Traxxas LP v. Justin Krom
Claim Number: FA1205001444823
Complainant is Traxxas LP (“Complainant”), represented by Lance V. Clack of Figari & Davenport, LLP, Texas, USA. Respondent is Justin Krom (“Respondent”), North Dakota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <traxxas-parts.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012.
On May 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <traxxas-parts.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 May 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@traxxas-parts.com. Also on May 22, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant Traxxas, LP (“Complainant” or “Traxxas”) owns registered trademarks nos. 3,205,399, 2,292,851, and 2,314,111 for different representation of the word TRAXXAS when used in connection with radio-controlled model vehicles and parts therefor.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Traxxas creates, designs, and manufactures hobby-class radio controlled cars, trucks, and boats in both nitro and electric categories. Traxxas was started in 1986, and pioneered the first fully assembled, hobby-class remote controlled car. Traxxas “ready-to-run” vehicles have the same benefits as hobby-class kits, including replaceable parts, hop-ups, and a high quality component radio system. Traxxas is currently, and has been for the last several years, the number-1 selling name in ready-to-run nitro and electric models. Traxxas also sells parts for all its vehicles.
The Traxxas name is widely recognized in the remote control vehicle market, and Traxxas has registered TRAXXAS® under the following registration Nos. 2,292,851, 2,314,111 and 3,205,399 to protect its mark. Traxxas registered the oldest of these marks in 1998, and has continually used the marks since.
The stylized Traxxas name and logo are fanciful: they were coined to serve as trademarks for the Traxxas line of remote controlled vehicles. Moreover, they have acquired secondary meaning in the market, and are widely associated with Traxxas’ goods and services. Traxxas’ trademarks are valid and in full force. Traxxas maintains a website, Traxxas.com, and sells its vehicles and parts through the related website buyTraxxas.com, which Traxxas also owns.
Respondent registered the domain name “traxxas-parts.com” in September 2007, apparently for the sole purpose of selling Traxxas’ vehicles and parts over the internet. The items offered on traxxas-parts.com are identical in all material respects to the items Traxxas sells on buytraxxas.com. In furtherance of Respondent’s plan to confuse potential buyers by using Traxxas’ protected marks, Respondent maintains a paid ad with Google, so that traxxas-parts.com is listed at the top of the page when a google search for “Traxxas parts” is entered. Further, the ad contains the tagline, “Fast shipping on all Traxxas parts. Easily Find & Save on Traxxas parts.” As discussed in detail below, traxxas-parts.com is confusingly similar to Traxxas, Respondent has no legitimate interest in the domain name, and Respondent registered and is using the domain name in bad faith.
[a.] The domain name, traxxas-parts.com is confusingly similar to Complainant’s trademark, Traxxas. Specifically, Complainant has three trademarks protecting its use of the word “Traxxas,” and the domain name is merely “Traxxas” followed by a hyphen and the non-distinctive word “parts.” Indeed, inasmuch as Respondent uses the domain exclusively to sell Traxxas’ vehicles and parts and Respondent’s website clearly features the stylized Traxxas logo, it is clearly Respondent’s intent to cause such confusion.
It is well-established that ownership of the trademark gives Traxxas rights in the mark. See Ganz v. Schuessler Enterprises, Inc., FA 0810001230809 (Nat. Arb. Forum Dec. 10, 2008) (“when a complainant owns rights in a registered trademark, this satisfies the threshold requirement of having trademark rights”). Further, the use of Complainant’s trademark in the domain name establishes that it is confusingly similar, and the addition of generic terms does not render it sufficiently unique. Id.; Warner Bros. Entm’t, Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (holding that the domain names shop4harrypotter.com and shopforharrypotter were confusingly similar to the mark “HARRY POTTER” despite the addition of generic terms). Accordingly, Complainant satisfies the first element required for transfer.
[b.] Respondent has no rights or legitimate interest in the domain name. Respondent, an individual named Justin Krom, is not known by the name Traxxas, was not authorized by Complainant to register a domain name incorporating the Traxxas trademark, and is not using the domain name as part of a bona fide offer of goods and services.
The “who is” report is sufficient to show that the Respondent is not known as “traxxas-parts.” See, e.g., Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd., WOPI Case No. D2008-0745 (July 7, 2008) (holding that where the “who is” report reflects that the registrant’s name is different from the domain name, the complainant carries its burden to show that the registrant is not known by the domain name).
While Respondent does offer Traxxas vehicles and parts through the traxxas-parts website, it is well-established that, when a respondent uses the complainant’s protected mark in a domain name, it must meet four elements to constitute use in connection with a bona fide offer of goods and services:
(1) the respondent must actually be offering the goods or services at issue;
(2) the respondent must only sell the trademarked goods;
(3) the site must accurately disclose the respondent’s relationship with the trademark owner; and
(4) the respondent must not try to corner the market in domain names using the mark.
See Ganz, FA 0810001230809; Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). In this case, the traxxas-parts.com website contains no language disclosing the relationship (or lack thereof) between Complainant and Respondent. The absence of any such language constitutes a failure to accurately disclose the relationship. See Ganz, FA 0810001230809. In fact, traxxas-parts.com creates the impression of operation, sponsorship, or endorsement by Complainant through its use of the Traxxas logo and its many images of Traxxas’ vehicles and products. In fact, the images are all copyrighted by Traxxas and were apparently copied from Traxxas’ websites. Inasmuch as Respondent has no legitimate interest in the domain name, Complainant satisfies the second element for transfer.
[c.] Respondent registered and is using traxxas-parts.com in bad faith. First, given that Respondent has used the domain solely to sell Traxxas’ parts and vehicles, it is certain that he knew of Traxxas’ long-established trademarks at the time of registration. The graphic Traxxas logo and images were all taken from Traxxas’ websites. This knowledge, without more, establishes bad faith in registration. See Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (June 8, 2009) (holding that likely knowledge of the trademark at the time of domain name registration established bad faith).
Further, Respondent uses the domain name solely to attract, for commercial gain, internet users seeking Traxxas vehicles and parts to traxxas-parts.com by creating a likelihood of confusion between Complainant and traxxas-parts, and creating the impression that traxxas-parts.com is affiliated with, sponsored by, or endorsed by Complainant. The use of Complainant’s mark in the domain name for the purpose of luring, for commercial gain, customers seeking Complainant’s products constitutes bad faith. See Ganz, FA 0810001230809. Finally, even if Respondent were to offer or suggest he could add some disclaimer of affiliation with Traxxas, such an after-the-fact addition will not cure the bad faith or alleviate customer confusion. Accordingly, Complainant satisfies the third element required for transfer.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 rights or legitimate interests in respect of the domain name; and
(3) The Panel makes no findings regarding 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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant owns several trademark registrations with the United States Patent & Trademark Office (“USPTO”) for its TRAXXAS mark as follows: TRAXXAS and Design (Reg. No. 2,314,111 registered February 1, 2000); TRAXXAS (stylized) (Reg. No. 2,292,851 registered November 16, 1999); and TRAXXAS (Reg. No. 3,205,399 registered February 6, 2007). Complainant argues its trademark registrations with the USPTO are sufficient to establish rights in its marks under Policy ¶4(a)(i). The Panel agrees and finds Complainant has adequately established rights in its trademarks under Policy ¶4(a)(i) by submitting evidence of its trademark registrations with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶4(a)(i)).
Further, Complainant argues the <traxxas-parts.com> domain name is confusingly similar to Complainant’s TRAXXAS trademark because the domain name only adds the generic term “parts” and a hyphen to the mark. The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” This Panel finds Respondent’s <traxxas-parts.com> domain name is confusingly similar to Complainant’s TRAXXAS mark under Policy ¶4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not known by the TRAXXAS mark or the <traxxas-parts.com> domain name. The WHOIS information identifies the domain name registrant as “Justin Krom,” which Complainant asserts is sufficient evidence to conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). This Panel agrees.
Complainant argues Respondent is not making a bona fide offering of Complainant’s goods under Policy ¶4(c)(i). First, Complainant argues Respondent is using the disputed domain name to sell Complainant’s remote controlled vehicles as well as parts for those vehicles without authorization from Complainant. This is not convincing. Once Complainant’s goods have entered the marketplace, Complainant has no right to control their resale. A person does not need permission resell authentic branded goods.
Second, Complainant asserts four elements must be met for the “use” to be considered legitimate when where a respondent is selling a complainant’s goods. According to Complainant, those four elements are:
1. The respondent must actually be offering the goods or services at issue;
2. The respondent must only sell the trademarked goods;
3. The site must accurately disclose the respondent’s relationship with the trademark owner; and
4. The respondent must not try to corner the market in domain names using the mark.
Complainant cites two prior UDRP decisions to establish these four elements. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001); see also Ganz v. Schuessler Enterps., Inc., FA 1230809 (Nat. Arb. Forum Dec. 10, 2008). This Panel also used these elements in AHAVA NA, LLC v. Ahava USA, Inc., FA464505 (Nat. Arb. Forum May 31, 2005) without considering the issues at hand. Complainant contends the <traxxas-parts.com> web site does not contain any language disclosing the relationship (or lack thereof) between Complainant and Respondent. Complainant argues the absence of any such language constitutes a failure to accurately disclose the non-relationship between the parties. Because of this lack of disclosure, Complainant claims Respondent’s website gives the false impression Complainant is either operating the website itself or has sponsored the website in some way.
The Panel has reviewed Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) and Ganz v. Schuessler Enterprises, Inc. (Claim Number: FA0810001230809) and has reached a slightly different conclusion. First of all, Respondent seems to be selling Complainant’s goods. If they weren’t Complainant’s goods, Complainant would surely have brought this to the Panel’s attention.
Second, Respondent must be selling only Complainant’s goods. While Complainant did not discuss this issue, the printouts Complainant provided shows Respondent appears to be selling only Complainant’s goods.
Third, Respondent must accurately disclose Respondent’s relationship with the trademark owner. This Panel disagrees slightly. This Respondent did not show any kind of relationship with Complainant (except possibly the implied relationship of selling Complainant’s products). The silence about the relationship is deafening (as well as Respondent’s failure to submit a response to this proceeding). Complainant’s and Respondent’s web sites don’t appear to be similar to this Panel. Complainant’s web site works on a search principal. Respondent’s web site works on a listing principal. While Complainant claims Respondent’s web site creates the impression of operation, sponsorship, or endorsement by Complainant through its use of the Traxxas logo and its many images of Traxxas’ vehicles and products, the Panel disagrees. Respondent is selling those products. Selling a product does not automatically lead to the conclusion the seller must be the manufacturer.
This Panel would more properly characterize this element thusly: the respondent must not mislead the public about respondent’s relationship with the trademark owner. By way of an example, a person may resell one of Complainant’s genuine products by listing it for sale in a newspaper classified advertisement. An advertiser could not claim a relationship that didn’t exist (such as being a distributor, a dealer, etc.). Respondent isn’t making such a claim here…Respondent is being completely silent on the point. As far as the Panel can tell, Respondent has nothing to disclose except the fact Respondent resells Complainant’s goods. Complainant has not met its burden of proof regarding this issue.
This Panel believes the results of the Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (where respondent’s distributorship relationship was adequately disclosed) and Ganz v. Schuessler Enterprises, Inc. (Claim Number: FA0810001230809) (where complainant’s and respondent’s web sites looked the same and respondent’s web site contained a trademark notice in favor of complainant) would be the same.
Fourth, Respondent has not tried to “corner the market” so Complainant is prevented from using its mark in a domain name.
It should be noted Respondent has been using this domain name since September 23, 2007. Complainant waited until May 18, 2012 to complain…a delay of some 1,699 days. The reason for the delay was not explained and Respondent has gained some rights over the intervening 4½ years.
The Panel finds Policy ¶4(a)(ii) not satisfied.
This element need not be considered since Complainant failed to prevail on the previous point.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <traxxas-parts.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 18, 2012
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