Inland Truck Parts v.
Claim Number: FA0809001226313
Complainant is Inland Truck Parts Company (“Complainant”), represented by Marsha
Stolt, of Moss & Marnett, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inlandtruckparts.com>, registered with Compana, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2008.
On September 26, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <inlandtruckparts.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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”).
Complainant filed and served an Amended Complaint dated September 30, 2008, adding only that service was made upon the Registrar in accordance with NAF Supp. Rule 4(e).
On October 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 27, 2008.
On November 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name <inlandtruckparts.com> be transferred from Respondent to Complainant.
Complainant Inland Truck Parts Company (“Complainant”) seeks transfer of the domain name <inlandtruckparts.com> from Respondent Texas International Property Associates-NA NA (“Respondent”). Complainant owns federal trademark registrations for the mark INLAND TRUCK PARTS COMPANY, U.S. Reg. No. 2,057,209, issued April 29, 1997, covering “maintenance, repair, rebuilding and custom building of truck, bus and farm equipment parts” in class 37, and “distributorships in the field of truck, bus and farm equipment parts and accessories” in class 42, used in commerce since at least 1974; and for the mark INLAND TRUCK PARTS AND SERVICE, U.S. Reg. No. 2,303,488, issued December 28, 1999, for “repair of trucks, truck parts, farm equipment, farm equipment parts, buses and bus parts, maintenance of trucks, farm equipment, buses and truck parts; and rebuilding of truck parts and bus parts” in class 37, and “building of truck parts” in class 40, and “distributorships in the field of truck parts, bus parts and farm equipment parts”, in class 42, used in commerce since at least as early as 1997.
Complainant contends that Respondent registered the domain name <inlandtruckparts.com> at least as early as September 2008, and is using the domain name to host an Internet search engine devoted to providing links to websites where customers can search for auto and truck parts accessories, many of which directly compete with Complainant. Complainant contends that the domain name is identical or confusingly similar to Complainant’s marks. Complainant further contends that Respondent is not associated or affiliated with Complainant, and is not authorized, licensed or permitted to use the domain name, or any other mark or name similar to Complainant’s marks. Complainant contends that from the content of Respondent’s website it is apparent that Respondent is not commonly known by the name “Inland Truck Parts” and Respondent’s WHOIS record does not make any indication that it is known by this name. Complainant contends that Respondent has no rights or legitimate interests in the domain name.
Complainant contends that Respondent has registered and used the domain name in bad faith, and with full knowledge of Complainant’s rights in the marks. Complainant contends that Respondent’s actions are clearly designed to generate profit for itself through affiliate programs, and to decieve Internet users into believing that Respondent is affiliated with, or sponsored by Complainant. Complainant contends that Respondent has also engaged in a pattern of bad faith registration of trademark of others, in violation of Policy ¶4(b).
Respondent does not contest the allegations of Complainant, agrees to the relief requested by the Complainant, and offers “unilateral consent to transfer.”
Complainant has established all three elements of the UDRP policy and Respondent does not contest the proof submitted, but rather consents to the transfer of the domain name to Complainant. Thus, the Panel finds that Complainant has established all elements of the Policy, and directs the transfer of the domain name to Complainant.
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.
Where Respondent has
consented to the transfer of the disputed domain name, the Panel may forego the
traditional UDRP analysis and order the immediate transfer of the domain
name. See Royal Bank of Scotland Group PLC
v. Richards, FA 1179260 (Nat. Arb. Forum June 2, 2008). In such situations where consent to transfer
is provided by Respondent, the Panel may direct transfer without
a finding on the merits, however, the Panel may also direct transfer of the
disputed domain name, along with findings in accordance with the Policy. See Graebel Vanlines, Inc. v.
Complainant asserts trademark rights in the marks INLAND TRUCK
PARTS COMPANY, and INLAND TRUCK PARTS AND SERVICE (
Respondent’s registered domain name <inlandtruckparts.com> includes Complainant’s mark. The disputed domain name is identical to the marks 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); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000).
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), see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant contends that Respondent is not authorized or licensed to use its marks, and that the WHOIS information lists Respondent as “Texas International Property Associates – NA NA.” Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(i). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed domain name resolves to a website that features advertisements for third-parties that directly compete with Complainant. Respondent does not contest this, or that the disputed domain name is not being used in conjunction 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007).
Complainant argues that Respondent
has been the respondent in numerous other UDRP cases wherein the disputed
domain names were transferred from Respondent to the respective complainants in
those cases. See, e.g., Yurman Studio, Inc. v.
Respondent has disrupted Complainant’s business by creating a website resolving to the disputed domain name that features products in competition with Complainant’s products. Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. This diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Moreover, Complainant asserts that Respondent has intentionally created a likelihood of confusion for commercial gain as to Complainant’s source or endorsement of the allegedly confusingly similar disputed domain name and corresponding website. Respondent has engaged in a pattern of bad faith registration and use 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 under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, Complainant asserts that Respondent had either actual or constructive notice of Complainant and Complainant’s rights in the mark given Complainant’s long-standing trademark registration, as well as the content of the resolving website. The Panel finds that Respondent’s use of Complainant’s federally registered name and marks constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inlandtruckparts.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: November 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum