True Value Company v. David Wetters
Claim Number: FA1112001420219
Complainant is True Value Company (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould P.C., Minnesota, USA. Respondent is David Wetters (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truevalueservices.net>, registered with Dotster.
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 December 15, 2011; the National Arbitration Forum received payment on December 15, 2011.
On December 15, 2011, Dotster confirmed by e-mail to the National Arbitration Forum that the <truevalueservices.net> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2012 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.net. Also on December 16, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 17, 2012, 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.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <truevalueservices.net> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or legitimate interests in the <truevalueservices.net> domain name.
3. Respondent registered and used the <truevalueservices.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, True Value Company, is an international manufacturer and distributor of a wide variety of products for over 5,000 retail hardware stores. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRUE VALUE mark (e.g. Reg. No. 1,165,207 registered August 18, 1981). Complainant uses the mark to brand its retail outlets and also licenses the mark to its franchisees.
Respondent, David Wetters, registered the <truevalueservices.net> domain name on October 4, 2011. The disputed domain name resolves to a website offering unrelated commercial services while prominently displaying the TRUE VALUE mark.
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 contends that it has established its rights in the TRUE VALUE mark by registering it with the USPTO (e.g. Reg. No. 1,165,207 registered August 18, 1981). Previous panels have determined that trademark registrations issued by the USPTO for a given mark satisfy the rights requirement under Policy ¶ 4(a)(i). See 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.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established its rights in the TRUE VALUE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.
Complainant also contends that Respondent’s disputed domain name is confusingly similar to the TRUE VALUE mark. The <truevalueservices.net> domain name includes the entire mark, merely removing the space between the terms of the mark, and adding the generic top-level domain “.net” along with the generic term “services.” The Panel finds that the changes made do not sufficiently differentiate Respondent’s disputed domain name from Complainant’s TRUE VALUE mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Therefore, the <truevalueservices.net> domain name and Complainant’s TRUE VALUE mark are confusingly similar under Policy ¶ 4(a)(i).
The Panel finds that Complainant has established Policy ¶ 4(a)(i) by showing that it has rights in the TRUE VALUE mark and that Respondent’s disputed domain name is confusingly similar to that mark.
Complainant has made what the Panel finds to be a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domain name. As a result of Complainant’s prima facie showing, the burden of proof under Policy ¶ 4(a)(ii) shifts to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”) Respondent, however, has failed to file a response in this matter, which allows the Panel to accept as true all of Complainant’s allegations. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will still examine the record in its entirety before making a determination on Respondent’s rights or legitimate interests in the disputed domain name in accordance with the guidelines provided by Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has not submitted any evidence to show that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “David Wetters.” Based upon the information available, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <truevalueservices.net> domain name resolves to a commercial website offering website design and consulting services unrelated to Complainant’s own product offerings. The Panel finds that using Complainant’s mark to offer unrelated products or services does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii) by showing that Respondent has not developed rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent is gaining commercially from the disputed domain name, demonstrating bad faith registration and use. Respondent’s disputed domain name resolves to its own commercial website where it offers professional website development and services. Respondent presumably generates revenue by charging its customers for these services. Internet users may arrive at the website and become confused when they see Complainant’s mark being used to sell unrelated commercial services. The Panel finds that Respondent has registered and is using the disputed domain name to drive traffic to its own commercial website in the hope that using Complainant’s mark will generate more business. As a result, the Panel finds that Respondent has clearly registered and is using the disputed domain name for its own commercial gain which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii) by showing how Respondent has registered and used the disputed domain name for its own commercial gain.
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.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 17, 2012
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