Hensley Manufacturing, Inc. v. Todd Piercey
Claim Number: FA1407001572540
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 NAME
The domain name at issue is <trailersaver.us>, 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 July 30, 2014; the National Arbitration Forum received payment on August 4, 2014.
On August 5, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <trailersaver.us> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s Domain Name Dispute Resolution Policy (the “Policy”).
On August 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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.us. Also on August 5, 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 May 27, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Federal Trademark Registration
Trademark: TRAILER SAVER, United States Trademark Registration No. 85836549, Registered on the Principal Register on October 8, 2013 based on application filed on January 30, 2012. Goods: trailer parts, namely trailer hitches, and gooseneck couplers for trailer hitches in International Class 012.
Common Law Trademark Rights
Complainant and its predecessors in title have had common law trademark rights in the United States with respect to the mark TRAILERSAVER prior to the date of registration of the domains at issue and at all times since. The facts establishing Complainant’s common law trademark rights are as follows:
1. At least as early as February 2, 2001, Jerry Clark began doing business under the mark TRAILERSAVER and <trailersaver.com> domain in connection with the sale of air suspension trailer hitches. The logo for the mark TRAILERSAVER consisted of the phrase “TrailerSaver” partially enclosed by a blue arc that was thicker on the left side than the right side.
2. On May 14, 2003, Jerry Clark organized TrailerSaver, Inc, a Wisconsin Corporation. TrailerSaver, Inc. (Wisconsin Corp.) continued using the mark TRAILERSAVER and the <trailersaver.com> domain in connection with the sale of air suspension trailer hitches.
3. On July 8, 2004, TrailerSaver, Inc, a Kentucky Corporation, was organized.
4. At some point between July 8, 2004 and November 8, 2004, use of the mark TRAILERSAVER and the <trailersaver.com> domain transferred from TrailerSaver, Inc. (Wisconsin Corp.) to TrailerSaver, Inc. (Kentucky Corp.).
5. At least as early as November 8, 2004, TrailerSaver, Inc. (Kentucky Corp.) used the mark TRAILERSAVER and the <trailersaver.com> domain in connection with the sale of air suspension trailer hitches.
6. Complainant acquired TrailerSaver, Inc. (Kentucky Corp.) on June 6, 2005. As part of the asset purchase agreement, Complainant obtained the exclusive right, title, and interest to use all names, tradenames, trademarks, advertisements, or slogans that has been used by TrailerSaver, Inc. (Kentucky Corp.), including the mark TRAILERSAVER and the <trailersaver.com> domain. As part of this agreement, Complainant acquired the common law trademark rights of its predecessors in title.
7. Today, Complainant continues to use the mark TRAILERSAVER and the <trailersaver.com> domain in connection with the sale of air suspension trailer hitches. The logo for the mark TRAILERSAVER remains essentially the same with the phrase “TrailerSaver” partially enclosed by a blue arc that is thicker on the left side than the right side.
FACTUAL AND LEGAL GROUNDS
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.
1. The disputed domain name includes the entire TRAILER SAVER and TRAILERSAVER trademarks. At most, the disputed domain name differs 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 disputed domain name is identical to the TRAILER SAVER and TRAILERSAVER trademarks.
2. 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, the Panel should conclude that 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 registered <trailersaver.us> in his personal name, not a company’s name, on December 10, 2009. According to the whois records for these domains, respondent does not appear to be commonly known by the disputed domain name.
2. Complainant has not licensed or otherwise authorized respondent to use any form of the TRAILER SAVER or TRAILERSAVER marks.
3. As recently as May 20, 2014, the website for the disputed domain redirected users to <mountainmaster.net>, and the website for <mountainmaster.net> does not contain the use of the phrase “trailer saver.”
4. On May 21, 2014, a complaint under ICANN’s Uniform Domain Name Resolution Policy (UDRP) was initiated against respondent in connection with respondent’s ownership of <trailersaver.biz>, <trailersaver.info>, <trailersaver.net>, and <trailersaver.org> domains. The disputed domain that is the subject of this complaint was not included in the May 21, 2014 complaint as the disputed domain is governed by the DOC’s usTLD Dispute Resolution Policy (usDRP).
5. Sometime between May 21, 2014 and June 15, 2014, respondent removed the coding that redirected internet users to <mountainmaster.net>. The disputed domain now links to a holding page for pay-per-click landing sites from which respondent is presumably deriving click-through income.
6. Although Mountain Master Truck Equipment previously filed an intent to use trademark application, respondent cannot rely on this to provide rights as respondent did not file the application and it lapsed years ago.
7. Complainant has not licensed or otherwise authorized Mountain Master Truck Equipment to use any form of the TRAILER SAVER or TRAILERSAVER marks.
Complainant submits that the facts stated above constitute a prima facie showing that respondent has no rights or legitimate interests in the domain name at issue. If respondent was going to put the disputed domain to a bona fide use, he would have done so by now. Thus, the Panel should conclude that Policy ¶4(a)(ii) is satisfied.
[c.] Complainant submits that the domain at issue should be considered as having been registered or used in bad faith for the following reasons:
1. Prior to the filing of the related proceeding, the disputed domain redirected to <mountainmaster.net>, which is the website for Mountain Master Truck Equipment.
2. The website for <mountainmaster.net> offers for sale air ride hitches that are designed to protect trailers, which are in the same field of endeavor as Complainant’s goods.
3. Respondent has previously admitted that Mountain Master Truck Equipment does not sell new trailer hitches manufactured by Complainant but does own several used trailer hitches manufactured by Complainant.
4. Complainant believes that respondent receives some type of pecuniary gain from Mountain Master Truck Equipment.
5. After the filing of the related proceeding, the redirect for the disputed domain at issue was removed. The disputed domain now links to a holding page for pay-per-click landing sites from which respondent is presumably deriving click-through income.
Complainant submits that respondent knew of Complainant’s trademarks and registered the disputed domain, along with the domain names involved in the prior UDRP proceeding, in order to promote Mountain Master Truck Equipment’s competing goods as the webpage previously redirected to a webpage that sells air ride hitches that are designed to protect trailers, which directly compete with Complainant’s goods. Registering domain names that are confusingly similar to Complainant’s marks for the purpose of misdirecting to Complainant’s competitors is bad faith registration and use under Policy ¶4(b)(iii)-(iv). See Spark Networks PLC v Houlihan, NAF/FA 653,476 (2006).
Although respondent has ceased redirecting the webpage for the disputed domain for the time being, respondent is still receiving a pecuniary benefit from confusion with Complainant’s trademarks because the webpage for the disputed domain now links to a holding page for pay-per-click landing sites. This constitutes evidence of bad faith registration and use. See FIL Limited v. Mahmoud, NAF/FA 1,564,633 (2014).
Furthermore, the Panel may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶4(b) when evaluating whether there is evidence the disputed domain was registered and used in bad faith. See Entertainment Network Limited v Kapadia, NAF/FA 1,364,939 (2010). Respondent was using the disputed domain in the same manner that he was using the domain names in the related UDRP proceeding. Complainant could not include the disputed domain in the related proceeding because the usDRP applied to the disputed domain currently at issue. A separate complaint was not filed simultaneously as Complainant wished to see how the UDRP proceeding would be resolved before proceeding with the usDRP proceeding. Now that the UDRP proceeding has completed, Complainant wishes to proceed with the usDRP proceeding. Respondent’s attempt to mask his bad faith registration and use by removing the redirect once the UDRP proceeding was initiated should not be condoned. Respondent has used and continues to use the disputed domain to derive a pecuniary gain from the confusion that results because of the similarity with Complainant’s marks.
Accordingly, the Panel should conclude that Policy ¶4(a)(iii) is satisfied.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 or 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 must 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
It should be noted this case is very similar to the Hensley Manufacturing, Inc. v. Todd Piercey, FA1405001560587 (6/30/2014) case which this Panel previously decided.
Complainant uses the TRAILERSAVER mark in connection with trailer parts, most notably trailer hitches. Complainant owns the TRAILER SAVER mark through a registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,413,853 registered October 8, 2013, filed January 30, 2013). Previous panels have held USPTO registrations satisfy the initial requirements of 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)). A successfully registered mark dates back at least to the date of filing. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). This Panel believes Complainant’s right would date back to its first use of the mark, even though it was registered later. Accordingly, Complainant’s USPTO registration adequately establishes its rights in the TRAILER SAVER mark dating back to June 1, 2005.
Complainant also claims to enjoy priority common law rights in the mark. The TRAILERSAVER name was used in connection with the sale of air suspension trailer hitches as early as February 3, 2001 when Jerry Clark began doing business under the mark and began using the <trailersaver.com> domain name for the operation. Complainant acquired the rights of its predecessors in title on June 6, 2005, and continues to use the mark today. Complainant has acquired secondary meaning in the TRAILERSAVER mark through continued use and promotion since 2001, and therefore this Panel finds common law rights in the mark for purposes of Policy ¶4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Complainant claims the <trailersaver.us> domain name is confusingly similar to the TRAILERSAVER mark. The domain name differs from the mark only by the addition of the country code top-level domain (“ccTLD”) “.us.” In Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) the panel stated, “The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.” Accordingly, the addition of the ccTLD is immaterial. The <trailersaver.us> domain name is confusingly similar to the TRAILERSAVER mark.
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 lacks rights and legitimate interests in the disputed domain name. Respondent did nothing to refute Complainant’s statement. Accordingly, there is no evidence Respondent is owner of an identical mark under Policy ¶4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant claims Respondent does not appear to be commonly known by the disputed domain name as demonstrated by the WHOIS record. The WHOIS information identifies “Todd Piercey” as registrant, which bears no obvious relationship to <trailersaver.us>. Complainant has not authorized Respondent’s use of its mark. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found no basis for a Policy ¶4(c)(iii) finding when nothing in the record connected the respondent to the domain name. The available evidence does not support a finding Respondent was commonly known by the disputed domain name under Policy ¶4(c)(iii).
Complainant claims as recently as May 20, 2014, the disputed domain name redirected users to <mountainmaster.net>, which operates in the same field as Complainant by selling air ride hitches. In Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) the panel found that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks. This Panel agrees and finds Respondent’s use of the disputed domain name to redirect users to a website competing with Complainant does not fall within Policy ¶¶4(c)(ii) or (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant notes there was a UDRP proceeding against respondent regarding other domain names infringing on the TRAILERSAVER mark, but the <trailersaver.us> domain name now at issue could not be included in that proceeding due to the USDRP rules. Given the close similarity of the previous domain names and this disputed domain name and the Respondent’s failure to respond (again), this Panel will find collateral estopppel on this particular issue. There is sufficient evidence of bad faith under Policy ¶4(b)(ii).
Respondent previously resolved the disputed domain name to <mountainmaster.net>, which promotes products in competition with Complainant. There is sufficient evidence of bad faith disruption where the confusingly similar domain name is used to direct Internet users to a page offering competing goods. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website). Once again, this Panel finds bad faith registration and use pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent likely obtained commercial benefit by resolving the disputed domain name to a site selling competing products. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) the panel found, “Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.” The Panel would agree Respondent attempted to mislead users as to Complainant’s affiliation with the disputed domain name and profit from that confusion. There is sufficient evidence to find bad faith registration and use pursuant to Policy ¶4(b)(iv).
In addition, Complainant claims Respondent knew of Complainant’s trademark at the time the disputed domain name was registered. It appears Respondent actually knew of Complainant’s rights in the mark and knew Respondent had no rights. Respondent registered the disputed domain name and used it in bad faith under Policy ¶4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <trailersaver.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, September 3, 2014
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