Global Rental Co., Inc. v. Truck Sales
Claim Number: FA1305001498509
Complainant is Global Rental Co., Inc. (“Complainant”), represented by David E. Malick of RichardsonClement PC, Alabama, USA. Respondent is Truck Sales (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globalutilitytrucksales.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2013; the National Arbitration Forum received payment on May 7, 2013.
On May 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <globalutilitytrucksales.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 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@globalutilitytrucksales.com. Also on May 9, 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 14, 2013.
On May 29, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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 domain name be transferred from Respondent to Complainant.
A. Complainant.
Complainant makes the following contentions:
1. Complainant owns the GLOBAL mark, which it uses in its business renting and retailing construction and utility equipment, including aerial buckets, derricks, winches, hydraulic auger units, diggers, and motor driven tools, among other instruments.
2. Complainant owns trademark registrations for its GLOBAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,885,558 registered September 21, 2004), as well as with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA642,471 registered June 6, 2011).
3. Respondent’s infringing activities:
a. Respondent registered the <globalutilitytrucksales.com> domain name on August 18, 2011.
b. Policy ¶ 4(a)(i)
i. The <globalutilitytrucksales.com> domain name is confusingly similar to Complainant’s GLOBAL mark.
c. Policy ¶ 4(a)(ii)
i. Respondent is not commonly known by the <globalutilitytrucksales.com> domain name, nor does Respondent have permission from Complainant to use the GLOBAL mark.
ii. Respondent uses the disputed domain name to host a website that contains advertisements for various utility tools and vehicles that compete with Complainant’s business.
iii. Respondent directs Complainant’s customers away from Complainant’s website and to Respondent’s website, which does not demonstrate use of the domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
d. Policy ¶ 4(a)(iii)
i. Respondent was fully aware of Complainant’s GLOBAL mark at the time it registered the disputed domain name, and had at least constructive knowledge of Complainant’s rights in the mark.
ii. Respondent’s use of the <globalutilitytrucksales.com> domain name disrupts Complainant’s business by substantially similar products.
iii. Respondent makes a financial profit by creating confusion among Internet users in order to attract traffic to its website.
B. Respondent
Respondent makes the following contentions :
1. Respondent is Global Utility Truck Sales.
2. Complainant is a rental company, which is a different industry than Respondent’s industry.
3. The only similarity between Complainant and Respondent is the word GLOBAL.
4. Complainant cannot claim exclusive rights to the term GLOBAL. The word GLOBAL cannot be copyrighted as the term is an adjective and not a noun.
FINDINGS
Complainant is the owner of the following trademark registrations in the United States Patent and Trademark Office (USPTO):
1. Registration No. 2,885,558 for the word GLOBAL in International Classes 37 and 39, registered on September 21, 2004 in the Service Mark Principal Register. In use since 4-17-1990
2. Registration No. 2,774,461 for the word GLOBAL and design in International class 35 for retail services of construction equipment and trucks and special duty trucks and in classes 37 and 39 for rental of industrial equipment and rental of truck and utility trucks. Registered on October 21, 2003 in the Service Mark Principal Register. In use since April 17, 1990.
Complainant is the owner of the following trademark registration in the Canadian Intellectual Property Office (“CIPO”):
Registration No.TMA 642,741, for the word GLOBAL registered on June 6, 2011, covering:
a) Rental of equipment used in the construction, telecommunications and utility industries.
b) Rental of utility service trucks and special services trucks-
c) Retail services of used equipment in the construction, telecommunications and utility industries and utility service trucks and special services trucks.
d) Rental of equipment used in the tree care industry.
e) Retail services of used equipment used in the tree care industry.
Respondent is the owner of the following domain name:
GLOBALUTILITYTRUCKSALES.COM
Created on August 18, 2011
DISCUSSION
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 or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims to own rights in the GLOBAL mark through its USTPO trademark registrations (e.g., Reg. No. 2,885,558 registered September 21, 2004), and its CIPO trademark registrations (Reg. No. TMA642,471 registered June 6, 2011). See Complainant’s Exhibits 3, 4, and 5. Previous panels have held that a complainant’s trademark, registered with a national trademark authority, such as the USPTO or the CIPO serves to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel determines that Complainant has established rights in its GLOBAL mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <globalutilitytrucksales.com> domain name is confusingly similar to its GLOBAL mark, because the domain name includes Complainant’s GLOBAL mark, as well as the descriptive terms “utility,” “truck,” and “sales,” which are all words associated with Complainant’s business.
Further, Complainant alleges that the <globalutilitytrucksales.com> domain name also adds the generic top-level domain (“gTLD”) “.com.” The changes made to the disputed domain name do not preclude a finding of confusing similarity to Complainant’s GLOBAL mark, for the purposes of Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the <globalutilitytrucksales.com> domain name is comprised of a common, generic term and that it is adjective and not a noun and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under
Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Respondent also claims that they are a company engaged in sales while Complainant is a rental company; however, that argument overlooks the fact that Complainant’s trademarks are also registered both in the USPTO and in the CIPO in international class 35 for retail services.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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.”).
Complainant makes the assertion that Respondent is not commonly known by the <globalutilitytrucksales.com> domain name, as Respondent does not have permission to use the GLOBAL mark, and the WHOIS information for the domain name identifies the domain’s registrant only as “Truck Sales.” The Panel finds that because Respondent appears to be known as “Truck Sales” according to the WHOIS information and lacks authorization to register a domain name using Complainant’s mark, Respondent cannot be found to be commonly known by the <globalutilitytrucksales.com> domain name, as intended by Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant sets forth the argument that Respondent advertises the sale of “Bucket trucks, utility trucks, digger derricks, forestry bucket trucks, cranes, chippers, chip trucks, aerial trucks, tree trucks,” and other similar equipment at the resolving website. See Complainant’s Exhibit 8. Complainant alleges that these terms are identical to those that Complainant lists on its trademark
registrations for the GLOBAL mark, and claims that by using these terms, Respondent redirects Internet traffic to its resolving website. Complainant argues that Respondent uses Complainant’s GLOBAL mark on the website to describe products manufactured by Complainant, resulting in commercial gain to Respondent. Complainant claims that such use demonstrates that Respondent competes with Complainant’s business and demonstrates that Respondent does
not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s competing use of the <globalutilitytrucksales.com> domain name does not amount to a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant asserts that Respondent uses the <globalutilitytrucksales.com> domain name to capitalize on Complainant’s goodwill in the GLOBAL mark, resulting in disruption to Complainant’s business. Complainant claims that Respondent redirects Complainant’s customers to Respondent’s website
where Complainant’s used vehicles and those of Complainant’s competitors are sold. Previous panels have maintained that selling a complainant’s goods, as
well as selling goods in competition with a complainant, disrupts a complainant’s business and demonstrates bad faith registration and use of a disputed domain. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent disrupts Complainant’s business by selling Complainant’s products and competes with Complainant by selling substantially similar products, demonstrating bad faith registration and use of the <globalutilitytrucksales.com> domain name under Policy ¶ 4(b)(iii).
Complainant claims that by using the GLOBAL mark in a domain name, Respondent attempts to attract Internet traffic to its website in order to generate revenue. Complainant argues that confused Internet users who seek Complainant’s authorized website and the products thereon will be attracted instead to Respondent’s commercial website for Respondent’s financial benefit, which Complainant asserts is evidence of Respondent’s bad faith registration and use. Respondent’s use of the disputed domain name is a bad faith registration and use pursuant to Policy ¶ 4(b)(iv) given Respondent’s attempt to take commercial advantage of Internet users’ mistakes. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Complainant asserts that Respondent had at least constructive knowledge of Complainant’s rights in the GLOBAL mark. Panels have previously held that constructive knowledge alone is not sufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). Complainant also makes the allegation that Respondent was “fully aware of the GLOBAL brand,” because Respondent sells Complainant’s products, and includes artwork similar to Complainant’s GLOBAL design mark at the resolving website, which Complainant argues demonstrates actual knowledge of the GLOBAL brand. Respondent’s use of similar artwork at the resolving website, combined with use of Complainant’s GLOBAL mark, is evidence of Respondent’s actual knowledge of Complainant’s rights in the mark; thus the Panel finds that Respondent registered the <globalutilitytrucksales.com> domain name in bad faith as set forth by Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is ordered that the <globalutilitytrucksales.com> domain name be TRANSFERRED from Respondent to Complainant.
Jaime Delgado Panelist
Dated: June 7, 2013
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