TruckMaster Logistics Systems v. Avid Amiri
Claim Number: FA0903001250273
Complainant is TruckMaster
Logistics Systems (“Complainant”), represented by Steven L.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truckmaster.com>, registered with Network Solutions, 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.
David Safran, Darryl C.Wilson, Beatrice Onica Jarka as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2009.
On March 3, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <truckmaster.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2009 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.
A timely Response was received and determined to be complete on March 25, 2009.
The Complainant submitted a timely Additional Submission on March 30, 2009.
The Respondent submitted a timely Response to the Additional Submission submitted by the Complainant.
In addition, both the Complainant and the Respondent have submitted further points of view (on April 7, 2009 the Complainant and on April 10, 2009 the Respondent) which were transmitted to the Panel. The Panel notes that the further points of view transmitted by the Complainant and the Respondent are not according to Supplemental Rule 7(e), but the Panel decided to review them.
On April 3, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David Safran, Darryl C. Wilson, Beatrice Onica Jarka as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent is requesting a finding of reverse domain name hijacking.
The Complainant contends:
In its Response the Respondent alleges that:
§ The Complainant does not have a registered trademark in the name “TruckMaster”.
§ The Complainant has not offered any evidence to support a finding of a common law mark.
§ “TruckMaster” is a descriptive term and, therefore, is only protected if it has acquired “secondary meaning,” and the Complainant has not provided any evidence that the public at large has come to associate the mark with Complainant’s goods and services.
§ The Respondent and the Complainant do not even sell similar products and/or services, as the core business of the Respondent is the sale of truck and auto accessories which differs from the Complainant’s offer of services and products, described as “downloadable computer software for use with dispatch and tracking freight trucks” and “brokerage of transportation services.”
§ The Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services.
§ The Respondent and his associates run a successful Internet business of dealing in and developing domain names, particularly generic domain names (i.e., domain names containing common words or phrases and descriptive terms) and optimizing the domain names for the search engines.
§ The Respondent sells over 25,000 products on its website under the disputed domain name, as a distributor for several large, nationally-renowned manufacturers.
§ The prior correspondence between the Complainant and the Respondent shows that both parties believed Respondent had rights or a legitimate business interest in the domain name.
§ The Respondent has not registered and is not using the disputed domain name in bad faith.
§ The Complainant has engaged in reverse domain name hijacking.
C. Additional Submissions
By additional submission, the Complainant
further contends that:
§ It has established common-law rights in the mark TruckMaster in commerce and though the disputed domain, as it has made gross revenues of $7.9 million in 2006, and $10.4 million in 2007 and $9.6 million in 2008, and it has spent $67,000 on advertising the Disputed Domain from 2000 to 2002 alone,
§ There is likelihood of confusion between the disputed domain name and the Truckmaster trademark in which the Complainant asserts common law trademark.
§ The Respondent is intentionally misrepresenting the existence of his “business” to the Panel and online visitors are evidence that Respondent is making other intentional misrepresentations in his Response,
§ The Respondent engaged in deception to create the perception of compliance with the UDRP to potential panelists, as it is not actually developing any business under the disputed domain name as it pretends, evidence in this sense being the three orders placed by the Complainant agents on the website which were all canceled,
§ The Respondent is attempting to sell the disputed domain and always intended to do so,
§ The Respondent is fabricating evidence online in anticipation of an ex officio investigation by the Panel, and in support of his misrepresentations in the Response,
By the Response to the additional submissions, the Respondent further contends that:
§ The Complainant has not succeeded to prove its common law rights in the disputed domain name.
§ There is no likelihood of confusion between the products of the Complainant and the disputed domain name as the traffic arriving at the domain name is arriving in search of the truck accessory products offered by the Respondent and not in consideration of the products offered by the Complainant as it results from the evidences attached.
§ The cancellation of the orders placed by the Complainant’s agents was intentional as the Respondent suspected that it comes from Complainant.
By the further
points of view sent by the Complainant on April 7, 2009 and by the Respondent
on April 10, 2009 which were transmitted to the Panel, both parties are summing
up the same reasoning already presented above and the Panel considers that
there is no need to further repeat it.
The Panel finds that the Complainant has not adequately met the burden required in order to receive the requested relief
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.
Complainant asserts in its Complaint and Additional Submission its common law rights in the TRUCKMASTER mark through its use of the mark since 1996 in connection with the provision of logistical commercial software for trucking companies.
Common law trademark rights are sufficient to support a complaint under the Policy, but the Complainant bears that burden of proving such rights. See Best Web Resources, Inc. v. Floral Craft, Inc, FA 264403 (Nat. Arb. Forum June 7, 2004) (finding that the issue is not whether the claimed mark is weak or strong, but whether there is sufficient evidence of a mark in the first place).
- the association made by the actual purchasers of the product bearing the claimed trademark between the trademark with the producer as evidenced by survey or direct consumer testimony;
- the degree and manner of advertising under the claimed trademark;
- the length and manner of use of the claimed trademark; and
- the exclusive use of the claimed trademark.
There is not doubt that the Complainant’s claimed trademark is not an inherently distinctive trademark. This is why the common law trademarks claimed by the Complainant have to be supported by a secondary meaning acquired by the claimed mark in consideration of the criteria mentioned above.
It is the opinion of the Panel that the reasoning and the evidence provided by the Complainant in support of a secondary meeting for the claimed trademark are at least prima facie far from attesting the criteria indicated above. The Complainant asserts that it has expended thousands of dollars in advertising the disputed domain name and that its products are known by the TRUCKMASTER mark. The only evidences produced by the Complainant in its favor are statements of its agents and representatives and evidence of some advertising Check Ledger from 2000 to 2002 almost 5 years before the Complainant’s registration in the disputed domain name lapsed.
In addition, the Complainant has not been sufficiently bothered by the use of the disputed domain name by the Respondent for more than a year since its registration in the disputed domain name has lapsed and the Respondent registered the disputed domain name to start any legal action for putting an end to such use and continued its business under another domain name.
Under the present circumstances, the Panel is of the view that Complainant has failed to prove under the UDRP that it possesses common law trademark rights in “TRUCKMASTER.” See., e.g., Supremo n.v./s.a v. Tella, D2001-1357 (WIPO Feb. 15, 2002) (finding that Complainant failed to prove common law rights in “Supremo”); see also EMONEY GROUP Inc. v. eMoney, FA 96337 (Nat. Arb. Forum Mar. 26, 2001) (finding that the claimed mark “EMONEY” was generic and had not acquired secondary meaning); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Witteles v. Domain Guy, FA 616302 (Nat. Arb. Forum Feb. 27, 2006) (finding that the complainant failed to prove common law rights because it “did not provide any evidence of secondary meaning or continuing use…”).
Moreover, even if it is assumed that Complainant has rights in the TruckMaster trademark, confusing similarity has not been proved given the specific mark claim of the Complainant and its use (Internet based software retail) relative to the use by the Respondent of the disputed domain name (sale of sale of truck and auto accessories).
Therefore, the Panel finds that Complainant lacks rights in the mark under Policy ¶ 4(a)(i).
As the Panel concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent asserts that Complainant has attempted to engage in reverse domain name hijacking by filing the instant UDRP case while knowing that Respondent had rights or legitimate interests in the disputed domain name, and that Respondent did not, or could not, have registered or used the disputed domain name in bad faith.
In order to find reverse domain name hijacking, the Respondent must show that the Complainant brought the claim in bad faith despite the knowledge that the Respondent has an unassailable right or legitimate interest in the disputed domain name. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of, the respondent must show that the complainant brought the claim in bad faith despite the knowledge that the respondent has an unassailable right or legitimate interest in the disputed domain name, or that the respondent lacks the requisite bad faith registration and use of the disputed domain name); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that the complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Under these proceedings, the Panel found in the reasoning and evidences provided by the Complainant a strong belief that it is the holder of common law rights in TRUCKMASTER claimed mark. In this sense the Panel cannot identify bad faith in filing the complaint against the Respondent.
Therefore, no reverse domain name hijacking had been found.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, but no reverse domain name hijacking has been found.
Beatrice Onica Jarka
David Safran, Darryl C. Wilson,
Dated: April 15, 2009
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