national arbitration forum

 

DECISION

 

True Value Company v. True Value Services Inc.

Claim Number: FA1108001404573

 

PARTIES

Complainant is True Value Company (“Complainant”), represented by Danielle I. Mattessich, Minnesota, USA.  Respondent is True Value Services Inc (“Respondent”), represented by David Wetters, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <truevalueservices.com>, registered with DOTSTER.

 

PANEL

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.

 

Dennis A. Foster as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2011; the National Arbitration Forum received payment on August 24, 2011.

 

On August 24, 2011, DOTSTER confirmed by e-mail to the National Arbitration Forum that the <truevalueservices.com> domain name is registered with DOTSTER and that Respondent is the current registrant of the name.  DOTSTER has verified that Respondent is bound by the DOTSTER 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 August 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2011 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@truevalueservices.com.  Also on August 25, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on September 9, 2011.

 

Complainant’s Additional Submission was received on September 13, 2011 and is deemed compliant with Supplemental Rule 7.

 

Respondent’s Additional Submission was also received on September 13, 2011 and is also deemed compliant with Supplemental Rule 7.

 

On September 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A Foster as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

- Complainant is a United States of America company that manufactures and distributes hardware items to over 5,000 stores, most of which operate under Complainant’s TRUE VALUE service mark.

 

- Complainant has used its TRUE VALUE trademarks and service marks continuously and without interruption since 1963.  Complainant owns several United States Patent and Trademark Office (“USPTO”) registrations for that mark.

 

- Complainant also offers its goods and services online through the domain name, <truevalue.com>, which it owns.

 

- The disputed domain name, <truevalueservices.com>, is confusingly similar to the TRUE VALUE mark.  That name fully incorporates the mark, adding only the generic term, “services.”  Consumers are likely to be confused into believing that the website found at the disputed domain name is sponsored by or affiliated with Complainant and/or its mark.

 

- Respondent has no rights or legitimate interests in the disputed domain name.  Respondent is not a licensee of Complainant, nor has Respondent been affiliated with Complainant.  Moreover, Complainant’s rights in its TRUE VALUE mark predate registration of the confusingly similar disputed domain name.

 

- Respondent is not commonly known by the disputed domain name.  Presumably, Respondent benefits commercially by attracting Complainant’s affiliated members, who are seeking advertising advice and services and believe that the disputed domain name is operated by Complainant.  Such use by Respondent of the name constitutes neither legitimate noncommercial nor fair use of the name nor a bona fide offering of goods or services. 

 

- Respondent registered and is using the disputed domain name in bad faith.  Respondent had knowledge of Complainant’s famous mark before registration of the name.  Thus, Respondent was attempting to attract Internet users for commercial gain through likely confusion with Complainant’s mark.

 

-  After having been requested by Complainant to cease using the disputed domain name, Respondent offered to sell the name to Complainant for $10,000, far in excess of legitimate registration costs.  Following Complainant’s counter-offer of $1,000, Respondent asked for a reduced amount of $8,000.  Finally, Respondent told Complainant that Respondent was willing to settle for $5,000.  Such negotiation for sums above its reasonable out-of-pocket registration costs demonstrates Respondent’s bad faith.

 

B. Respondent

- Respondent’s TRUE VALUE SERVICES mark is different from Complainant’s TRUE VALUE mark in font style and color, so the two, similar in some respects, are not confusingly similar.  Complainant has provided no examples of consumer confusion, and there are many USPTO trademarks held by third-parties that include the words “true” and “value.”

 

- Respondent was incorporated in the state of Texas on June 19, 2004, and has been using the TRUE VALUE SERVICES INC. name in commerce for more than five years.  Respondent operates many domain names that begin with the word ‘true” and end with “value,” the majority of which are housed under the “True Value Services” brand.

 

- Releasing the disputed domain name will cost Respondent much money, for which Respondent should be reasonably compensated as per the negotiations between the two parties.

 

- Unlike Complainant, Respondent does not make or sell hardware.  Respondent is in the business of Internet marketing for professional services businesses.  Complainant has been using its TRUE VALUE mark concurrently with Respondent’s use of its TRUE VALUE SERVICES mark for years, without incurring consumer confusion.

 

C. Complainant’s Additional Submission

- Respondent’s contention that its claimed mark and Complainant’s mark differ in font style and color has no merit in connection with a UDRP proceeding.

 

- The addition of the generic word “services” in the disputed domain name does not offer a meaningful distinction with Complainant’s TRUE VALUE mark, particularly as Complainant also operates in the “services” industry.

 

- Complainant need not provide evidence of actual consumer confusion to succeed in this forum.

 

- Respondent’s list of USPTO registrations of marks allegedly similar to Complainant’s mark does not mean that Complainant’s mark is weak, as many of those registrations have been cancelled or abandoned or belong to third-parties that offer goods or services completely different than those marketed by Complainant.

 

- Complainant seeks only to assert its legitimate trademark rights, and any suggestion by Respondent that Complaint is engaged in “theft” or “dirty practices” is without merit.

 

D. Respondent’s Additional Submission

- Complainant’s additional arguments are frivolous.  Respondent registered the disputed domain name in good faith and for purposes – originally for services like stock and mortgage valuation – having nothing to do with Complainant for over five years without incident.

 

- The generic words “true value” are open for use by all people.

 

FINDINGS

Complainant is a United States of America company that manufactures and distributes hardware in more than 5,000 stores throughout that country.  It has operated in this business since 1963 and owns valid USPTO registrations for its TRUE VALUE trademark (e.g., Registration No. 1,128,204; issued on December 25, 1979).

 

Respondent owns the disputed domain name, <truevalueservices.com>, whose date of registration is January 21, 2006.

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established its trademark rights in the TRUE VALUE mark for the purposes of this proceeding by providing the Panel with appropriate evidence (Exhibit A) of its valid USPTO registration for that mark.  See Miller Products Company v. Marc Grozinger, FA 823231 (Nat. Arb. Forum Dec. 5, 2006) (“Rights in a trademark can be shown in several ways, including by way of a U.S. trademark registration.  A trademark registration constitutes prima facie evidence of its ownership and validity of the mark.”); see also TruServ Corp. v. CreativeV, FA 97849 (Nat. Arb. Forum Aug. 17, 2001).

 

The Panel notes that the disputed domain name, <truevalueservices.com>, is not identical to Complainant’s TRUE VALUE mark because of the additional term, “services.”  However, this addition barely serves to distinguish the name from the mark, and certainly fails to allay Complainant’s contention that the two are confusingly similar.  Because any company like Complainant provides customers with services along with products, the additional “services” term only heightens the likelihood that Internet users would confuse the disputed domain name with Complainant and its mark.  Thus, the Panel concludes that the disputed domain is confusingly similar to Complainant’s mark.  See, e.g.¸ Am. Int’l Group, Inc. v. AIG-Services, FA 1013505 (Nat. Arb. Forum Aug. 2, 2007) (finding <aig-services.com> to be confusingly similar to the AIG mark); see also Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004) (“. . . there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms.”).

 

Respondent’s contention that its claimed mark and Complainant’s mark differ in font style and color is irrelevant, because domain names under consideration in a UDRP do not possess distinctive fonts or colors.  Respondent also makes the erroneous contention, in the Panel’s view, that Complainant must present evidence of actual consumer confusion between its mark and the disputed domain name to sustain a finding of confusing similarity between the two.  Prior Policy panels have rejected this approach – which might entail a quite costly and time-consuming task for complainants – concluding that the Policy requires that panels reach a conclusion on their own as to whether there is a reasonable basis for confusion between the letters, numbers and symbols used in a disputed domain name as against the corresponding trademark or service mark.  See Lucasfilm Ltd. v. Cupcake City, D2001-0700 (WIPO Sept. 15, 2001); Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (“Under the Policy, the question of identity and confusing similarity is evaluated based solely on a comparison between a complainant’s word mark and the alphanumeric string constituting the domain name at issue.”); see also EAuto, L.L.C. v. Net Me Up, D2000-0104 (WIPO Apr. 13, 2000).  As reasoned above, the Panel has reached such a conclusion.

 

Consequently, the Panel finds that Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.

 

Rights or Legitimate Interests

 

Complainant has convinced the Panel that the disputed domain name is confusingly similar to Complainant’s mark.  Complainant also asserts, without contradiction, that it has never licensed use of the mark to Respondent or been affiliated with Respondent.  In so doing, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  It is then Respondent’s responsibility to come forward with specific evidence to support a finding in this case that it does possess those rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“. . . 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.”).  

 

Presumably seeking to invoke Policy paragraph 4(c)(ii) in its favor to establish its rights or legitimate interests in the disputed domain name, Respondent suggests to the Panel that Respondent incorporated in Texas under the name “True Value Services Inc.” some 19 months before registration of the disputed domain name.  However, Respondent has not provided the Panel with sufficient (or any) evidence of sales or volume of business under that corporate name such that Respondent could sustain the contention that it was commonly known as <truevalueservices.com> before said registration.  Thus, the Panel cannot conclude that the requirements of paragraph 4(c)(ii) have been met in this case.  See Michael Smith Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008) (“. . . ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the ‘commonly known’ provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”) (emphasis added); see also Banco Espírito Santo S.A. v. Bancovic, D2004-0890 (WIPO Dec. 16, 2004) (“It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest.  The Respondent must produce evidence in order to show that he or she has been ‘commonly known’ by the domain name.”).

 

Respondent also contends that it is using the disputed domain name “in connection with a bona fide offering of goods and services,” in satisfaction of the criteria listed in paragraph 4(c)(i).  Respondent claims to be employing the name for the purpose of rendering Internet marketing services to Internet users who are professionals.  While the Panel might agree with Respondent that this use differs from Complainant’s main business of hardware manufacture and supply, Respondent, as noted above, has failed to furnish the Panel with evidence that such services have generated any sales or revenues – i.e., in short, that such operation of the disputed domain name constitutes an actual or bona fide offering of services.  Without such evidence, the Panel is unconvinced that paragraph 4(c)(i) is applicable to this case.  Moreover, given Respondent’s claim of such commercial use of the disputed domain name, the Panel concludes that the name is not being used by Respondent for “legitimate noncommercial or fair use” purposes per paragraph 4(c)(iii).

 

Respondent argues that Complainant’s trademark is composed of two generic terms, “true” and “value,” and that anyone, including Respondent, should be able to register a domain name composed of the generic terms “true,” “value” and “services” without restriction.  While the Panel might agree that standing alone the words “true,” “value” and “services” have defined meanings as common English language words, the Panel finds that the phrases “true value” and “true value services” have no distinct or generic meanings on their own.  On the other hand, the Panel believes that – through longevity and degree of use – the combination, “true value,” has taken on a secondary meaning relating uniquely to Complainant’s trademark and the hardware products it produces and sells.  As a result, the Panel does not agree that the combination “true value services” is a generic term.

 

Finally, Complainant has supplied the Panel with credible evidence in the form of copied e-mail records (Exhibit G) that, after initial contact from Complainant seeking a transfer of rights in the disputed domain name, Respondent sought to extract a fee of $10,000 for such a transfer.  Subsequent e-mail correspondence between the parties yielded diminishing requests of $8,000, and finally $5,000, from Respondent for rights in the disputed domain name.  The Panel judges that all of said sums are far in excess of Respondent’s reasonable out-of-pocket costs incurred in connection with registration of the disputed domain name.  In line with previous UDRP rulings, the Panel determines that Respondent’s effort to sell the name for more than demonstrated out-of-pocket costs is further evidence that Respondent has no rights or legitimate interests in the disputed domain name.  See Pella Corp. v. Above.com Domain Privacy, FA 1397607 (Nat. Arb. Forum Aug. 15, 2011); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (“The Panel finds that Respondent’s willingness to sell the disputed domain name registration suggests that it has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

In considering all of the above, the Panel does not believe that Respondent has successfully countered Complainant’s prima facie case.

 

Accordingly, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

As set forth in the previous section, Complainant has established to the Panel’s satisfaction that Respondent attempted to sell the disputed domain name to Complainant for between $10,000 and $5,000, the entire range lying far beyond Respondent’s demonstrable out-of-pocket costs incurred in connection with registration of that name.  Based upon that evidence, the Panel is compelled to find that Respondent registered and is using the disputed domain name in bad faith per paragraph 4(b)(i) of the Policy.   See, e.g., Williams-Sonoma, Inc., supra, (“Respondent offered to sell the disputed domain name registration to COMPLAINANT for more than $10,000.  The Panel finds that Respondent’s request for compensation in excess of its out-of-pocket costs equals bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also American Home Prods. Corp. & Genetics Inst., Inc. v. Global Prods., D2000-0456 (WIPO August 11, 2000) (“[Respondent’s] offer to sell one of the domain names at issue for US$10,000 is evidence of bad faith registration and use under the Policy, ¶4(b)(i).”).

 

As so reasoned, the Panel rules that the disputed domain name was registered and is being used in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <truevalueservices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dennis A. Foster, Panelist

Dated:  September 28, 2011

 

 

 

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