True Value Company v. Thomas Denrich
Claim Number: FA1302001487551
Complainant is True Value Company (“Complainant”), represented by Kristine Boylan of MERCHANT & GOULD P.C., Minnesota, USA. Respondent is Thomas Denrich (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <truevaluesewer.com>, registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2013; the National Arbitration Forum received payment on February 27, 2013.
On February 28, 2013, MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <truevaluesewer.com> domain name is registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE 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 March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2013 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@truevaluesewer.com. Also on March 1, 2013, 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 March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <truevaluesewer.com> domain name, the domain name at issue, is confusingly similar to Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, True Value Company, is an international manufacturer and wholesale distributor for a cooperative of approximately 5,000 retail hardware stores, most of which operate under TRUE VALUE service marks and sell a large range of hardware products bearing the TRUE VALUE trademark. Complainant has registered the TRUE VALUE mark with the United States Patent and Trademark Office (USPTO) (Reg.No. 1,165,207 issued August 18, 1981) and owns numerous other registrations of the mark around the world.
Respondent is not affiliated with Complainant or with its TRUE VALUE hardware stores. Respondent is neither licensed nor authorized to use the TRUE VALUE mark or to register the domain name at issue. Respondent does not use the domain name and has no webpage associated with it.
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.
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 has established its rights in the TRUE VALUE mark for the purposes of Policy ¶ 4(a)(i) by having registered the mark with the USPTO. Even though it appears that Respondent resides in the USA, the Policy does not require Complainant to register its mark in the same country where Respondent resides and operates. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Previous panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN). Furthermore, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of the domain name at issue and the TRUE VALUE mark. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, Claim No. FA133759 (Nat. Arb. Forum Jan. 21, 2003). Moreover, the addition of a common or generic term to a trademark (“sewer” in this case”) does nothing to reduce the domain name’s confusing similarity. See Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (“The addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights.”); Parfums Christian Dior v. 1 Netpower, Inc., No. D2000-0022 (WIPO March 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark).
In this case, the domain name at issue contains the TRUE VALUE mark in its entirety, adding only the descriptive term “sewer” and the top-level domain, .com. These minor differences are insufficient to distinguish the <truevaluesewer.com> from the TRUE VALUE mark.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
Respondent does not have a legitimate interest in the TRUE VALUE brand name or the domain <truevaluesewer.com>. Respondent is not affiliated with True Value or with its TRUE VALUE hardware stores. In fact, Respondent has no connection to True Value or with its TRUE VALUE hardware stores, and Respondent is neither licensed nor authorized to use the domain name which means that Respondent has no legitimate interest in the domain. Choice Hotels Int’l, Inc. v. Dinoia, No. FA0406000282792 (NAF July 28, 2004) (finding that Respondent lacks rights and legitimate interests in the disputed domain names because Respondent registered the domain names without legal authorization to do so).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truevaluesewer.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 30, 2013
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