Jerry G. Roper of Payson, of Utah just lost his attempt to grab two domain names about a generic as they get; Bleachstains.com and Carpetbleachstains.com
BleachStains.com was registered in 2006
The domain owner was Dave Chretien and Color Spot Carpet of Torrance, California, US.
The Complainant which didn’t have a trademark but a patent
In October 2000, Complainant began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added.
Complainant contends he sold that system using the domain name bleachstain.com and used the phrase “bleach stain carpet repair” in describing the process.
In March 2003, Complainant received a United States patent on the process (U.S. Patent No. 6,533,824 (’824 Patent)) – Method for Restoring Original Color to Bleached Regions of Nylon Carpets).
Complainant asserts that “Bleachstain.com” has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years.
The use of the domain name bleachstain.com does not describe what Complainant does nor does it accurately describe discoloration of a carpet. Complainant chose this domain name from the phrase “bleach stain carpet repair”.
Complainant used this phrase to distinguish himself from the competitor at the very startup of his business. The “Bleach Stain” word usage greatly increased after Complainant advertised the term “Bleach Stain Carpet Repair. Bleach spills, bleached out spots and bleach marks were the common terminology in describing carpet color loss, according to Complainant.
Because Complainant was involved in the bleaching of stains and not just dyeing spots with an eyedropper, Complainant used the term “bleach stain carpet repair” as a name for his business. This phrase relates to bleaching out impossible stains and then color correcting the area. This is mentioned in the ’824 Patent.
Complainant’s domain name is unique in that it is the only carpet dye company selling a patented process for carpet color restoration. Complainant’s method has changed the industry and the way carpet color repair is preformed worldwide. Complainant was the first company to sell and advertise carpet color repair for the homeowner. Shortly after starting business in 2001 Complainant’s website stated in part:
According to Complainant KIK CUSTOM PRODUCTS (http://www.kikcorp.com) makes a variety of consumer products (e.g., shampoos, soaps, body lotions, sunscreens, household bleach, and cleansers) that can remove color from a carpet. Complainant claims that KIK CUSTOM PRODUCTS has recommended and will continue recommending “bleachstain.com” to their consumers for color correction of stains caused by these products.
Complainant contends he had a unique business that clearly defined his product and service for the consumer. Complainant further contends that there is now a great amount of confusion from consumers regarding services offered by and .
Not only are the domain names similar in sound and spelling but Respondents have recently used the term, “carpet bleach stain repair” in most of their advertisement listings, according to Complainant.
Within the last year, Respondents have produced 23 YouTube videos with most of these having the title “carpet bleach stain repair”. Respondents’ use of the term “Carpet Bleach Stain Repair” and the domain name has greatly increased the confusion amongst consumers.
Complainant contends that Respondents have no rights or legitimate interests in the Domain Names. Respondent Chretien does not have any rights superior to the common law rights of the name “bleachstain.com”, in the United States or elsewhere.
Complainant contends that Respondents registered and are using the Domain Names in bad faith. Respondent Chretien knowingly registered the Domain Name in 2006 with an actual awareness of a confusingly similar name prior to registration. He would surely know Complainant and Respondents were competitors for six years. He had a website prior to “bleachstains.com” using and a business name called “Color Spot Carpet Service”. Respondent Chretien’s focus was on the repair of small carpet spots. He did not refer to his services as “bleach stain carpet repair”. He acquired as a means of creating confusion amongst the consumers for financial gain. Respondent Chretien registered in 2006 but did not have a website associated with that name until 2010. He had directed to from 2007 until 2010. The name server for had the same IP address as . If a consumer made the mistake of making plural, then it was directed to Respondents’ website. It is abundantly clear that was registered to gain financially from .
In its Complaint, Complainant states that his domain name has been associated commercially and with a website for over 13 years and should be regarded as a non-registered trademark based on the continued commercial use during these 13 plus years.
Complainant alleges that in October 2000, he began selling a system for repairing permanent stains either caused by carpet color loss or from additional color added. He sold that system on a website having the associated domain name . On the portion of the website provided to the Panel from the WayBackMachine, the only use of “bleachstain.com” was as a domain name, not a trademark.
Complainant also alleges on that early website he used the phrase “bleach stain carpet repair” in describing the process.
Indeed, he did use that descriptive phrase to describe a “NEW and Improved method for restoring color to regions of missing color on nylon carpet.” The phrase “bleach stain carpet repair” was not used as a trademark on the website. Complainant did not provide the Panel with evidence of its use of “bleachstain.com” for the last thirteen years on his company website.
Complainant points to a company called KIK CUSTOM PRODUCTS that makes a variety of consumer products, which can remove color from a carpet. The company has recommended Complainant’s bleach stain removal product to their consumers for color correction of stains caused by their products. Regardless of the success KIK’s customers might have had with Complainant’s product this complement does not establish that “bleachstain.com” has become a distinctive mark. Complainant also claims that its patented system is sold throughout the world with many positive independent reviews, including selling on Amazon and eBay, with a high rating. These conclusory remarks also are not evidence to prove any use of “bleachstain.com” as a trademark.
Under paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Because Complainant has not carried his burden on this element, the Panel need not decide whether Complainant has met his burden on the other elements.
For the foregoing reasons, the Complaint is denied.
