True Value Company v. Andrew Bucklin d/b/a True Value Web
Claim Number: FA1305001497691
Complainant is True Value Company (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould P.C., Minnesota, USA. Respondent is True Value Web (“Respondent”), represented by Bret S. Moore of Bret S. Moore, Attorney at Law, LLC, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truevalueweb.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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <truevalueweb.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 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@truevalueweb.com. Also on May 3, 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.
A timely Response was received and determined to be complete on May 22, 2013.
Complainant submitted an Additional Submission, which was received and determined to be compliant on May 28, 2013. On May 30, 2013, Respondent also submitted an Additional Submission, which was received and determined to be compliant.
On May 30, 2013, 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant is an international manufacturer and wholesale distributor for a cooperative of approximately 8,000 retail hardware stores. Most of those stores operate under Complainant’s TRUE VALUE service mark and sell many products bearing TRUE VALUE trademarks. Complainant has used said marks without interruption since 1963.
- Complainant has established its rights for the TRUE VALUE mark through several United States Patent & Trademark Office (“USPTO”) trademark and service mark registrations. Complainant also conducts business under its domain name, <truevalue.com>, as well as other domain names it owns that incorporate the TRUE VALUE mark (i.e., <truevalueautosales.com>, <acetruevalue.com>, <truevaluecorp.com>, etc.).
- Complainant has also registered the TRUSITE trademark with the USPTO, under which Complainant provides web design services for its cooperative members.
- The disputed domain name, <truevalueweb.com>, is confusingly similar to Complainant’s TRUE VALUE mark, since the name fully incorporates that mark and merely adds the generic term “web.” Moreover, the services offered by Respondent under the disputed domain name are similar to the services offered by Complainant to its members; and the website found at the name presents the same coloration (i.e., red, black and white) – in connection with the term “TRUE VALUE WEB” – as is utilized by Complainant with respect to its mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been licensed to use the TRUE VALUE marks by Complainant. Respondent has never been affiliated with Complainant. Complainant has not authorized or permitted Respondent to make use of the TRUE VALUE mark in domain names.
- Respondent is not commonly known by the disputed domain name. Moreover, Respondent is using the disputed domain name neither in a legitimate noncommercial or fair use manner nor for a bona fide offering of goods or services. Respondent is using the disputed domain name to market web design services that compete with the web design services offered by Complainant to its cooperative members. Those members are likely to enter into business with Respondent in the belief they are doing business with Complainant. Respondent is thus attempting to pass itself off as Complainant.
- Respondent registered and is using the disputed domain name in bad faith. Respondent had constructive knowledge of Complainant’s marks because they have been used since 1963, while the disputed domain name was not created until November 4, 2005. Respondent’s excessive use of the TRUE VALUE mark also provides evidence of actual knowledge of Complainant’s rights in the mark.
- Respondent seeks to intentionally attract Internet users to his website as a result of the likelihood that internet users will confuse the disputed domain name with Complainant’s marks.
- Further evidence of Respondent’s bad faith is his refusal to respond to Complainant’s attempts – starting with Complainant’s letter to Respondent sent in November 2011 – to inform Respondent of his infringing use of Complainant’s marks.
B. Respondent
- The disputed domain name, <truevalueweb.com>, is not confusingly similar to Complainant’s TRUE VALUE marks because Complainant does not offer services under those marks to the general public that are similar to the services provided by Respondent to the public.
- Complainant’s TRUE VALUE mark is so generic that Complainant cannot claim to have rights in every use of the mark. There are several marks registered by the USPTO that contain the terms “True Value,” illustrating that Complainant has by no means obtained exclusive legal rights to these generic terms.
- Respondent’s website found at the disputed domain name is dissimilar to Complainant’s websites in color scheme and layout. It is absurd for Complainant to claim exclusive control over the colors red, black and white. Moreover, the black/dark gray color used in Respondent’s website layout is not duplicated in any of Complainant’s websites submitted in evidence.
- Respondent has conducted business through the disputed domain name and the associated “True Value Web” business name.
- Respondent provides an array of information technology services such as web design, e-mail hosting, computer repair, cloud-based telephone services, video surveillance installation, alarm systems, and other related services. Respondent has offered these services to the general public through the disputed domain name since November 4, 2005. Respondent generates approximately $50,000 in revenue annually and has served in excess of 400 clients.
- Respondent is not passing himself off as Complainant. Complainant is dishonest in redacting portions of its own websites in Complainant’s Exhibit F, likely because it knows that the public can never access these websites – only Complainant’s cooperative stores can see these web pages. Statements from some of Respondent’s clients illustrate that they were at no point confused as to whether they were doing business with Complainant.
- Respondent registered the disputed domain name for a good faith legitimate business purpose and continues to use the domain name in good faith. Respondent registered the name with the generic, laudatory, and descriptive meaning of the words in mind – not Complainant’s trademarks.
- The prior UDRP cases cited by Complainant in support of its contentions are so inapposite and inapplicable that they provide no merit to Complainant’s claims of bad faith.
- Respondent admits that he did receive a cease and desist letter. However, it referenced only a <diamondstruevalue.com> domain name, and thus Respondent was confused and grew concerned about a potential scam. After failing in his attempts to contact Complainant, Respondent was worried he would be subject to more scams and took steps to conceal his identity in the WHOIS information by changing that information to reference a friend of Respondent, Jonah Easly, who lives in China. That friend consented to the change in the WHOIS information, with the understanding that Respondent would still own and be responsible for the disputed domain name.
- Respondent has operated his web business for eight years before Complainant brought this claim seeking transfer of the disputed domain name. The equitable doctrine of laches – though not always dispositive in a UDRP decision – exists to prevent Complainant from sitting on its rights for such a long period of time, whilst Respondent toiled to build his business.
- Complainant’s arguments are weak and border on absurd. Complainant likely expected Respondent to default, allowing Complainant to generate unwarranted Panel sympathy and thus acquire the disputed domain name. Such intent and action constitute reverse domain name hijacking by Complainant.
C. Complainant’s Additional Submission
- Respondent’s attempt to mask his information by changing the WHOIS information should be evidence that Respondent lacks rights and legitimate interests in the disputed domain name and has acted in bad faith.
- Respondent’s claim that he attempted to communicate with Complainant is not reasonable. Respondent did not contact Complainant aside from one unsuccessful attempt to reach Complainant via telephone, and Respondent refused service of at least one cease and desist letter.
- The lapse of time between Respondent’s business starting in 2008 and the original registration of the domain name in 2005 is evidence of bad faith registration.
- The doctrine of laches has been traditionally inapplicable in UDRP proceedings. Complainant only recently came to learn of the disputed domain name, and has since instituted this action.
- Respondent has provided no substantive evidence to show that Complainant has brought this action in bad faith, and thus Respondent’s accusation of reverse domain hijacking is without merit.
D. Respondent’s Additional Submission
- Any reference in the Response to Respondent’s business having started in 2008 is due to a simple typographical error committed by Respondent’s counsel in drafting the Response. The business began operation in 2005.
- Respondent’s sporadic business use of the disputed domain name prior to 2010 resulted from his status as a student during most of that time and not due to bad faith.
- Whether or not the doctrine of laches should be applied, Complainant’s failure to file this Complaint eight years after registration of the disputed domain name mitigates any claim that significant business disruption is likely to or has occurred.
- This Complaint was brought in bad faith because Complainant was aware that Respondent is engaged in a legitimate business in connection with the disputed domain name.
In business since at least 1963, Complainant is a well-established American company that also operates internationally. Its primary business relates to the manufacture and distribution, through cooperative franchises, of hardware items. The Complainant also provides some web design and related services for those franchises. Complainant owns several registrations with the USPTO for the TRUE VALUE mark (e.g., Reg. No. 1,090,538 registered on May 2, 1978; and Reg. No. 1,165,207 registered on Aug. 18, 1981).
Respondent is the registered owner of the disputed domain name, <truevalueweb.com>, which was registered on November 4, 2005. Respondent uses the disputed domain name to offer information technology consulting and related services to the general public.
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.
The Complaint identified Respondent as “True Value Web” based on a WHOIS search that listed “Jonah Easly,” residing in China, as the owner of the disputed domain name. Respondent and his counsel represented in the Response that the actual owner of the disputed domain name is Andrew Bucklin, who does business under the company name “True Value Web.” As Complainant has not disputed that representation, the Panel has concluded that Respondent is properly identified as “Andrew Bucklin d/b/a True Value Web.”
Complainant has submitted appropriate evidence (Complaint Exhibit A) to the Panel of Complainant’s USPTO registrations for its well-known TRUE VALUE trademark and service mark. That submission is sufficient for the Panel to conclude that Complainant has established its rights in that mark for the purposes of Policy ¶ 4(a)(i). See True Value Co. v. Wetters, FA 1420219 (Nat. Arb. Forum Jan. 17, 2012) (“…the Panel finds that Complainant has established its rights in the TRUE VALUE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.”); see also Space Needle LLC v. Lalji, D2008-1883 (WIPO Feb. 2, 2009) (“The Panel finds that Complainant has established rights in the mark SPACE NEEDLE, by virtue of its registration with the United States Patent and Trademark Office”).
Complainant’s TRUE VALUE mark forms the dominant portion of the disputed domain name, <truevalueweb.com>. Despite the contentions of Respondent to the contrary, the mere addition of the generic term “web” does little to distinguish the disputed domain name from that mark. In line with reasoning found in a consensus of prior UDRP decisions, the Panel thus determines that the disputed domain name is at least confusingly similar to Complainant’s mark. See Expedia, Inc. v. Liang, FA 1248162 (Nat. Arb. Forum Apr. 7, 2009) (finding <expediaweb.com> to be confusingly similar to the EXPEDIA mark); see also Hewlett-Packard Co. v. Hwan, FA 95358 (Nat. Arb. Forum Sept. 7, 2000) (where the disputed domain name, <hpweb.com>, was found to be confusingly similar to the trademark HP).
As a side issue, Complainant has also asserted rights in the TRUSITE service mark. However, the Panel finds that the disputed domain name is neither identical nor confusingly similar to that mark.
Accordingly, the Panel rules that Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a trademark and service mark in which Complainant has rights.
The Policy places upon Complainant the burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. However, noting the difficulty in proving negative propositions, the overwhelming majority of previous panels have required that a complainant in a UDRP proceeding make only a prima facie case on its behalf, thereby shifting the burden to the respondent, who is in possession of the facts relevant to its conduct, to come forward with specific evidence to support its claim to rights or legitimate interests in the disputed domain name. 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 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.”); see also Wilson v. Whois Priv. Prot. Serv., Inc., FA 417186 (Nat. Arb. Forum Mar. 29, 2005) (“It has been consistently held that it is incumbent upon respondents to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting the [assertion that Respondent lacks rights and legitimate interests in the disputed domain name] because this information is ‘uniquely within the knowledge and control of the respondent.’”)
In this case, the Panel believes that the Complainant has sustained said prima facie case. The Panel has found the disputed domain name to be confusingly similar to Complainant’s mark. Moreover, Complainant has asserted that it has neither been affiliated with Respondent nor authorized or permitted Respondent to use that mark in any manner.
In rebuttal to Complainant’s contentions, Respondent argues that he is using the disputed domain name for bona fide service offerings to the public, namely information technology consulting and related services, under the business name “True Value Web,” with which his business is identified. Thus, Respondent has suggested that both Policy ¶¶ 4(c)(i) and (ii) may be invoked to support his rights or legitimate interests in the disputed domain name.
With respect to Policy ¶ 4(c)(ii), the Panel is hesitant to recognize Respondent’s company as being commonly known by the disputed domain name when he has demonstrated little evidence of that company’s existence other than as an internet presence (i.e., the website found at the disputed domain name). If not, every respondent in a UDRP proceeding could claim a legitimate interest in a disputed domain name merely by virtue of ownership of that name. The Panel believes it is within the consensus of opinions of previous UDRP panels by requiring that Respondent’s company be commonly known as the disputed domain name prior to that name’s registration for Policy ¶ 4(c)(ii) to be invoked successfully. See Custom Clothiers, Inc. v. Custom Shirt Shop, FA 1109402 (Nat. Arb. Forum Jan. 4, 2008) (“…ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the ‘commonly known’ provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); see also Paule Ka v. Paula Korenek, D2003-0453 (WIPO July 24, 2003) (“What paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known…prior to registration of the disputed domain name.”).
However, Complainant’s failure to disprove Respondent’s contention that he has provided information technology consulting and related services to general clients (for Respondent’s client list, see Response Annex B) through his website for more than seven years before the Complaint was filed leads the Panel to find that Respondent is correct in his application of Policy ¶ 4(c)(i) to this case. See United Press Int’l, Inc. v. United Photog. Int’ls, FA 1492678 (Nat. Arb. Forum May 7, 2013) (“Complainant has not claimed Respondent is a sham organization. Respondent has apparently been using the disputed domain name to sell/license photographs since 2008 without complaint…for more than four full years. During that time, Respondent has undoubtedly acquired rights to the disputed domain name.”); see also University of Arkansas v. FanMail.com, LLC, D2009-1139 (WIPO Nov. 2, 2009) (“…the inordinate delays on the part of Complainant in bringing the Complaint must be seen by the objective observer to add successive years of legitimacy to the use Respondent was making of the Domain Name…”).
Complainant urges the Panel to view Respondent’s provision of internet services as an illegitimate use of the disputed domain name because Complainant alleges it offers similar services under its TRUSITE service mark. However, from its own independent knowledge, the Panel is well aware that the Complainant is known almost entirely for its provision of hardware products and services. Complainant even concedes that its web design services are directed solely at its affiliated cooperatives (i.e., related businesses) and not the general public. Complainant’s unsubstantiated conjecture that Respondent seeks to target only Complainant’s cooperatives as customers is not well taken by the Panel. If Respondent were offering hardware products or services to consumers, the Panel might reach a different conclusion on this issue.
The Policy cases cited by Complainant with respect to its contention that Respondent lacks rights or legitimate interests in the disputed domain name are not persuasive to the Panel. In Hewlett-Packard Developm’t Co. v. Numan, FA 1370036 (Nat. Arb. Forum Mar. 18, 2011); United Serv. Auto. Assoc. v. Dinoia, FA 497783 (Nat. Arb. Forum July 22, 2005); Wells Fargo v. Dinoia, FA 366278 (Nat. Arb. Forum Dec. 30, 2004); Best Sports v. Dinoia, FA 362036 (Nat. Arb. Forum Dec. 22, 2004); Disney Enters., Inc. v. Dinoia, FA 318792 (Nat. Arb. Forum Oct. 12, 2004); Choice Hotels Int’l, Inc. v. Dinoia, FA 282792 (Nat. Arb. Forum July 28, 2004); and Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003),: in these cases the panels found that the respective respondents used the respective disputed domain names to direct internet users to links to third party websites (some of which offered products or services directly competing with the respective complainants), and not to actually offer services to internet users as has the Respondent in this Case. Moreover, in the case of Comp. Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel disallowed application of Policy ¶ 4(c)(i) because the goods (lock and safe products) offered by the respondent were similar to the primary goods sold by the complainant; whereas, as noted above, Respondent’s web design services compete with services offered by Complainant as a minimal, at best, portion of its business.
In reaching its decision, the Panel renders no explicit opinion concerning application of the doctrine of laches, noting only that the seven-and-a-half-year lag between disputed domain name registration and filing of the Complaint simply bolstered Respondent’s contention that he operates the name in connection with a bona fide offering of services. Also, the Panel does not conclude that
Accordingly, the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in the disputed domain name.
As Complainant has not succeeded with respect to the prior element required by the Policy, the Panel will not proceed with a consideration of whether the disputed domain name was registered and is being used in bad faith.
Respondent requests that the Panel make a finding of reverse domain name hijacking in connection with Complainant’s filing of the Complaint. To do so, the Panel would have to find that Complainant has acted in bad faith. See Arrigo Enters., Inc. v. PortMedia, FA 1493536 (Nat. Arb. Forum May 21, 2013) (“In order for reverse domain hijacking to exist, there must be a showing of bad faith on the part of the Complainant”); see also Plan.Net v. Yikilmaz, D2006-0082 (WIPO Mar. 24, 2006) (“…such a finding is intended only for the worst cases where there is bad faith such as malice or dishonesty or some other abuse of process.”). However, the Panel has found that Complainant established the confusing similarity between the disputed domain name and Complainant’s mark. Moreover, despite the ultimate finding in this proceeding, the Panel notes that Complainant did put forth plausible arguments as to whether Respondent has rights or legitimate interests in the disputed domain name. Therefore, the Panel declines to issue a finding of reverse domain name hijacking in this case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <truevalueweb.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: June 13, 2013
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