True Value Company v. Kris Sharma
Claim Number: FA1204001438152
Complainant is True Value Company (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould P.C., Minnesota, USA. Respondent is kris sharma (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paintingbytruevalue.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2012; the National Arbitration Forum received payment on April 5, 2012.
On April 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <paintingbytruevalue.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 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@paintingbytruevalue.com. Also on April 5, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.
The Response was timely received on April 23, 2012.
On May 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Alleges
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TRUE VALUE mark (e.g., Reg. No. 1,128,203 registered March 14, 2006).
2. Complainant owns multiple global trademark registrations for that mark.
3. Respondent’s <paintingbytruevalue.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
4. Complainant manufacturers its own line of paint products, which generates a substantial portion of the company’s annual revenue. The company also has a paint staff who offer tips on topics ranging from paintbrush and color selection to application techniques.
5. Respondent’s disputed domain name fully incorporates Complainant’s famous mark while adding the generic words “painting by.”
6. Respondent has no rights or legitimate interests in Complainant’s mark or in the use of Complainant’s mark in a domain name.
7. Respondent has no connection to Complainant or with Complainant’s mark or products.
8. Respondent’s domain name resolves to a website featuring paint products and services.
9. Respondent uses the disputed domain name to create a false association with Complainant.
10. Respondent’s use of a confusingly similar domain name to attract Internet traffic to an unaffiliated commercial website is not fair use.
11. Respondent is attempting to pass itself off as a trademark holder.
12. Respondent registered the <paintingbytruevalue.com> domain name in bad faith.
13. Respondent had actual and/or constructive notice of Complainant’s rights.
14. Respondent offered to sell the disputed domain name to Complainant for $1,000, an amount in excess of Respondent’s out-of-pocket costs associated with the disputed domain name.
15. Respondent registered and is using the disputed domain name in bad faith.
Respondent Alleges
1. Respondent is a small painting contractor;
2. Respondent had no intention of infringing on anyone’s trademark rights when it registered the disputed domain name.
3. Respondent halted use of the disputed domain name as soon as it was contacted by Complainant.
4. Respondent invested $2,000 in developing the disputed domain name for its business.
Complainant, True Value Company, holds multiple trademark registrations for TRUE VALUE with the USPTO (e.g., Reg. No. 1,128,203 registered March 14, 2006). Complainant manufacturers its own line of paint products and provides consultation services regarding painting.
Respondent, Kris Sharma, registered the <paintingbytruevalue.com> domain name on March 2, 2011.
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 registered TRUE VALUE mark with the USPTO (e.g., Reg. No. 1,128,203 registered March 14, 2006). Therefore, Complainant has established its rights in the TRUE VALUE mark under Policy ¶ 4(a)(i). See 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).”).
Complainant also contends that Respondent’s <paintingbytruevalue.com> domain name is confusingly similar to its TRUE VALUE mark. Complainant states that the disputed domain name includes the entire mark, merely removing the space between the terms of the mark, while adding the generic top-level domain (“gTLD”) “.com” and the generic words “painting by”. The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s TRUE VALUE mark under Policy ¶ 4(a)(i). See True Value Co. v. True Value Drywall Inc., FA 1346602 (Nat. Arb. Forum Oct. 28, 2010) (finding respondent’s <truevaluedrywall.com> domain name confusingly similar to complainant’s TRUE VALUE mark).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant notes that the WHOIS information identifies the registrant of the disputed domain name as “Kris Sharma.” The Panel notes that Respondent does not claim to be commonly known by the disputed domain name. Thus, the Panel determines 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).
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. Complainant provides evidence that the disputed domain name resolves to a commercial website, also relating to paint products and services. Using a disputed domain name for a commercial purpose unconnected to Complainant’s business does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the <paintingbytruevalue.com> domain name with actual and/or constructive knowledge of Complainant's rights in the mark. The Panel infers actual knowledge by Respondent of Complainant’s TRUE VALUE mark from the use by Respondent of the <paintingbytruevalue.com> domain name for a website offering similar products and services to those provided by Complainant.
Complainant also argues that Respondent registered and is using the disputed domain name for its own commercial gain. Complainant states that the disputed domain name resolves to a commercial website offering services unaffiliated with Complainant’s business. The Panel infers that Respondent has likely generated revenue from the website to which the domain name resolves by selling those products and services to Internet users. The Panel thus concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paintingbytruevalue.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 17, 2012
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