national arbitration forum

 

 DECISION

 

Altec Industries, Inc. v. R. Ents

Claim Number: FA1203001436867

 

PARTIES

Complainant is Altec Industries, Inc. (“Complainant”), represented by Morris W. Richardson of RichardsonClement PC, Alabama, USA.  Respondent is R. Ents (“Respondent”), represented by Scott P. Sandrock of Brennan, Manna & Diamond, LLC, Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <altecbuckettrucks.com>, registered with GoDaddy.com, LLC.

 

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 March 28, 2012; the National Arbitration Forum received payment on March 30, 2012.

 

On March 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <altecbuckettrucks.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 April 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@altecbuckettrucks.com.  Also on April 2, 2012, 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 April 23, 2012.

 

On April 30, 2012, the Forum received an Additional Submission from Complainant.  Also, Respondent delivered an Additional Submission to the Forum on May 4, 2012.  The timeliness of those Additional Submissions was in compliance with Supplemental Rule 7, and the Panel considered each Additional Submission in the Decision rendered below.

 

On April 27, 2012, 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.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

- Complainant owns several United States Patent and Trademark Office (“USPTO”) registrations that incorporate Complainant’s ALTEC trademark.  The mark is a fanciful acronym taken from Complainant’s business name, Alabama Truck Equipment Company. 

 

- The disputed domain name, <altecbuckettrucks.com> is confusingly similar to the ALTEC mark.  The name is comprised of the mark, the generic term “bucket trucks,” and the gTLD “.com.”  Those additions fail to distinguish the disputed domain name from said mark.

 

- Respondent has no rights or legitimate interests with respect to the disputed domain name.  Respondent is not commonly known by that name.  Complainant has not given Respondent permission to use Complainant’s ALTEC trademark.

 

- Respondent uses the disputed domain name to resolve to another of Respondent’s domain names, <buckettrucks.org>, that hosts a website which provides advertisements and links to the websites of Complainant’s competitors.  That use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.

 

- Respondent has registered and is using the disputed domain name in bad faith for commercial gain, in the form of linkage referral fees, Respondent has intentionally created a likelihood of confusion between the disputed domain name and Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

 

- Possessing at least constructive knowledge of Complainant’s rights in the ALTEC trademark, Respondent seeks to disrupt Complainant’s business by redirecting internet users to competing websites and advertisements.

 

B. Respondent

- The amended Complaint is an attempt to eliminate competition and restrict the secondary sale and leasing of Complainant’s products.

 

- The disputed domain name is not confusingly similar to Complainant’s trademark.  Complainant has not registered the mark, ALTEC BUCKET TRUCKS, and third parties freely use the name, “Altec.”  An entity not associated with Complainant has registered the domain name, <altec.org>, and Internet users who search for “Altec” are not necessarily searching for Complainant’s website.

 

- Respondent has rights and legitimate interests in the disputed domain name because Respondent is using the name for the legitimate noncommercial purpose of providing information to the public about Complainant’s products.  The fact that there are links to information regarding other manufacturers does not negate the noncommercial nature of Respondent’s website.

 

- The disputed domain name directs Internet users to Respondent’s own website located at Respondent’s own domain name,<buckettrucks.org>, not those of a third party; and Respondent receives no third-party referral fees.

 

- Despite its vague allegations regarding bad faith registration and use of the disputed domain name, Complainant has presented no evidence to refute Respondent’s legitimate use of the name to host a website presenting information concerning Complainant’s bucket trucks.  Those products, new and old, are sold and leased by third parties.

 

- Respondent has never contacted Complainant to sell the disputed domain name, and Complainant has submitted no evidence to support its claim that Respondent received referral fees with respect to the links placed on its website.

 

C. Complainant’s Additional Submission

- Complainant is not attempting to eliminate competition and the resale or leasing of its products, but is attempting to prevent Respondent from using the disputed domain name to draw potential customers away from Complainant’s legitimate websites.

 

- Complainant’s citation of United States Federal Court cases, in addition to UDRP decisions, is valid because such case law is appropriate for consideration in a Policy proceeding.

 

- The Complaint refers to the domain name, <buckettrucks.org>, only because the disputed domain name resolves automatically to <buckettrucks.org>, which contains links to and advertisements from Complainant’s competitors.

 

- Respondent’s argument that Complainant has not registered ALTEC BUCKET TRUCKS as a trademark is irrelevant.  Complainant does not claim exclusive use of the “Altec” name, but does claim exclusivity of the ALTEC mark with respect to bucket trucks, which is the subject of its USPTO registration for that mark.

 

- Respondent’s contention that it is using the disputed domain name in a noncommercial fair use sense is fallacious, because Respondent’s website contains links that refer also to bucket trucks manufactured by others than Complainant.  The disputed domain name is descriptive solely of Complainant’s products, and not of bucket trucks in general or Respondent’s goods, thereby implying, erroneously to consumers, an endorsement by Complainant.

 

- Respondent’s use of the disputed domain name is commercial, as evidenced by the placement on Respondent’s website of the term “Sponsor Ad” above advertisements for “Vesalift East,” a Complainant competitor.  Since Respondent benefits commercially from the likely confusion of Internet users, Respondent has acted in bad faith in registering and using the disputed domain name.

 

- Respondent’s reference on its website to Complainant in the first person plural, and omission of any disclaimer of any relationship with Complainant on the website, is another intentional attempt to mislead internet users in bad faith.

 

D. Respondent’s Additional Submission

- The First Amendment to the United States Constitution protects noncommercial websites that provide consumer information.  Moreover, the presence of information regarding competing products, together with incidental advertising, does not constitute bad faith.  Anyway, advertising revenue could only pertain to Respondent’s <buckettrucks.org> domain name, which is not the subject of this proceeding.

 

- Even at the webpage to which Complainant objects, there is no click-through or automatic advertising or automatic referral to a third party website.  Internet users must actually choose to visit those websites by clicking on the provided links, and the mere presence of those links does not necessarily mean affiliation, responsibility or bad faith.

 

FINDINGS

Complainant is a United States company that owns valid USPTO registrations for its ALTEC trademark (e.g., Registration No. 849,304; issued May 21, 1968).  Complainant manufactures bucket trucks and related products.

 

Respondent registered the disputed domain name, <altecbuckettrucks.com>, on October 5, 2005.  Respondent, domiciled in the United States, uses the name to resolve to another domain name, <buckettruck.org>, which hosts a website that provides information about Complainant’s products and those of its competitors.  Third-party advertisements and website links also appear at Respondent’s website.

 

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

 

By virtue of its USPTO registrations for the ALTEC trademark (Complaint Exhibits 3 through 11), Complainant has furnished sufficient evidence of its rights in that mark to the satisfaction of the Panel.  See Drugstore.com, Inc. v. Chee, D2008-0230 (WIPO May 9, 2008) (“. . . it is consensus view among Panelists that if a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights.”); see also 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.”).

 

The disputed domain name, <altecbuckettrucks.com>, is not identical to the ALTEC mark.  The terms “bucket” and “trucks” have been added.  In total, the additional terms constitute most of the name.  However, while this may provide a semblance of distinction, the Panel notes that the first term in the name is Complainant’s full ALTEC mark.  Moreover, that mark is fanciful in that it has no common meaning, so that the disputed domain name cannot be considered to be composed of generic terms in its entirety.  The Panel believes that the first term, ALTEC, despite its brevity, dominates the name and would lead reasonable Internet users to confuse the name with that mark.  Such confusion is only increased because the combined term, “bucket trucks,” is related directly to the products that Complainant manufactures.  See General Motors LLC v. Purple Bucquet, D2011-0066 (WIPO Mar. 15, 2011) (finding the disputed domain name, <gmfinancialservices.com>, to be confusingly similar to the mark, GM); see also Nintendo of Am. Inc. v. Gutierrez, D2009-0434 (WIPO June 8, 2009) (ruling that <unlimitedwiidownloads.com> is confusingly similar to the WII trademark).

 

As illustrated in the cases cited immediately above, Respondent’s contention that Complainant has not registered ALTEC BUCKET TRUCKS as a trademark is not germane to this issue.  Identity between the disputed domain name and Complainant’s mark is not necessary to satisfy Policy paragraph 4(a)(i), merely confusing similarity.  Also, as a gTLD is required of all domain names, the “.com” suffix in the disputed domain name provides no meaningful distinction from Complainant’s mark.  See Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) ‘.com’ does not serve to adequately distinguish the Domain Name from the mark.”).

 

Accordingly, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

Complainant has validated its rights in a mark to which the disputed domain is confusingly similar, and Complainant has asserted, without contradiction from Respondent, that no permission has been granted Respondent to use that mark in any manner.  Therefore, Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  Per the consensus of prior UDRP decisions, when such a prima facie case is established in a Policy proceeding, a respondent must come forth with specific evidence to rebut that case if that respondent is to prevail.  See 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 interests 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.”); see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug.21, 2003) (“. . . Complainant bears the ‘general burden of proof’ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”).

 

In rebuttal to Complainant’s prima facie case, Respondent invokes paragraph 4(c)(iii) of the Policy to contend that it is making legitimate noncommercial use of the disputed domain name to furnish Internet users with information regarding Complainant’s bucket truck products and similar goods produced by third parties.  In doing so, Respondent concedes the validity of Complainant’s contention that the website connected to the disputed domain name – as directly resolved through Respondent’s <buckettruck.org> domain name – does contain pages that describe the goods of Complainant’s direct competitors.  However, Respondent denies Complainant’s claim that Respondent receives referral fees in connection with those links, asserting instead that Complainant has presented no evidence to support that claim.

 

As any financial arrangements between Respondent and third parties would remain confidential between them, it would be nearly impossible for Complainant to prove, in these cursory proceedings, that Respondent receives said fees.  On the other hand, it would be as difficult for Respondent to prove the negative, that it does not receive such remuneration.  However, the Panel is cognizant that receipt of fees is common with respect to website linkages.  Moreover, in its Additional Submission, Complainant has furnished the Panel with evidence (Additional Submission Exhibits 6 and 8) that various pages attached to Respondent’s website feature the term “Sponsor Ad” above third party advertisements.  Since sponsors usually pay for their sponsorship, the Panel believes it is reasonable to infer from that term that Respondent does receive fees in connection with the advertisements and website links of those Complainant-competitor sponsors, such as “Versalift East” and “Utility Truck Trader,” which appear on Respondent’s website.  In other words, the Panel does not find it credible that Respondent, in a rare display of pure altruism, would forego payment from third party advertisers in its zeal to disseminate for free detailed information to the public about the crucial topic, bucket trucks.

 

In concluding that Respondent does receive fees in connection with third-party advertisements and website links placed on the website to which the disputed domain name is attached, the Panel concludes that neither paragraph 4(c)(i) nor 4(c)(iii) can be used to support Respondent’s conduct.  See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name 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 also 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).”).

 

Finally, since there is no evidence that Respondent, “R. Ents,” is commonly known as <altecbuckettrucks.com>, paragraph 4(c)(ii) does not apply to rebut Complainant’s prima facie case.  Therefore, the Panel determines that the prima facie case is controlling in this proceeding.

 

Accordingly, the Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

In the Panel’s view, Complainant has established that Respondent is undoubtedly receiving fees from third-party competitors of Complainant whose advertisements and website links are placed on the website to which Internet users are redirected from the disputed domain name.  Respondent has selected and registered that domain name, <altecbuckettrucks.com.>, which the Panel has found to be confusingly similar to Complainant’s ALTEC trademark, with the intent to confuse such users as to the source, sponsorship, affiliation or endorsement of Respondent’s website – i.e., those confused Internet users, seeking Complainant’s authorized website and its products, will be lured to Respondent’s website so that it can gain commercially from said fees.  As a result, the Panel concludes that Respondent’s actions constitute bad faith registration and use of the disputed domain name per paragraph 4(b)(iv) of the Policy.  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (“The Panel finds that Respondent’s diversion of Internet users seeking Complainant’s website under the MYSPACE mark to its own website for commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv), because Respondent likely profits from redirecting consumers to its own website and is, therefore, taking advantage of the confusing similarity between Complainant’s MYSPACE mark and the <myspacebot.com> domain name.”); see also PRL USA Holdings, Inc. v. Cobb, D2006-0162 (WIPO Mar. 20, 2006) (“Complainant has established bad faith under Paragraph 4(b)(iv) of the Policy. Respondent’s use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent.”).

 

In its Additional Submission, Respondent cites three prior UDRP decisions on its behalf concerning the issue of bad faith.  However, each of those cases is easily distinguishable from the present case.  In Quirk v. Maccini, FA 94964 (Nat. Arb. Forum July 11, 2000), and Swissbike Vertriebs GmbH v. Executive Standard Ltd., D2008-0498 (WIPO June 19, 2008), the panels were presented with no evidence in the respective complaints that commercial gains for the respective respondents were involved in the respective disputes.  In this case, Complainant, in its Additional Submission, has presented the Panel with clear evidence of likely commercial gain for Respondent via the third-party sponsored advertising and website links featured on Respondent’s website.  With respect to the other Policy ruling cited by Respondent, Affinion Publ’g LLC v. Link Domain, D2008-0316 (WIPO May 16, 2008), the learned panel rejected a finding of bad faith because the respondent’s knowledge of the complainant’s marks was not established.  The marks in that case, PRIVACYGUARD and PRIVACY GUARD.COM, were composed entirely of common terms.  In the present case, the trademark, ALTEC, is not a common term; and Respondent was well of aware of that mark, as evidenced by Respondent’s own website, which describes in detail Complainant’s products under that mark. 

 

Accordingly, the Panel finds that Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

 

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 <altecbuckettrucks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dennis A. Foster, Panelist

Dated:  May 11, 2012

 

 

 

 

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