the Complainant’s trademark and business under trademark for the initial use of the disputed domain name by the Respondent and to avoid confusion among the Internet users. In the virtual world of Internet an initial search of trademarks could not distinguish between local or national or universal type of business under a trademark. In addition, the Respondent’s subsequent inactive use of the <spectrumbagsonline.com> domain name also does not confer rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent had no rights or legitimate interests in a confusingly similar domain name where it had failed to use it); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Respondent mentions several times in its Response that the only reason why it removed the content from the website resolving from the <spectrumbagsonline.com> domain name and ceased doing business as “Spectrum Bags” after Complainant sent the cease-and-desist letter is because Respondent could not afford to go through the expense of litigation. The Panel determines that Respondent’s actions do reflect a lack of rights or legitimate interests pursuant to this element of the Policy as the reasoning offered cannot be considered a circumstance justifying such action. If the Respondent was willing to avoid litigation it would have gone further until total settlement of the dispute. The Panel concludes that the Respondent is not entitled to any rights or legitimate interests to the disputed domain name and the Complainant had proved also the second element of the Policy. Registration and Use in Bad Faith Complainant contends that Respondent’s previous use of the <spectrumbagsonline.com> domain name competed with Complainant’s business. As mentioned above, the Panel believes this to be true at least for some of the products and find bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Complainant also argues that Respondent’s registration and use of the <spectrumbagsonline.com> domain name created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s resolving commercial website. The Panel finds that the circumstances of the case indicate a strong presumption of bad faith in use and registration of the disputed domain name by the Respondent as the Respondent has started to use the disputed domain name in order to sell products some of which are competing with those of the Complainant (January 2001), after the moment the Complainant became active on the bags market under SPECTRUM trademarks (March 2000 registration of <spectrumbags.com> and 1999 first use in commerce of the SPECTRUM BAGS). As to the Complainant’s allegation about a certain similarity between the logo displayed by the Respondent on the website resolving to the disputed domain name and the one use by the Complainant also as figurative trademark for its business, the Panel does not accept it. The resemblance is too vague as it exists only to a very conceptual approach. In any case, the Panel considers that the rest of the circumstances indicated above and below are sufficient to indicate bad faith registration and use of the disputed domain name. The Panel also determines that Respondent’s subsequent inactive use of the <spectrumbagsonline.com> domain name supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). In conclusion, the Panel finds bad faith registration and use of the disputed domain name by the Respondent pursuant to Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED Accordingly, it is Ordered that the <spectrumbagsonline.com> domain name be TRANSFERRED from Respondent to Complainant. Beatrice Onica Jarka Panelist Dated: November 17, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.