The True Value Company v. True Value Company
Claim Number: FA0801001125691
Complainant is The True Value Company (“Complainant”), represented by Kristine
M. Boylan, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <truevaluehardware.org>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 3, 2008.
On Janurary 6, 2008, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <truevaluehardware.org> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@truevaluehardware.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an international manufacturer and wholesale distributor for a cooperative of approximately 8,000 retail hardware stores.
Complainant registered the TRUE VALUE trademark with the United States Patent and Trademark Office (“USPTO”) on August 52, 1997 (Reg. No. 2,085,647).
Complainant also holds many international trademark registrations for the TRUE VALUE mark.
In addition, Complainant owns and markets its products at the <www.truevalue.com> domain name.
Respondent is neither affiliated with Complainant nor licensed to use the TRUE VALUE mark.
Respondent registered the disputed <truevaluehardware.org> domain name on November 11, 2005.
Respondent has been using the disputed domain name to divert Internet users to a commercial website that displays goods and services similar to the goods and services offered by Complainant.
The website that resolves from the disputed domain name also displays links to third-party websites.
Respondent’s <truevaluehardware.org> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
Respondent does not have any rights or legitimate interests in the domain name <truevaluehardware.org>.
Respondent has registered and uses the disputed <truevaluehardware.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has established rights to the TRUE VALUE mark
under Policy ¶ 4(a)(i) by registering the mark with
the USPTO. See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”
The <truevaluehardware.org>
domain name is confusingly similar to the TRUE VALUE mark because it
incorporates both individual terms of Complainant’s mark, and it includes a
generic term that is descriptive of Complainant’s business. Other panels have found that a generic term
does not distinguish a disputed domain name from a mark for purposes of Policy
¶ 4(a)(i) when the term describes the complainant’s
business. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where a respondent’s domain name combines a complainant’s mark with
a generic term that has an obvious relationship to that complainant’s
business). See also Arthur Guinness Son & Co. (
Respondent’s domain name includes the generic top-level domain (“gTLD”) “.org.” This does not distinguish the disputed domain name from the competing mark because all domain names are required to have a top-level domain. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), where a panel stated that “it is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has neither rights to nor legitimate interests in the <truevaluehardware.org> domain name. Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), a panel held that, once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden of proof shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or to legitimate interest in a domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii), thus shifting the burden to Respondent. And, because Respondent has failed to respond to the Complaint, we may presume that Respondent has no rights to or legitimate interests in the <truevaluehardware.org> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). We will nonetheless examine the record for evidence that Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c).
We begin by noting that Complainant contends that Respondent
is neither affiliated with Complainant nor licensed to use the TRUE VALUE
mark. Furthermore, although the pertinent
WHOIS information indicates that Respondent is “True Value Company,” there is
no evidence that Respondent is in fact known by the disputed domain name. In Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), a panel found that a respondent was not commonly known by
the <shantiyogaworks.com> domain name despite listing its name as
“Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the
Panel that the respondent was ever ‘commonly known by’ the disputed domain name
prior to its registration of the disputed domain name.” For the same reason, we conclude that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Nature’s
Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2,
2004): “In its WHOIS contact information, Respondent lists its name and its
administrative contact as ‘Natures Path, Inc.’
However, since Respondent failed to respond to the Complaint, there has
not been any affirmative evidence provided to the Panel showing that Respondent
was commonly known by the disputed domain name prior to its registration of the
domain name.”
We also observe that
there is no dispute that Respondent is using the disputed domain name to host a
website advertising products and services competing with the business of
Complainant. Respondent thus presumably benefits
commercially by receiving third-party referral fees. In Bank of America Corp. v.
Northwest Free Community Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003), a panel stated that “Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).” Likewise, we conclude
that Respondent’s use of the <truevaluehardware.org>
domain name does not show a bona fide offering of goods or services under Policy ¶ 4(c)(i), or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003): “Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name employing
Complainant’s TRUE VALUE mark to advertise products competing with the business
of Complainant demonstrates an attempt to profit commercially from the goodwill
associated with Complainant’s mark. Respondent
is thus creating a likelihood of confusion as to the possible source,
sponsorship, affiliation or endorsement of the website that resolves from the <truevaluehardware.org> domain
name. In G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002), a panel found that a respondent registered and used a domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent was
using a domain name to attract Internet users to its commercial website. We conclude
as well that this Respondent’s use of its domain name is evidence of
registration and use in bad faith under Policy ¶ 4(b)(iv).
See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan.
8, 2003) (finding that a disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of an infringing domain name to attract Internet users to its fraudulent
website by using a complainant’s famous marks and likeness).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <truevaluehardware.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 13, 2008
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