Hensley Manufacturing, Inc. v. Todd Piercey
Claim Number: FA1405001560587
Complainant is Hensley Manufacturing, Inc. (“Complainant”), represented by Marshall G. MacFarlane of Young, Basile, Hanlon & MacFarlane PC, Michigan, USA. Respondent is Todd Piercey (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org>, registered with 1&1 Internet AG.
The undersigned certifies he has acted independently and impartially and to the best of his 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 21, 2014; the National Arbitration Forum received payment on May 30, 2014.
On May 22, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2014 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@trailersaver.biz, postmaster@trailersaver.info, postmaster@trailersaver.net, postmaster@trailersaver.org. Also on May 30, 2014, 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 26, 2014, 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 names be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds:
[a.] Complainant submits that each of the domain names at issue are either identical or confusingly similar to Complainant’s trademarks.
All of the domain names at issue include the entire TRAILER SAVER and TRAILERSAVER trademarks. At most, the domain names at issue differ only by deletion of a space and the addition of a top level domain. A domain name is considered identical to a trademark despite deletion of spaces and addition of a top level domain. See Ann Coulter v. Mark Vadnais, NAF/FA 137221 (2003). Thus, the domain names at issue are identical to the TRAILER SAVER and TRAILERSAVER trademarks.
In the alternative, the trademarks and the domain names at issue remain confusingly similar despite the minor differences between them. See Hewlett Packard Company v. Ruben Moreno, NAF/FA94372 (2000).
Thus, UDRP Policy ¶4(a)(i) is satisfied.
[b.] Complainant submits that respondent should be considered as having no rights or legitimate interest in respect of the domain names that are the subject of this complaint for the following reasons:
1. Respondent has registered <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org>. According to the whois records for these domains, respondent does not appear to be commonly known by the domain names at issue.
2. Complainant has not licensed or otherwise authorized respondent to use any form of the TRAILER SAVER or TRAILERSAVER marks.
3. As of May 2, 2014, the websites for the domains at issue do not contain the use of the phrase “trailer saver.” Instead, the websites bear the name “Mountain Master Truck Equipment.”
4. The redirect checker on www.internetofficer.com reveals that domains at issue contain frames that display information from http://www.mountainmaster.net.
5. Mountain Master Truck Equipment does not appear to be commonly known by the domain names at issue.
6. The websites for the domains at issue and http://www.mountainmaster.net offer for sale air ride hitches that are designed to protect trailers, which are in the same field of endeavor as Complainant’s goods.
7. The “contact information” pages for the domains at issue and http://www.mountainmaster.net are identical and list their location as 9609 D N 21drive, Phoeniz, Arizona 85021.
8. On December 11, 2009, Gerald Piercey, doing business as Mountain Master Sales, LLC, filed an intent-to-use trademark application with the United States Patent and Trademark Office for the mark “TRAILER SAVER SOLUTIONS.”
9. The application for the mark “TRAILER SAVER SOLUTIONS” was abandoned September 13, 2010 because Gerald Piercey failed to response to an office action. No allegation of use was made before the application was abandoned.
Complainant submits that the facts stated above constitute a prima facie showing that respondent has no rights or legitimate interests in the domain names at issue.
These facts show that Todd Piercey is affiliated with Mountain Master and that neither Mountain Master nor Todd Piercey are commonly known by the domain names at issue. Although Gerald Piercey attempted to obtain federal registration of the mark “TRAILER SAVER SOLUTIONS,” this is insufficient to establish that respondent was making preparations for a bona fide offering of goods. See Ciccone v Parisi, WIPO D2000-0847 (2000). Respondent is using the confusing similar domain names at issue to advertise goods that are similar to Complainant’s goods. This is sufficient to show that respondent’s use of the domain names at issue is inconsistent with a bona fide offering of goods or a legitimate noncommerical or fair use. See Am. Int’l Group, Inc. v. Benjamin, NAF/FA 944242 (2007).
Thus, UDRP Policy ¶4(a)(ii) is satisfied.
[c.] The domain names that are the subject of this complaint should be considered as having been registered and used in bad faith because respondent registered the domain names in order to prevent Complainant from reflecting the mark in a corresponding domain name and a pattern of such conduct exists, UDRP Policy ¶4(b)(ii), respondent registered the domain names at issue in order to promote respondent’s competing goods, UDRP Policy ¶4(b)(iii), and respondent is using the domain names at issue to intentionally attract internet users to its website for commercial gain, UDRP Policy ¶4(b)(iv).
A pattern of bad faith registration exists that deprives Complainant of the ability to reflect its marks in a corresponding domain name because respondent has registered five domain names that incorporate Complainant’s “TRAILERSAVER” mark. Although only four are at issue in this complaint, respondent also registered a fifth domain using Complainant’s mark, the <trailersaver.us> domain. “Previous panels have held that a respondent’s registration of multiple domain names that feature a complainant’s mark illustrates the bad faith intentions of the respondent in registering and using the domain names.” Microsoft Corp. and Skype v. ATF The Veil Super Fund, NAF/FA 1470016 (2012). “One instance of registration of several infringing domain names satisfies the burden imposed by the [UDRP Policy ¶4(b)(ii)].” Harcourt, Inc. v. Fadness, NAF/FA 95247 (2000).
As previously discussed, respondent is currently using confusingly similar domain names to advertise goods that are similar to those that Complainant offers. This results in internet traffic being routed away from Complainant’s website to respondent’s websites, which sell goods that are in direct competition with Complainant. Use of a disputed domain name in this manner constitutes a disruption of a complainant’s business and reveals bad faith registration and use. See Victoria’s Secret Stores Brand Management, Inc v. Jianxiong Xu, NAF/FA 1371291 (2011). Respondent registered and is using the domain names at issue to promote respondent’s competing goods and intentionally attract internet users to its website for commercial gain.
Thus, UDRP Policy ¶4(a)(iii) is satisfied.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent sent an email to Complaint which read:
Todd Piercey has not been with Mountain Master for about 1 year and has brought to our attention a complaint has been filed.
Neither Todd nor myself (Gerry) has received a copy of the complaint to our knowledge, please send via email said complaint.
Let’s take a look at the history of our purchase of the named trailersaver domain names:
1) Todd Piercey purchased the domain names on 3-25-2011 for the purpose of promoting our new air ride suspension system for trailers.
2) Please note the letter from Gallagher & Kennedy dated Oct 6, 2003 for the proposed patent application for the truck & RV suspensions.
3) We understand the Trailer Saver product and or patents were sold to Hensley Mfg in the last year or so but the TRADEMARK was not secured until last fall.
4) We developed the truck & RV suspension with successful testing and installations in 2003 & 2004.
5) We still would like to use our domain names for the promotion of the suspensions when the RV industry recovers from its tragic demise.
6) The domain names were forwarded to Mountain Master Truck Equipment a truck body, generator, motorcycle loader, Smart car loader, trike motorcycle loader, auxiliary carrier system, and hitch manufacturer.
7) We have in stock several used Trailer Saver hitches for sale but we do not sell new Trailer Saver hitches.
8) We have disconnected the FORWARDING OF OUR TRAILERSAVER DOMAIN NAMES to Mountain Master Truck Equipment and will not use those domains without trademark filings.
9) We believe we have the right to use the domains when we market our RV suspensions and that the trademark was obtained in error or the use by Mountain Master was not disclosed in the trademark filing.
Please advise what additional documentation you need to support our claims.
Sincerely,
Gerald S. Piercey III, Todd Piercey
Mountain Master Truck Equip.
[redacted]@mountainmaster.net
(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.
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 prove 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 uses the TRAILER SAVER mark in connection with the sale of air suspension trailer hitches. Complainant owns a trademark registration with the United States Patent & Trademark Office (“USPTO”) for the TRAILER SAVER mark (Reg. No. 4,413,853, registered October 8, 2013 with a first use of June 1, 2005). Complainant’s registration of the TRAILER SAVER mark with the USPTO adequately demonstrates rights in the mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)). Respondent registered its disputed domain names in 2009, before Complainant registered its TRAILER SAVER mark with a trademark agency. However, Complainant’s rights on registration date back to the date of Complainant’s first use.
Complainant’s counsel has not claimed any common law rights. However, the documentation submitted with the Complaint suggests Complainant has had common law rights in the TRAILER SAVER mark since February 2, 2001 when Jerry Clark began doing business under the TRAILER SAVER mark and began using the <trailersaver.com> domain name in connection with the sale of air suspension trailer hitches. Complainant acquired the rights of its predecessors in title on June 6, 2005.
Respondent’s <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names are identical to Complainant’s TRAILER SAVER mark. Respondent uses the TRAILER SAVER mark in its entirety and merely adds a generic top-level domain (“gTLD”). Respondent’s addition of a gTLD and removing a space does not adequately distinguish the disputed domains from Complainant’s mark under Policy ¶4(a)(i) analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Every domain name must have a gTLD (or a ccTLD). No domain name may contain a space because that is a prohibited character. Respondent’s <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names are identical to Complainant’s TRAILER SAVER mark 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 commonly known by the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names at issue. Complainant has not licensed or otherwise authorized Respondent to use any form of the TRAILER SAVER mark. Respondent does not appear to be commonly known by the disputed domain names according to the WHOIS information on file. Respondent is identified as “Todd Piercey” in the WHOIS information. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record. Based upon the evidence in this case, Respondent is not commonly known by the disputed domain names according to Policy ¶4(c)(ii).
Respondent is not Mountain Master Truck Equipment. Respondent may not claim any rights Mountain Master Truck Equipment may own because Respondent registered the disputed domain names in his personal name, not a company’s name. Therefore, it seems clear Respondent registered the disputed domain names with no personal reason to do so.
Respondent’s <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names resolve to a webpage for “Mountain Master Truck Equipment” (a third party). These websites directly compete with Complainant. Respondent is using the disputed domain names in connection with a competing use, which means Respondent is not using the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names for a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. 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.”). Respondent cannot claim to be doing a bona fide business because Respondent is not in this business.
Likewise, Mountain Master Truck Equipment’s intent to file trademark application does not provide any rights to Respondent because:
1. Respondent didn’t file the application; and
2. The application lapsed years ago.
It appears Mountain Master Truck Equipment is making a plea under Policy ¶4(c)(i). This plea must fail for two reasons:
1. Mountain Master Truck Equipment is not the Respondent.
2. Respondent registered the disputed domains on December 10, 2009. If Respondent was going to put the disputed domains to a bona fide use, it would have done so by now.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names in order to prevent Complainant from reflecting the mark in a corresponding domain name. Complainant notes Respondent has registered a fifth domain name using the TRAILERSAVER mark, <trailersaver.us>. However, Complainant secured the registration of <trailersaver.com> on December 6, 2005. Therefore, Complainant cannot show bad faith pursuant to Policy ¶4(b)(ii).
Complainant claims Respondent registered the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names in order to promote Respondent’s competing goods (even though Respondent does not actually sell competing goods). The webpages resolving from the disputed domain names offer to sell air ride hitches that are designed to protect trailers, which directly compete with Complainant’s goods. Respondent’s use of the disputed domain names disrupts Complainant’s business, showing bad faith use and registration under Policy ¶4(b)(iii). See 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 certainly knew of Complainant’s trademark because Mountain Master Truck Equipment owns several used trailer hitches manufactured by Complainant. Mountain Master Truck Equipment does not sell new trailer hitches manufactured by Complainant. Respondent does not sell trailer hitches at all.
Complainant claims Respondent is using the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names to intentionally attract Internet users to Mountain Master Truck Equipment’s website for commercial gain. It appears to this Panel Respondent is using the disputed domain names to attract and mislead users to Mountain Master Truck Equipment’s website for which Respondent commercially benefits. There certainly is initial interest confusion. Respondent has registered and is using the disputed domain names in bad faith under Policy ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 30, 2014
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