True Value Company v. Premierco / Robert Aronin
Claim Number: FA1112001421276
Complainant is True Value Company (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould P.C., Minnesota, USA. Respondent is Premierco / Robert Aronin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truevaluetools.com>, registered with Name.com LLC.
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 22, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <truevaluetools.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@truevaluetools.com. Also on December 29, 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 Response was received and determined to be deficient on January 23, 2012. The Response was received five (5) days after the 20-day period within which Respondent has leave to file its Response. Although the Response was deemed deficient, this Panelist has decided to consider the Response.
On January 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of several U.S. applications and registrations for the TRUE VALUE trademark and service mark. True Value is an international manufacturer and wholesale distributor for a cooperative of approximately 5,000 retail hardware stores, most of which operate under the TRUE VALUE service marks and sell a large range of hardware products bearing the TRUE VALUE trademark. True Value first adopted the TRUE VALUE service mark in 1963 and has used it without interruption since that date.
Complainant has made extensive online use via the Internet of its TRUE VALUE marks through marketing directly to consumers. Complainant owns the domain www.truevalue.com and has a number of other domains which use the TRUE VALUE mark as a root.
The domain name in dispute was previously owned by Respondent and transferred by this Panel to Complainant in the proceeding The True Value Company v. Premierco LLC c/o Robert ARonin, 2008 NAFDD Lexis 21856 (2008) (Ex. E). Complainant inadvertently neglected to renew the <truevaluetools.com> domain name when it expired and Respondent registered the domain name on December 7, 2009.
Respondent's domain name is identical and confusingly similar to the TRUE VALUE mark. It fully incorporates the Complainant's mark and consumers are likely to be confused into believing that the website is sponsored by or affiliated with True Value. The word "tools" in this context must be taken to mean the type of goods offered for sale at TRUE VALUE hardware stores. Respondent appears to be engaged in the business of providing pay-per-click listings and services to merchants via the Internet all of which presumably depend on the confusingly similarity to the TRUE VALUE mark. Moreover, this Panel has previously held in the above referenced case that the disputed domain was confusingly similar to Complaint's TRUE VALUE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with True Value or connected in any way. Respondent is not licensed or authorized to use the domain name and is not commonly known by the name.
There is no legitimate reason for Respondent to have re-registered the subject domain name other than to trade off the goodwill established in True Value's famous mark. This is clearly established by Respondent's website which directs users to pornographic materials on other websites. This type of domain use is not a bona fide offering of goods or services.
Respondent's registration and use of the disputed domain name is in bad faith. Respondent had actual notice and knowledge of Complainant's rights in the TRUE VALUE mark by virtue of the previous domain name dispute referred to above wherein the domain name was transferred to Complainant. Respondent also had constructive notice of Complainant's rights because Complainant's mark has been a registered trademark since at least as early as 1978. Registration and use of a domain name that is confusingly similar to a famous mark that was entered into the public registry well before the disputed domain name was registered constitutes bad faith.
Respondent has offered to sell the disputed domain name for more than the estimated out-of-pocket costs. This also constitutes bad faith. Respondent has a pattern of purchasing domain names that are confusingly similar to established trademarks and attempting to sell them for far more than its estimated out-if-pocket costs.
B. Respondent
Respondent denies the allegations made by Complainant and asks that this Panel affirm its rights to the registration of the disputed domain name. Courts have said that the registration of a domain name without more does not amount to infringement of a mark similar to the name. Courts have found that knowledge of infringement cannot be imputed, even after notice of the existence of another party's rights in light of the inherent uncertainty with respect to the scope of trademark rights, and the mere assertion by a trademark owner that a domain name infringes its mark is not sufficient to impute knowledge of infringement.
Respondent registered the disputed domain name with the intention of developing a site that reviews and sells internet development software/applications. This purpose is well beyond the scope of any trademark held by Complainant.
We offered to enter into an agreement with Complainant to reaffirm we will not use the domain for a purpose that would infringe on Complainant's trademarks. Until we develop the website, we have placed the domain with a parking service. There is no link to any product or service covered by Complainant's trademarks.
Respondent does not trade in domains that infringe on trademarks. In any instance where trademark infringement could be inferred for a domain registration we hold, we either acquired the domain for the purpose of developing it into a website that is without the scope of any trademark or we acquired and/or manage the domain on behalf of a licensee authorized to use a trademark.
Preliminary Issue: Deficient Response
The Response submitted has been deemed deficient for two reasons. First, it was received after the time period had passed for Respondent to make a timely filing. The deadline for filing a response was January 18, 2012, but the Response was received on January 23, 2012. Second, the Response received failed to separate the annexes from the exhibits. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel has chosen to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The Panel further finds that:
1- The disputed domain name is identical and/or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - The Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being used in bad faith.
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 established its rights in the TRUE VALUE mark by registering it with the USPTO (e.g., Reg. No. 1,128,203 registered December 25, 1979). The Panel notes that Complainant has submitted the trademark certificates to verify its claims. The Complainant has established defendable rights in the TRUE VALUE mark under Policy ¶ 4(a)(i) by registering it 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <truevaluetools.com> domain name is confusingly similar to its TRUE VALUE mark. The disputed domain name includes the entire mark, only adding two elements: the generic top-level domain (“gTLD”) “.com” and a term that describes Complainant’s products, “tools.” The disputed domain name removes the space from the mark. Neither the addition of a descriptive term and a gTLD nor the removal of a space provides a profound enough change as to remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Respondent’s <truevaluetools.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark pursuant to Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Premierco / Robert Aronin,” which the Panel finds is not similar to and does not suggest a relationship with the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); 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 alleges 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. According to Complainant, the disputed domain name resolves to a website offering links to unrelated third parties, many of which resolve to adult-oriented websites. Complainant submitted evidence in the form of printouts from the website that ostensibly verify the alleged use. This type of service does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers).
Although Complainant does not argue this point under this provision, the Panel notes that Complainant’s submissions also include evidence that indicates an intent to sell the disputed domain name on the part of Respondent. The Panel finds that Respondent’s passive offer for sale included on the resolving website further supports a finding that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Previous panels have determined that regardless of the parked status of a given domain name, the owner of the parked domain name is still responsible for the content offered from its website. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (“The view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”). The Panel finds that Respondent is liable for the services offered from the website and cannot abrogate the Complainant’s claim under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is offering the disputed domain name for sale, which indicates bad faith registration and use. Complainant states that the disputed domain name resolves to a website which includes, inter alia, a link that purports to offer the domain for sale. Previous panels have determined that offering a domain for sale is affirmative evidence of bad faith registration and use. See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). This Panel concludes that Respondent’s attempt to sell the disputed domain name, even though it is a passive link on the website, is affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i).
Complainant also asserts that Respondent is using the disputed domain name for its commercial gain, constituting bad faith registration and use. According to Complainant, Respondent’s disputed domain name resolves to a website offering links to unrelated third-party companies, many of which offer adult-oriented material. Complainant states that Respondent collects a click-through fee for each Internet user it is able to divert to the linked sites. This is a clear example of registering a domain which includes the mark of another company in an attempt to generate revenue off of the notoriety of that mark, and the confusion created by using the mark. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Respondent argues that parking the resolving website relieves Respondent of any responsibility or liability for the content provided on the website. However, Respondent is in fact liable for the content provided under Policy ¶ 4(a)(iii) because Respondent is still the owner of the website in question. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truevaluetools.com> domain be transferred from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: January 31, 2012
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