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
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
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 its Complaint, Complainant states that his domain name
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
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.
This is not over yet. 8 year old bleachstains was in usage for less than 4 years. It was not about grabbing two domains. It was about being fair to our customers.
We also do have a common-law trademark. Currently there is not a process to bleach stains and and then re-dye the spot. This was mentioned in our patent just in case we came up with a method to do. You have never sold or advertise a product to remove stains. We sell a product to restore color to dis-colorations on carpeting.
There is no such terminology as a bleach stain in regards to restoring carpet color. It is called carpet dis-coloration. Bleachstain does not describe what we do.
There is a Trademark for blendtec blenders. There is a trademark for fibertec fiber glass products and there is a trademark for bleachmarks. These all have described what they do more so fully than bleachstain carpet repair.
In conclusion the one member panel took my words out of context and even quoted from words I used on coloryourspot.com. This in its self would and should make her decision invalid. She made claim that our business name was not bleachstain. We have a history of emails for ten years that use the title bleachstain. Our website goes back ten 13 years using bleachstain as a trademark. Of course Coloryourspot.com would have a different tittle.
As mentioned this is not over. It will go to court
It should have read. There is currently no process available to bleach out stains on a carpet and Then color correcting the area. We have never sold nor advertised any products to remove stains from carpeting. The one person assigned as a panel member would surely see this. We only sell products to restore color on carpet discolorations.
There is no such terminology as bleach stains in regards to restoring carpet color. Bleachstain does not describe what we do. Bleach stain is an incorrect description of color loss from a carpet. It does not imply restoring color to a carpet.
The one person panel member was more or less thinking of bleach as an agent to remove stains. This once again has nothing to do with restoring color to a carpet. That is what our business is about and that is what our patent it’s about.
Bleachstains.com copied every aspect of our website. We called our website bleachstain.com and the other party in question called his website bleachstains.com
This was never about acquiring additional domain names. It was about protecting our customers from confusion. We added coloryourspot.com to try to protect our customers.
It should not be about me changing my domain name. It should be about the person who copied and used our domain name and trademark in bad faith. This is far from being over.
Jerry
Well send us the case over once its filed.
You don’t have to answer but did you consider just buying the domain?
It should have read. There is currently no process available to bleach out stains on a carpet and Then color correcting the area. We have never sold nor advertised any products to remove stains from carpeting. The one person assigned as a panel member would surely see this. We only sell products to restore color on carpet discolorations.
There is no such terminology as bleach stains in regards to restoring carpet color. Bleachstain does not describe what we do. Bleach stain is an incorrect description of color loss from a carpet. It does not imply restoring color to a carpet.
The one person panel member was more or less thinking of bleach as an agent to remove stains. This once again has nothing to do with restoring color to a carpet. That is what our business is about and that is what our patent it’s about.
Bleachstains.com copied every aspect of our website. We called our website bleachstain.com and the other party in question called his website bleachstains.com
This was never about acquiring additional domain names. It was about protecting our customers from confusion. We added coloryourspot.com to try to protect our customers.
It should not be about me changing my domain name. It should be about the person who copied and used our domain name and trademark in bad faith. This is far from being over.
We did offer to purchase bleachstains.com. We were unable to come to an agreement. The owner of bleachstains.com was concerned about his advertising of 23 YouTube videos and wanted more than what we were willing to pay
I had just walked in the kitchen and my wife was using a foodsaver product. It saves food by extracting air and sealing a bag containing food.
I guess that would not qualify as a trademark. It describes saving food. Bleachstain describes one aspect. Thousands of products on the
market will remove color from the carpet. The foodsaver mentions food. According to the one panel member, then foodsaver would not be concidered a trademark. Once again bleachstain does not describe a patented process in restoring color carpet. We will let a real court decide on this
Jerry Ok fair enough
I don’t know what the guy was asking maybe it was $1M
But when it was “too much” did you factor in the cost of not having the domain for many years, the $5K you spent on the UDRP and the amount its now going to cost you to sue in federal court?
Any you may lose
I am willing to take this to court. Sometimes we need to look out for the consumer. He wants around 30,000. I also am not willing to reward an unethical individual.
I may lose or I may win, but I will know I did the right thing.
@ Jerry Roper, Every week Mike Berkens the editor of theDomains posts domain auction house Sedo sales reports, with trademark domains that sell to the owner of the trademark, which company just doesn’t want to be bothered with legal. You wouldn’t be alone if you did purchase Bleackstains.com.
Who knew the internet would be so important, and that you should take measures to protect your online brand by registering the plural and the exact match twitter? In hindsight, it is a good idea. You have a chance with the exact match twitter – go for it!
There are other things you can do, imo. You want to hear a suggestion? How about write an original blog post for your sight, We Now Have Copycats, and call out the copycat domain names, including BleachStains.com? You could say you’re in litigation with it. BleachStains.com is a valuable generic that shouldn’t be turned over easily.
But, having fallen into a rabbit hole of investigating, I agree: the owner[s] of BleachStains.com is selling product off your sterling reputation.
But also you are not alone in experiencing someone trying to profit from your reputation on the internet.
IMO, for every one honest business owner out there, there are ten unscrupulous people looking to exploit you and your online reputation.