Trek Bicycle Corporation v. Thomas
McMenimen
Claim Number: FA0503000433924
PARTIES
Complainant
is Trek Bicycle Corporation (“Complainant”),
represented by David C. Brezina of Barnes and Thornburg LLP,
One North Wacker Drive, Suite 4400, Chicago, IL 60606-2809. Respondent is Thomas W. McMenimen (“Respondent”), 1101 Crossing Way, Wayne, NJ
07470.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <buyatrek.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
PANEL
The
undersigned certifies that he or she 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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 3, 2005.
On
March 3, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <buyatrek.com> is registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com and that Respondent is the current registrant of the
name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
March 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 24,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@buyatrek.com by e-mail.
A
Response was submitted which will be considered by the Panel.
Complainant
submitted an Amended Complaint dated March 4, 2005.
On March 31, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
has been using the TREK mark in connection with its bicycle business since the
mid-1970s. Complainant obtained
numerous federal trademarks from the United States Patent and Trademark Office
and trademarks in foreign countries for its TREK marks and logo. The first registration for TREK was granted
in 1981 and is now incontestable.
Respondent
is the registrant of the <buyatrek.com> website. The domain name clearly incorporates
Complainant’s TREK trademark. The
website has been deactivated since January 20, 2005, in response to Complainant
contacting Respondent’s website host, Alex Korneyev of HostforWeb.com.
Prior
to deactivation, the website displayed Complainant’s trademarks and products,
and used those trademarks and products to fraudulently induce consumers to send
payment for goods via Western Union Transfer.
Respondent never sent any goods in response to these payments.
Complainant
has reported this fraudulent activity to the FBI, the Wisconsin Department of
Consumer Protection, and the Wisconsin Attorney General’s Office.
The
domain name is confusingly similar to Complainant’s TREK trademark.
Respondent
has no rights or legitimate interests in the <buyatrek.com> domain
name which incorporates Complainant’s TREK trademark.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
The
entire Response states as follows: “I
did not register this domain name nor do I have any connection whatsoever with
its use. I was totally unaware of the
existence of this domain name prior to receiving this complaint.”
C.
Additional Submissions
Complainant’s
Amended Complaint contains no arguments or issues not already covered in the
Complaint.
FINDINGS
1. Complainant is a well-known seller of
bicycles and associated equipment and accessories.
2. Respondent is an individual who does not
disclose what business, if any, he pursues.
3. Complainant holds trademark registrations
from the United States Patent and Trademark Office for the TREK trademark, for
bicycle products, granted well prior to the registration of Respondent’s <buyatrek.com>
domain name.
4. Though Respondent is shown as the registrant
of the <buyatrek.com> domain name, he denies registering the
domain name and further denies any knowledge of the domain name in any manner
whatsoever. The evidence submitted in
this case does not permit a finding that this assertion is true or untrue.
5. The domain name, <buyatrek.com>,
is confusingly similar to Complainant’s TREK trademark.
6. Respondent’s failure to respond or
contest the allegations of the Complaint, as required by the Rules and Policy,
stands as an admission that the allegations are true.
7. Respondent has no rights or legitimate
interests in the domain name.
8. The <buyatrek.com> domain
name was registered and used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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 order to prevail in a domain name
dispute, Complainant must prove that a trademark or service mark in which
Complainant has rights is identical or confusingly similar to the domain name
under consideration. See Policy ¶4(a)(i).
Complainant has rights in the TREK
trademark, as a result of the registrations with the United States Patent and
Trademark Office for the TREK trademark dating back to September 8, 1981. See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, and
that a respondent has the burden of refuting this assumption); see also
Men’s Wearhouse, Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept 16, 2002).
The
<buyatrek.com> domain name is confusingly similar to
Complainant’s TREK mark because the domain name incorporates the mark and
merely adds the generic or descriptive terms “buy” and “a” and the generic
top-level domain (“gTLD”) “com.” The
mere additions of generic or descriptive terms and a gTLD do not significantly
distinguish the domain name from the trademark. See Arthur Guinness Son
& Co. (Dublin) v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic term or word); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1309 (WIPO Dec. 9, 2000) (“Neither the
addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the
overall impression of the dominant part of the name in each case, namely the
trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
Complainant prevails under the
requirement of Policy ¶ 4(a)(i).
When a complaint is properly served, the
respondent, in order to prevail, is obliged to “Respond specifically to the
statements and allegations contained in the complaint and include any and all
bases for the Respondent…to retain registration and use of the disputed domain
name.” See Rules, ¶ 5(b)(i).
“If a Party, in the absence of
exceptional circumstances, does not comply with any provision of, or
requirements under, these Rules or any request from the Panel, the Panel shall
draw such inferences therefrom as it considers appropriate.” See Rules, ¶
14(b).
“A Panel shall decide a complaint on the
basis of the statements and documents submitted and in accordance with the
Policy, there Rules and any rules and principles of law that it deems
applicable.” See Rules, ¶ 15(a).
Under general principles of law,
averments in a pleading to which a responsive pleading is required, are
admitted when not denied in the responsive pleading. See Federal Rules of Civil Procedure, Rule 8(d). This is similar to English Rules Under the
Judicature Act and to the practice of the States.
When a response is filed in any domain
name dispute case, even when a respondent makes an attempt to answer a
complainant’s case, a respondent must come forward with concrete evidence
rebutting a complainant’s assertion that respondent has no rights or legitimate
interests in the domain name. When a respondent presents no concrete evidence,
the conclusion can be drawn that respondent has no rights or legitimate
interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000).
The finding is made that Respondent’s
failure to contest any allegation contained in the Complaint, stands, both
under the Rules and general principles of law, as an admission that
Complainant’s allegations are true. See
Lifetouch, Inc. v. Fox Photographics, FA13667 (Nat. Arb. Forum Mar. 21,
2005).
Complainant prevails under the
requirements of Policy ¶4(a)(ii).
Complainant avers that Respondent by
using the domain name, has intentionally attracted, for commercial gain,
Internet users to Respondent’s website by creating a likelihood of confusion
with Complainant’s trademark as to the source, sponsorship, affiliation, and
endorsement of Respondent’s website and products or services that fraudulently
appear to be offered on Respondent’s website.
In addition, Complainant avers that the <buyatrek.com>
domain name is being used in connection with a classical fraud scheme in which
Internet users pay online and receive nothing in return.
Complainant further avers that Respondent
registered the domain name with full knowledge of Complainant’s TREK trademark.
The fact that Respondent fails to
challenge or contest these averments constitutes an admission that the
averments are true. See Lifetouch,
Inc. v. Fox Photographics, FA14667 (Nat. Arb. Forum Mar. 21, 2005).
The evidence presented by Complainant
shows that the website at <buyatrek.com> offered to sell TREK
bicycles to consumers by a transfer of sums of money from buyer to seller after
which no merchandise was ever delivered nor could buyers contact any
representative of seller or recover the sums paid.
Complainant prevails under the
requirements of Policy ¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyatrek.com
> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 14, 2005
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