The True Value Company v. Premierco LLC c/o Robert M. Aronin
Claim Number: FA0801001126009
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 <truevaluetools.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 <truevaluetools.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or legitimate interests in the <truevaluetools.com> domain name.
3. Respondent registered and used the <truevaluetools.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, True Value, is an international manufacturer
and wholesale distributor for a cooperative of about 8,000 retail hardware
stores. Most of the stores operate under
the TRUE VALUE mark in association with selling a large range of hardware
products. Complainant owns several
registrations around the world, including multiple registrations with the United
States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,165,207, issued
Respondent registered the <truevaluetools.com>
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.
The Panel finds that through registration with the USPTO,
Complainant has established rights in the TRUE VALUE mark pursuant to Policy ¶
4(a)(i). See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that Respondent’s <truevaluetools.com> domain name is confusingly
similar to Complainant’s TRUE VALUE mark.
Respondent’s domain name contains Complainant’s mark, adds a generic
term relating to Complainant’s business and adds the generic top-level domain
(“gTLD”) “.com.” The Panel holds that a
domain name which contains a complainant’s mark and adds a generic term with an
obvious and direct relationship to a complainant’s business is confusingly
similar pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the <truevaluetools.com>
name. When Complainant makes a prima facie case in support of its
allegations, the burden is shifted to Respondent to prove that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The Panel finds that Complainant
has established a prima facie
case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Due to Respondent’s failure to respond to the Complaint, the
Panel assumes that Respondent does not have rights or legitimate interests in
the disputed domain name. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO
The Respondent is neither commonly known by the <truevaluetools.com> domain name, nor licensed
to register domain names using the TRUE VALUE mark. The Respondent’s WHOIS information identifies
Respondent as “Robert Aronin.” Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Complainant states that Respondent is using the <truevaluetools.com> domain name in order to intentionally divert Internet users to the associated website, where links are offered to third-party websites offering products and services in direct competition with Complainant. The Panel finds that intentionally diverting unknowing Internet users to a competing website by using a domain name which is confusingly similar to Complainant’s mark is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <truevaluetools.com> domain name to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s TRUE VALUE mark. Once Internet users arrive at the website they encounter links to third party websites that directly compete with Complainant. The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such registration and use of the disputed domain name constitutes bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Respondent’s use of the <truevaluetools.com>
to offer links to third-party websites which directly compete with Complainant
is evidence of bad faith. The Panel
finds that a registered domain name used primarily to disrupt the business
prospects of a competitor is an illustration of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO
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 <truevaluetools.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Frankin, Panelist
Dated: February 27, 2008
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