Super Automotive Products, Inc. v. - / Orlando Rodriguez
Claim Number: FA1109001408868
Complainant is Super Automotive Products, Inc. (“Complainant”), represented by Mario R. Oronoz of Oronoz & Oronoz, Puerto Rico. Respondent is - / Orlando Rodriguez (“Respondent”), Puerto Rico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <supertruckparts.com>, registered with InexpensiveDomains.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2011; the National Arbitration Forum received payment on September 23, 2011.
On September 26, 2011, InexpensiveDomains.com confirmed by e-mail to the National Arbitration Forum that the <supertruckparts.com> domain name is registered with InexpensiveDomains.com and that Respondent is the current registrant of the name. InexpensiveDomains.com has verified that Respondent is bound by the InexpensiveDomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@supertruckparts.com. Also on October 3, 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 October 17, 2011.
A timely Additional Submission from Complainant was received on October 21, 2011.
A timely Additional Submission from Respondent was received on October 25, 2011.
All submissions were considered by the Panel.
On October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions
1. Respondent’s <supertruckparts.com> domain name is identical to Complainant’s SUPER TRUCK PARTS mark.
2. Respondent does not have any rights or legitimate interests in the <supertruckparts.com> domain name.
3. Respondent registered and used the <supertruckparts.com> domain name in bad faith.
B. Respondent makes the following contentions
1. Complainant has presented a certificate that states that the protected name is Super Truck and specifically excludes the word “Parts” from the name.
2. SUPER TRUCK is a generic name that refers to a specific class of vehicle.
3. The law under which the service name was registered specifically prohibits names which describe the service or goods being offered.
4. The name Super Truck Parts is not protected as a corporate name.
5. Respondent sells parts for super trucks and has used the domain name as asserted by Complainant for years for the purpose of promoting the sale of truck parts to several manufacturers and vendors.
C. Complainant’s Reply to Response
1. The disclaimer of the term “truck” does not have the effect of removing from the registered mark the matter disclaimed. It disclaims only a claim that the federal registration gives an exclusive right in those disclaimed words or symbols per se.
2. The protection granted to Complainant’s mark, “Super Truck Parts,” is a protection of the mark as a whole, including the disclaimed portions of the mark.
3. A certificate of registration in the Puerto Rico Trademark Office is prima facie evidence of the validity of the registered mark, of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark.
4. “Super Truck Parts” is not a generic term for the services provided by Complainant.
D. Respondent’s Response to Complainant’s Reply to Response
The term “SUPER TRUCK” has been common to describe certain classes of heavy duty vehicles since at least 1980 and is widely used in the industry by many manufacturers of trucks and parts.
Complainant owns the trademark SUPER TRUCK PARTS registered with the Puerto Rico Department of State on June 14, 2001.
For the reasons set forth below, the Panel finds that Complainant is entitled to relief.
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.
Complainant has rights in the SUPER TRUCK PARTS mark because it has registered the mark with the Puerto Rico Department of State (Reg. No. 51,010 registered June 14, 2001). The Panel finds that registration of a mark with a trademark authority demonstrates that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See 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)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <supertruckparts.com> domain name is identical to Complainant’s SUPER TRUCK PARTS mark because the only minor differences are the deletion of the spaces between the terms of the mark and the attachment of the generic top-level domain (“gTLD”) “.com.” Panels have established that neither deleted spaces nor an added gTLD have any effect on the Policy ¶ 4(a)(i) confusingly similar analysis, such as in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007). The Panel thus holds that Respondent’s <supertruckparts.com> domain name is identical to Complainant’s SUPER TRUCK PARTS mark pursuant to Policy ¶ 4(a)(i).
Respondent contends that the <supertruckparts.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical to Complainant’s mark. The Panel finds that such a determination is not proper under Policy ¶ 4(a)(i) because Complainant has a trademark registration for the SUPER TRUCK PARTS mark. See Vance Int’l Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has proven this element.
Rights and Legitimate Interests
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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant makes no specific allegations under Policy ¶ 4(c)(ii). The Panel finds, however, that the WHOIS information for the <supertruckparts.com> domain name identifies the registrant as “Orlando Rodriguez.” This name is not similar to the disputed domain name and the Panel concludes that Respondent is therefore not commonly known by the <supertruckparts.com> domain name according to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent uses the <supertruckparts.com> domain name to redirect Internet users to Respondent’s website, “La Casa del Camionero,” which directly competes with Complainant by also offering automotive related products and parts. Complainant asserts that Respondent specifically registered the disputed domain name and linked it to Respondent’s own commercial website in order to profit from misdirected clients of Complainant. The Panel finds that using Complainant’s mark in a disputed domain name to redirect consumers to a competitor’s competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant has proven this element.
Registration and Use in Bad Faith
Complainant alleges that Respondent’s <supertruckparts.com> domain name resolves to the website “La Casa del Camionero,” which is Respondent’s own mark for its competing business. Complainant contends that Respondent owns, either wholly or in part, La Casa del Camionero, Inc., which imports and distributes automotive and truck parts and related merchandise in Puerto Rico. Complainant argues that Respondent’s company is a direct competitor of Complainant within the small geographical area of Puerto Rico and that its use of the disputed domain name to divert consumers to Respondent’s website under Complainant’s mark disrupts Complainant’s business and exemplifies bad faith registration and use according to Policy ¶ 4(b)(iii). The Panel agrees and finds bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant asserts that Respondent’s <supertruckparts.com> domain name uses Complainant’s mark to attract consumers and then directs them to Respondent’s resolving commercial website for its own business. Complainant argues that Respondent aims to create confusion among consumers as to the affiliation between Respondent’s disputed domain name and resolving website and Complainant. As the resolving website is a commercial website supporting Respondent’s business, Complainant contends that Respondent has registered and used the disputed domain name in this manner in order to commercially profit from the goodwill associated with Complainant’s mark. The Panel finds that these activities indicate bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <supertruckparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 31, 2011
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