The True Value Company v. Domain Administrator a/k/a Domain Name Agent
Claim Number: FA0809001224840
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 <truvaluehardware.com>, registered with Enom, Inc.
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 September 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2008.
On September 17, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <truvaluehardware.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 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@truvaluehardware.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 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 owns and operates the “True Value Hardware” brand of stores, and has used its TRUE VALUE trademark since 1963 (Reg. No. 2,085,647, issued Aug. 5, 1997, by the United States Patent and Trademark Office (“USPTO”)).
Complainant has also registered the same trademark with numerous other trademark authorities worldwide.
Respondent registered the disputed <truvaluehardware.com> domain name on April 26, 2004.
The disputed domain name currently resolves to a website that features a search engine and third-party advertisements.
Respondent’s <truvaluehardware.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
Respondent does not have any rights or legitimate interests in the domain name <truvaluehardware.com>.
Respondent registered and uses the <truvaluehardware.com> 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 in the TRUE VALUE mark pursuant to Policy ¶ 4(a)(i) through registration of 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.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <truvaluehardware.com> domain name contains Complainant’s TRUE VALUE mark, omitting only the “e” in TRUE, and adding the generic term “hardware.” The omission of the single letter “e” creates no phonetic distinction between the mark and the core of the domain. Moreover, because “hardware” describes Complainant’s business, no sufficient distinction is created. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004):
Words
that are spelled differently but are phonetically similar do not negate the
confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
See also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to that complainant’s mark). Finally, the addition of the generic top-level domain “.com” is irrelevant under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Based on the record, Complainant has met its burden of demonstrating a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name. Therefore, the burden shifts to Respondent to demonstrate that such rights or legitimate interests exist. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a
Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to rebut
the showing by providing concrete evidence that it has rights to or legitimate
interests in the Domain Name.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case has been established by a
complainant under Policy ¶ 4(c), the burden shifts to a respondent to
demonstrate its rights or legitimate interests in a disputed domain name).
Because Respondent
has failed to respond to the Complaint, we are permitted to conclude that it
has no rights or interests cognizable under the Policy. We will nonetheless
examine the record to establish if there is any basis for determining that such
rights or interests exist under the three criteria set out at Policy ¶ 4(c).
We begin by noting that there is no evidence of record to suggest that Respondent is commonly known by the disputed domain name. Likewise the pertinent WHOIS information lists Respondent as “Domain Administrator a/k/a Domain Name Agent.” We therefore conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent had no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by that domain name).
We also take note of the undenied allegation of the Complaint to the effect that the disputed domain name resolves to a website featuring a search engine and links for third-parties. Respondent presumably receives referral fees for this advertisement placement. We therefore conclude that Respondent is not making 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
From the uncontroverted allegations of the Complaint, we conclude that Respondent has created a likelihood of confusion as to Complainant’s possible association with or sponsorship of the disputed domain name for commercial gain tracing from the confusingly similar disputed domain name and corresponding website. It follows that Respondent has engaged in bad faith registration and use of the disputed domain under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain under Policy ¶ 4(b)(iv) where a respondent was diverting Internet users searching for a complainant to its own website, likely profiting from this activity); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <truvaluehardware.com> domain name with at least constructive knowledge of
Complainant’s rights in the TRUE VALUE trademark
by virtue of Complainant’s prior registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Accordingly, 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 <truvaluehardware.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 3, 2008
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