True2Form Collision Repair Centers, Inc. v. Trevor Smith
Claim Number: FA0912001299510
Complainant is True2Form Collision Repair Centers, Inc. (“Complainant”), represented by Robert J. Morgan, of Porter, Wright, Morris & Arthur, Ohio, USA. Respondent is Trevor Smith (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <true2form.net>, registered with Melbourne IT, LTD. d/b/a Internet Names Worldwide.
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 December 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 22, 2009.
On December17, 2009, Melbourne IT, LTD. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <true2form.net> domain name is registered with Melbourne IT, LTD. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, LTD. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, LTD. d/b/a Internet Names Worldwide 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 December 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2010 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@true2form.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 <true2form.net> domain name is confusingly similar to Complainant’s TRUE2FORM COLLISION REPAIR CENTERS mark.
2. Respondent does not have any rights or legitimate interests in the <true2form.net> domain name.
3. Respondent registered and used the <true2form.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, True2Form
Collision Repair Centers, Inc., holds multiple trademark registrations for its
TRUE2FORM COLLISION REPAIR CENTERS with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No.
3,448,822 issued June 17, 2008) in connection with auto repair services.
Respondent, Trevor Smith, registered the disputed domain name on March 17, 2009. The disputed domain name resolves to a website with links and advertisements for information and services which relate to Complainant’s automobile services and industry.
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 Complainant has established rights in the TRUE2FORM COLLISION REPAIR CENTERS mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name merely deletes the descriptive phrase “collision repair centers” from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.net”, which does not diminish the confusing similarity between the disputed domain name and Complainant’s mark. TRUE2FORM is the dominant portion of Complainant’s mark and of the disputed domain name. Respondent’s <true2form.net> domain name is therefore confusingly similar to Complainant’s TRUE2FORM COLLISION REPAIR CENTERS mark pursuant to Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel also finds that the addition of a gTLD is irrelevant in distinguishing between a disputed domain name and a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Trevor Smith.” There is no other evidence in the record that would indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s <true2form.net>
domain name
was registered on March 17, 2009. The disputed domain name resolves to a
website with links and advertisements which relate to Complainant’s automobile
services and industry. The Panel finds
that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand
Domains, FA 714952
(Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web
directory displaying various links to third-party websites was not a use in
connection with 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), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites); see
also Bond
& Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding
that the use of the disputed domain name to operate a website displaying links
to competing goods and services was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <true2form.net> domain name to operate a
website offering services that compete with Complainant constitutes a
disruption of Complainant’s business, and bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner,
FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii) by using the disputed domain names to operate websites that compete
with the complainant’s business); see
also St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users
seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”).
Respondent’s use of the
confusingly similar domain name to intentionally attract Internet users seeking
Complainant’s services by creating a strong likelihood of confusion with
Complainant’s TRUE2FORM COLLISION REPAIR CENTERS mark is further evidence of
bad faith registration and use. The
Panel presumes that Respondent is profitting through the receipt of
click-through fees for the competitive links published on the website resolving
from the disputed domain name.
Therefore, the Panel finds that this use of the disputed domain name
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19,
2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme); see also 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.’”).
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 <true2form.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 11, 2010
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