True Value Company v. Vertical Market / Vertical Market Inc.
Claim Number: FA1306001506855
Complainant is True Value Company (“Complainant”), represented by Paige Stradley, Minnesota, USA. Respondent is Vertical Market / Vertical Market Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mastermechanic.net>, registered with MONIKER.
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 June 26, 2013; the National Arbitration Forum received payment on June 26, 2013.
On July 7, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <mastermechanic.net> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@mastermechanic.net. Also on July 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 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 <mastermechanic.net> domain name, the domain name at issue, is confusingly similar to Complainant’s MASTER MECHANIC 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.
Complainant, True Value Company, is an international manufacturer and wholesale distributor for a group of approximately 5,000 retail hardware stores which carry and sell a large range of MASTER MECHANIC products. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MASTER MECHANIC mark (e.g., Reg. No. 1,249,555, registered August 30, 1983).
Respondent’s domain name is confusingly similar to Complainant’s MASTER MECHANIC mark because it fully incorporates Complainant’s well-known and distinctive MASTER MECHANIC mark while simply including the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in MASTER MECHANIC or in the use of MASTER MECHANIC in a domain name. Respondent is not commonly known by the name MASTER MECHANIC and has no connection to Complainant or its MASTER MECHANIC line of products. The website associated with Respondent’s <mastermechanic.net> domain name provides links to competitors’ websites or websites offering competing products for purchase. Presumably, Respondent receives click through revenues from this website. Respondent has notice of Complainant’s rights in the MASTER MECHANIC trademark prior to the registration of <mastermechanic.net> on July 12, 1998.
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 is the owner of trademark registrations with the USPTO for the MASTER MECHANIC mark (e.g., Reg. No. 1,249,555, registered August 30, 1983). Respondent appears to reside within the United States. Complainant has sufficiently established its rights in the MASTER MECHANIC mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <mastermechanic.net> domain name is confusingly similar to Complainant’s MASTER MECHANIC mark because it fully incorporates Complainant’s well-known and distinctive MASTER MECHANIC mark while simply including the gTLD “.net.” Respondent’s addition of a gTLD does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark). Further, removing the spacing in the MASTER MECHANIC mark does not defeat the confusing similarity of this domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).Thus, Respondent’s <mastermechanic.net> domain name is confusingly similar to Complainant’s MASTER MECHANIC mark pursuant to Policy ¶ 4(a)(i).
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 is not commonly known by the name MASTER MECHANIC mark and has no connection to Complainant or its MASTER MECHANIC line of products. Respondent has never been affiliated with Complainant, its stores, or its MASTER MECHANIC product line, and Respondent is not licensed or authorized to use the domain name. Respondent is not commonly known by the <mastermechanic.net> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent’s <mastermechanic.net> domain name provides links to competitors’ websites as well as websites offering competing products for purchase. The links featured on the website associated with this domain name relate to tool offerings with links entitled “Sears Power Tools,” “Ryobi Tools,” and “DeWalt Power Tools Sales.” Upon clicking the links, the Internet user is redirected to another <mastermechanic.net> webpage which includes even more links and products available for purchase. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel found that the disputed domain name resolved to a website displaying complainant’s marks and contains links to complainant’s competitors, and that this use was neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Consequently, Respondent is not using the <mastermechanic.net> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s <mastermechanic.net> provides links to Competitors’ websites or websites offering competing products for purchase. Consumers who visit the this website may purchase a competing product instead of a MASTER MECHANIC product. Because Respondent’s disputed domain name diverts potential customers away from Complainant to third-party websites, the Panel holds that Respondent has disrupted Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent had notice of Complainant’s rights in the MASTER MECHANIC trademark prior to the registration of <mastermechanic.net>. Respondent had constructive knowledge of Complainant’s well-known mark because at least one of Complainant’s marks has been registered since 1983. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
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 <mastermechanic.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 3, 2013
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