Trussbilt, LLC v. D. Skinner
Claim Number: FA1006001330480
Complainant is Trussbilt,
LLC (“Complainant”), represented by Karen
SA. Brennan, of Winthrop & Weinstine, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <trusswall.com>, registered with CAT, INC. d/b/a NAMEZERO.COM.
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 June 17, 2010.
On June 18, 2010, CAT, INC. d/b/a NAMEZERO.COM confirmed by e-mail to the National Arbitration Forum that the <trusswall.com> domain name is registered with CAT, INC. d/b/a NAMEZERO.COM and that Respondent is the current registrant of the name. CAT, INC. d/b/a NAMEZERO.COM has verified that Respondent is bound by the CAT, INC. d/b/a NAMEZERO.COM 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 June 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trusswall.com. Also on June 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 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" through submission of a Written Notice, as defined in Rule 1. 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 <trusswall.com> domain name is identical to Complainant’s TRUSSWALL mark.
2. Respondent does not have any rights or legitimate interests in the <trusswall.com> domain name.
3. Respondent registered and used the <trusswall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Trussbilt, LLC, manufacturers security products for detention facilities. Complainant has used its TRUSSWALL mark in connection with a metal wall system for detention facilities, since as early as February 15, 2000. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRUSSWALL mark (e.g., Reg. No. 3,645,483 filed on October 10, 2007).
Respondent, D. Skinner, registered the <trusswall.com> domain name on September 22, 2003. The disputed domain name resolves to a website that offers the disputed domain, as well as additional domains, for sale. In December 2009, Complainant offered to buy the disputed domain name for $1,000 from Respondent. Approximately one year later, on December 15, 2010, Respondent replied with a counteroffer of $10,375 for the <trusswall.com> domain name.
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.
Complainant asserts rights in the TRUSSWALL mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,645,483 filed on October 10, 2007). The Panel finds this registration sufficiently establishes Complainant’s rights in the TRUSSALL mark pursuant to Policy ¶ 4(a)(i). 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
In addition, Complainant asserts common law rights in the TRUSSWALL mark through its continuous use since 2000 and the consequent development of secondary meaning in the mark. Complainant states it has been in business for over 80 years. Complainant also claims it has used its TRUSSWALL mark in connection with its detention products since as early as February 15, 2000. Complainant asserts it has supplied its products to the majority of United States detention facilities and facilities in over 17 foreign countries. Moreover, Complainant owns other trademark registrations including the term “truss,” including TRUSSBILT (e.g., Reg. No. 790,585 registered on June 8, 1965) and TRUSSCORE (e.g., Reg. No. 817,645 registered on November 1, 1966). The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the TRUSSWALL mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 2000. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s <trusswall.com> domain name is
identical to its TRUSSWALL mall. The
Panel finds attaching the generic top-level domain (“gTLD”) “.com” to
Complainant’s exact mark does not render Respondent’s disputed domain name
distinct from Complainant’s mark. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also
SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical
to [the] complainant’s SCOLA mark, as the only alteration to the mark is the
addition of the generic top-level domain “.com.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first show Respondent lacks rights and legitimate interests in the disputed <trusswall.com> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See 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.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant has not given Respondent permission to use its mark in a domain name. Additionally, the WHOIS information lists “D. Skinner” as the registrant of the <trusswall.com> domain name. With no evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Screen shots of Respondent’s resolving website show a site that features links to third-party websites, some of which compete with Complainant. The Panel presumes Respondent profits from this use through the receipt of click-through fees. Therefore, the Panel finds this use does not constitute 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also 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).
Furthermore, the resolving website displays an image of a “for sale” price tag. The site also contains the message “this website and domain name are for sale.” In addition to Respondent’s offer to sell the disputed domain name to the general public, Complainant submits evidence of correspondence between Complainant and Respondent in which Respondent offers to sell the disputed domain name directly to Complainant. In December 2009, Complainant offered to buy the disputed domain name for $1,000 from Respondent. Approximately one year later, on December 15, 2010, Respondent replied with a counteroffer of $10,375 for the <trusswall.com> domain name. The Panel finds Respondent’s $10,375 counteroffer far exceeds Respondent’s out-of-pocket costs for the dispute domain name. Therefore, the Panel finds this offer provides additional evidence of Respondent’s lack of rights and legitimate interests in the <trusswall.com> domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds
Respondent’s attempt to sell the disputed domain name to Complainant for more
than its out-of-pocket costs is evidence of bad faith registration and use
under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that the respondent demonstrated bad faith when he requested
monetary compensation beyond out-of-pocket costs in exchange for the registered
domain name); see also World
Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that the respondent used the domain name in bad faith because he
offered to sell the domain name for valuable consideration in excess of any
out-of-pocket costs).
Respondent’s <trusswall.com>
domain name reroutes Internet users
seeking Complainant’s products to Respondent’s website, which features links to
third-party websites that compete with Complainant’s business. The Panel finds Respondent’s use of a
confusingly similar domain name to divert Internet users to its site disrupts
Complainant’s business, which qualifies as registration and use in bad faith
pursuant to Policy ¶ (b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA
328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet
traffic that seeks out the <aol.tv>
domain name to a competitor’s news site.
The Panel strongly finds that appropriating Complainant’s mark to refer
customers seeking Complainant to Complainant’s competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent profits from using a domain name identical to Complainant’s mark. The Panel finds Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s TRUSSWALL mark as to the source, sponsorship, affiliation, or endorsement of its website. The Panel finds this use further evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trusswall.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 23, 2010
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