The True Value Company v. Domain Park Limited
Claim Number: FA0801001126007
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 <tru-valuehardware.com>, registered with Moniker Online Services, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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:
1. Respondent’s <tru-valuehardware.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or legitimate interests in the <tru-valuehardware.com> domain name.
3. Respondent registered and used the <tru-valuehardware.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The True Value Company, operates as an
international manufacturer and wholesale distributor for a cooperative of
approximately 8,000 retail hardware stores that market these goods under the
TRUE VALUE mark. In addition,
Complainant has utilized the TRUE VALUE mark to extensively market its products
online through the <truevalue.com> domain name. Complainant’s predecessor first registered
the TRUE VALUE mark with the United States Patent and Trademark Office
Respondent is using the <tru-valuehardware.com> domain name to resolve to a website which appears to provide click-through listings for merchants which compete with Complainant’s business.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has registered its TRUE VALUE mark with the
USPTO and with various other governmental authorities. The Panel finds that these registrations are
sufficient to establish Complainant’s rights in the TRUE VALUE mark pursuant to
Policy ¶ 4(a)(i).
See Expedia, Inc.
v. Inertia 3D, FA 1118154 (Nat. Arb. Forum
The Panel finds Respondent’s <tru-valuehardware.com> domain name is confusingly
similar to Complainant’s TRUE VALUE mark.
Respondent’s disputed domain name fully incorporates Complainant’s mark
with the deletion of an “e,” the addition of a hyphen and the addition of the
descriptive term “hardware.” In
addition, the generic top-level domain “.com” is considered irrelevant for the
purposes of evaluating whether a disputed domain name is confusingly similar to
a mark. See State Farm Mut. Auto. Ins. Co. v. Try
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has offered allegations that Respondent does not
have rights or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of its
allegations, the burden shifts to Respondent to establish that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
Panel finds that Complainant has established a prima facie case to support its allegations. Respondent has failed to submit a response to
the case and thus the Panel may assume Respondent does not have rights or
legitimate interests in the disputed domain name. The Panel will, however, examine the record
to determine whether the Respondent has rights or legitimate interests in the
disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent is using the disputed domain name to display links to businesses that compete with Complainant, for which Respondent presumably receives a click-through fee. The Panel finds that this diversionary use is not a use in connection with a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
In addition, the record and WHOIS information provide no evidence suggesting that Respondent is commonly known by the <tru-valuehardware.com> domain name. Respondent was not authorized to use Complainant’s TRUE VALUE mark. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website which displays links to Complainant’s competitors. The Panel finds that such use constitutes disruption and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent is using the confusingly similar <tru-valuehardware.com> domain name in order to operate a website for which Respondent presumably receives click-through fees. The Panel finds that this is an attempt by Respondent to profit from the goodwill associated with Complainant’s TRUE VALUE mark and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tru-valuehardware.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 25, 2008
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