NATIONAL
ARBITRATION FORUM
DECISION
The True Value Company v. Arvind Hosalkar
Claim Number: FA0801001125908
PARTIES
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 <1truevalue.com>, registered with Tucows Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
PROCEDURAL HISTORY
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 January 7, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <1truevalue.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 January 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 6, 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@1truevalue.com by e-mail.
Upon request of the National Arbitration Forum, the Complaint was amended to name the Respondent as verified by the Registrar, that is Arvind Hosalkar, and per a request from ICANN, the Complaint was amended to remove <www.> before references to the disputed domain name.
A timely Response was received and determined to be complete on February 6, 2008.
A timely Additional Submission was received from Complainant on February 8, 2008 in accordance with the National Arbitration Forum’s Supplemental Rule 7. Respondent’s Additional Submission was rejected, as not being in compliance with the Forum’s Supplemental Rule 7.
On February 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name <1truevalue.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
The
Complaint is based upon the Complainant’s trademark rights in its True Value
Hardware brand of stores, and specifically on its ownership of numerous
TRUE VALUE Corporation uses its corporate name and derivations thereof, in conjunction with the Internet and domain names. For example, True Value owns the domain name <truevalue.com> as well as <truevalueco.com>, <truevaluecorp.com>, <truevaluecorporation.com>, <truevaluestores.com>, and <true-value.com>.
Complainant contends that the domain name at issue, that is <1truevalue.com> is confusingly similar to Complainant’s famous service marks and trademarks; that Respondent has no legitimate interest in the mark; and that Respondent has registered and has used the domain name in bad faith. Complainant, therefore, requests that the Panel issue a decision that the domain name be transferred to Complainant.
B. Respondent
Respondent contends as follows:
Respondent Arvind K. Hosalkar states that he is the verified and registered domain owner of <1truevalue.com> and that he totally disagrees with the allegations made by the Complainant, and always did things in good faith.
Respondent contends that the TRUE
VALUE Corporation, which holds the disputed domain, is not famous in
Respondent has a simple website layout, not designed by professionals to match the standards of Complainant’s website.
A disclaimer provided on the site says: “the contents of this article are the intellectual property of <1truevalue.com>. The information and the contents within this site is solely provided by <1truevalue.com> and the site is not concerned or related with any other site.”
Respondent states that his site’s simplicity doesn’t show his competitiveness with Complainant’s site and thus, does not show an intention to deliberately confuse the Internet user. The registration of the disputed domain name was not done in bad faith. Both Respondent’s site and the disputed site are different with different domain names.
Respondent further contends that he is very well known by his domain name, which offers tips and articles. Respondent states that, to date, he has not tried to sell the disputed domain name, nor does he have intentions to do so. In fact, he has intentions to expand the site.
Respondent further states that no products are sold through his website, and that the site is purely a content-based and information site. However, some pages were created and used only for the purpose of landing pages for PPC marketing. Respondent contends that he did not engage in bad faith, in that he did not place the same or similar products of Complainant on his website.
Respondent further contends that he has exhibited good faith, in that his website is mostly related to good tips and articles regarding self-development, positive thinking, health, self-care, beauty, and love topics.
Respondent contends that further evidence of his good faith can be inferred from his reviewed article on his experiences during the July 11, 2006 Mombai serial train bomb blast, wherein he wrote about how he helped the injured and evacuated the dead from the train.
Respondent's concluding contentions are that he did not take advantage of Complainant’s popularity to gain Internet traffic, that the contents of Respondent’s site have been widely acknowledged, and that as the domains are different, Respondent never exhibited bad faith.
C. Additional Submissions
Complainant, in its Additional Submission, further contends as follows:
The disputed domain name is virtually identical and meets the test of confusing similarity under traditional trademark law and under the analysis of numerous UDRP Panels.
The Declaration of Susan M. Radde, Assistant General Counsel, for TRUE VALUE Company, and the attached Exhibits, demonstrate that TRUE VALUE owns trademark rights to the TRUE VALUE mark around the world.
Respondent
has never conducted any business activity to bestow a right or legitimate
interest in the domain. There is no evidence that Respondent has been commonly
known by the domain name or that he has any non-profit or for profit business
associated with the domain. The website in no way indicates that the website
purveyor or website content has any relation to
The TRUE VALUE mark and domain were well established and in long use by Complainant when Respondent registered the domain. Respondent is not entitled to continued registration of the domain. The bad faith element is established in that the domain was registered after the TRUE VALUE mark gained notoriety throughout the world, and Respondent must have been aware of same.
The
Respondent appears to be, moreover, developing the site for commercial use, and
is doing so, in conjunction with
FINDINGS
1. The domain name <1truevalue.com> registered by the Respondent is identical or
confusingly similar, to the trademark TRUE VALUE in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the domain name <1truevalue.com>.
3. The domain name <1truevalue.com> has been registered and is being used in bad faith.
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 TRUE VALUE mark through its numerous registrations of the mark with the United States Patent and Trademark Office, hereinafter “USPTO” (i.e., Reg. No. 1,128,203 issued December 25, 1979) as evidenced by the Radde Declaration and Exhibit A attached thereto, which declares that the True Value Company owns 140 registrations in 47 countries for the mark TRUE VALUE. The Panel finds that such registrations sufficiently establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
This Panel finds that Respondent’s <1truevalue.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark, as the disputed domain name merely adds the number “1” to the beginning of the mark and includes the generic top-level domain “.com.” Previous panels have found, and this Panel concurs, that neither the addition of a generic number nor the inclusion of a top-level domain renders a disputed domain name distinct from a corresponding mark. Thus, this Panel finds that the <1truevalue.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark pursuant to Policy ¶ 4(a)(i). See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Respondent erroneously argues that because the <1truevalue.com> domain name is comprised of common, descriptive terms, the name cannot be found to be identical or confusingly similar to Complainant’s mark. The Panel finds that such a determination is not warranted under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).
Respondent's
arguments stating that the dissected aspects of the mark, that is; "1,
true and value" are common and descriptive terms, and thus unprotectable,
are contrary to the anti-dissection principles of trademark law and must also
fail. See David Hall Rare Coins v.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
The Panel has not received any evidence that Arvind Hosalkar, as an individual, is commonly known by, or conducts business by, any derivation of the <1truevalue.com> domain name. Nor has any evidence been adduced that Respondent is affiliated, in any way, such as with a franchise, with Complainant or its hardware stores. Complainant has not given Respondent permission to use its TRUE VALUE mark. The Panel thus concludes that Complainant has satisfied its burden of making out a prima facie case that Respondent lacks rights or legitimate interests in the subject domain name. Moreover, Respondent has not successfully responded to its corollary burden to show that it does have rights or legitimate interests in the disputed domain name, such as to satisfy Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question.).
Complainant, in its Additional Submission, shows that Respondent’s <1truevalue.com> domain name resolves to a website featuring a search engine and links to third-party websites in competition with Complainant, from which Respondent presumably accrues click-through fees. The pages pulled by Complainant from a web archive show scanty page content (merely a few "positive" quotations) and consist primarily of links to sites for picture frames and links for "home, health, beauty, love, personality and other." From this evidence, the Panel concludes that Respondent is not using the <1truevalue.com> domain name in connection with 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Registration and Use in Bad Faith
Due to the worldwide fame of the TRUE VALUE mark and of its numerous registrations with the USPTO, this Panel charges Respondent with actual or constructive knowledge of Complainant’s rights in the mark when it registered and used the <1truevalue.com> domain name, commencing on November 22, 2006. This fame is evidenced by the Radde Declaration which states that:
True Value first adopted the TRUE VALUE trademark in 1963 (through its predecessor in interest Cotter and Company) and has used it without interruption since that date for members to use as a collective membership mark as well as for a variety of goods and services, including online at www.truevalue.com. True Value Company has about 5,800 members in its cooperative, 3833 of which are members who use the mark in connection with retail stores services selling hardware goods. The company's annual turnover, a majority of which is due to sales of products and services in its member stores under the TRUE VALUE mark, is approximately $2,000,000,000 USD. The mark is prominently displayed by 3,833 members of the cooperative on signage in front of, and within their stores around the world.
The Panel takes Respondent's registration, in spite of Complainant's extensive registration and use of a nearly identical, and certainly confusingly similar, domain name to be conclusive evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).
Complainant's further assertion that Respondent is using the <1truevalue.com> domain name to attract Internet users, presumably seeking Complainant’s business, to Respondent’s competing website is buttressed by the high likelihood that casual Internet users are likely to be confused by Respondent's nearly identical sounding name, and to Complainant’s affiliation with the disputed domain name, and that Respondent will benefit commercially from this practice. This reasonable inference of diversion of business is further evidence that Respondent registered and is using the <1truevalue.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent’s disclaimer is not sufficient evidence that Respondent did not register or use the <1truevalue.com> domain name in bad faith. Pursuant to Policy ¶ 4(a)(iii). The Panel finds that the use of a disclaimer does not mitigate any bad faith registration or use on the part of Respondent. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 2, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
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 <1truevalue.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol
M. Stoner, Esq., Panelist
Dated: March 5, 2008
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