James L. Throneburg v. TerraLycos Mexico
SA de CV
Claim Number: FA0509000562772
Complainant is James L. Throneburg (“Complainant”), represented
by Brian M. Davis, of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000. Respondent is TerraLycos Mexico SA de CV (“Respondent”), Blvd, Diaz Ordaz 123, Santa
Maria, Monterra, Nuero Leon 64650, Mexico.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thorloperformance.com>, registered with Tucows
Inc.
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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 20, 2005.
On
September 16, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the <thorloperformance.com> domain name is registered
with Tucows Inc. and that Respondent is the current registrant of the
name. Tucows Inc. has verified that
Respondent is bound by the Tucows Inc. 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
September 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 12, 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@thorloperformance.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 17, 2005, 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." 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 and the THORLO Mark
Complainant
James L. Throneburg is an individual residing in North Carolina, and is the
owner of the trademark THORLO, used in connection with socks. Complainant has
entered into an exclusive license agreement with THOR·LO, Inc. (“THOR·LO”)
regarding the sale of merchandise under the THORLO mark. THOR·LO is one of the largest and most well
known manufacturers of socks in the United States, and sells its products
internationally. Complainant is also the Chairman of the Board
and Chief Executive Officer of THOR·LO.
(Declaration of James L. Throneburg.
Operating
under an exclusive license granted by Complainant, THOR·LO has sold socks in
the United States and various parts of the world under the THORLO mark since at
least as early as June 17, 1963.
Complainant has obtained several registrations of his THORLO mark
throughout the world, including U.S. Trademark Registration No. 1,119,696,
issued June 5, 1979, that covers men’s, women’s and children’s socks, and
Mexican Registration No. 418,455. The
U.S. registration is incontestable and, as such, is conclusive evidence of
Complainant's exclusive right to use, and to license THOR·LO to use, the THORLO
mark in commerce in the United States.
The goods of Complainant’s licensee
have been and are being advertised and promoted extensively under the THORLO
mark internationally in various forms of media, including the Internet. Complainant’s licensee also registered the
domain name thorlo.com, which domain
name is used to direct Internet users to THOR·LO’s website having the URL www.thorlo.com. That website is an important part of
THOR·LO’s marketing program and is used to promote goods sold under
Complainant’s mark.
By reason of the
adoption and longstanding continuous use of Complainant’s THORLO mark, that
designation has a distinctive quality and has acquired special and particular
significance and very valuable goodwill as identifying Complainant, his
licensee and their goods, so that when members of the public in this country
and elsewhere see or hear such mark and trade name, they automatically think of
Complainant or his licensee.
Consequently, through such usage and recognition, Complainant has acquired
(in addition to his statutory rights in numerous countries) common-law rights
in the THORLO mark as a proprietary trade name and trademark, which rights
extend, without limitation, to the exclusive right to use THORLO in the United
States, Mexico and numerous other countries, and the right to prevent others
from using any marks, domain names, or other designations that are confusingly
similar thereto.
B. Respondent’s Unlawful Activities
Respondent,
an entity which has identified itself to the registrar as “TerraLycos Mexico SA
de CV,” has provided the registrar, Tucows, Inc., with the mailing address Blvd. Diaz Ordaz 123, Santa Maria, Monterra,
Nuero Leon 64650, Mexico
. The WHOIS database provides the following
additional information regarding the Administrative Contact for the domain name:
telephone 52013336600163, E-Mail thorloperformance@hotmail.com. It appears from the WHOIS database that
Respondent requested this domain name on March 25, 2003.
Respondent
is using the subject domain name to direct Internet users to a website having
the URL http://www.thorloperformance.com,
on which website Respondent sells socks bearing the TEKA mark. Respondent is
conducting these activities notwithstanding the fact that it has no rights or
legitimate interests in respect of said domain name, and the subject domain
name is confusingly similar to Complainant’s registered THORLO mark. (Davis Decl., ¶ 3 and Exhibit 2)
On
August 11, 2005, Complainant’s counsel, Brian M. Davis, sent a letter to
Respondent’s administrative contact requesting that it discontinue use of the
domain name thorloperformance.com and
transfer the domain name to James L. Throneburg. On August 22, 2005, Complainant’s counsel sent a message to
Respondant’s administrative contact seeking a response to the August 11, 2005
letter. No response was ever received
from Respondant.
ARGUMENT
Pursuant
to the UDRP, Complainant must establish the following to obtain the relief he
requests in this action: (i) the
accused domain name (thorloperformance.com)
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; (ii) Respondent has no rights or legitimate interests
in respect of the accused domain name; and (iii) the accused domain name has
been registered and is being used in bad faith. (UDRP § 4(a)) As
reflected in the accompanying evidence made of record in this proceeding and
for the reasons set forth below, Complainant readily satisfies each of these
requirements.
A. The Accused Domain Name Is Confusingly
Similar to Complainant’s Mark
Complainant
owns valid and enforceable common law rights in the THORLO mark in the United
States, and elsewhere by virtue of his licensee’s continuous use of such mark
for several years. Further, Complainant
owns valid statutory rights in the THORLO mark in the United States and Mexico
by virtue of his licensee’s longstanding use and his registration of that mark
in the United States Patent and Trademark Office (U.S. Trademark Reg. No.
1,119,696) (15 U.S.C. § 1065) and the Department of Inventions and Trademarks
of the Mexican Republic (Mexican Trademark Reg. No. 418,455).
The
accused domain name is strikingly similar to Complainant’s THORLO mark. In fact, it is identical to Complainant’s
mark except that it includes the laudatory term “performance.” It is well established that such domain
names are confusingly similar to the underlying third-party mark despite the
inclusion of additional terms. See Thomas Cook Holdings Limited v. Vacation
Travel (WIPO Case No. D2000-1716) (gmcflight.com
similar to GMC mark used in airline industry); TWC Business Trust v. Mukesh Patel and Comxsys Consulting (WIPO
Case No. D2000-1666) (twc-consulting.com
similar to TWC mark). Because
Respondent registered and began using the accused domain name long after
Complainant acquired rights in his mark, Complainant satisfies the first
element of proof required under the UDRP.
B. Respondent Has No Rights Or Legitimate
Interests In The Accused Domain Names
Respondent has no
preexisting rights in “Thorlo” or “Thorloperformance” as a trademark, service
mark or trade name. Hence, it may be
presumed that Respondent has no rights or legitimate interests in
“thorloperformance.com” as a domain name.
See Arthur Guiness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell (WIPO Case No.
D2000-1710) (holding that the respondents had no legitimate interests in the
domain name guinessdraught.org, as
members of the public would assume an association between respondents’ proposed
website and complainant).
C. Respondent
Has Registered And Is Using The Domain Name In Bad Faith
The subject domain
name is being “used” inasmuch as an active commercial website offering
competing products is accessible via the domain name. The evidence also indicates that Respondent did not register or
begin using the subject domain name until no earlier than March 25, 2003 – long
after Complainant’s THORLO mark had acquired its fame. Without any preexisting rights in either
“Thorlo” or “Thorloperformance” as a trademark, service mark, or trade name, it
may be assumed that Respondent adopted, registered, and is using the subject
domain name because of the fame and goodwill associated with Complainant’s
THORLO mark.
Respondent
failed to submit a Response in this proceeding.
Complainant James
L. Throneburg owns the trademark THORLO, used in connection with socks. Complainant has entered into an exclusive
licensing agreement with THOR·LO, Inc. (“THOR·LO”), regarding the sale of
merchandise under the THORLO mark.
THOR·LO is one of the largest and most well-known manufacturers of socks
in the United States, and sells its products internationally. Complainant is also the Chairman of the
Board and Chief Executive Officer of THOR·LO.
Operating under
an exclusive license, Complainant has sold socks in the United States and
various parts of the world under the THORLO mark since at least as early as
1963.
Complainant has
registered its THOR·LO mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,119,696 issued June 5, 1979).
Respondent
registered the <thorloperformance.com> domain name on March 25,
2003. Respondent’s domain name resolves
to a website featuring products that directly compete with those offered by
Complainant.
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."
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.”).
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.
Complainant has
proved its rights in the THORLO mark through registration of the mark with the
USPTO. See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <thorloperformance.com>
domain name is confusingly similar to Complainant’s mark, as the
domain name fully incorporates Complainant’s THORLO mark in its entirety and
adds the generic term “performance.”
Such a change is not enough to overcome a finding of confusing
similarity pursuant to Policy ¶4(a)(i). See Magnum Piering, Inc. v. Mudjackers,
D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not
change the confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd.,
D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word
“Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name
confusingly similar to the complainant’s mark).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <thorloperformance.com> domain name is confusingly similar to
Complainant’s mark. See Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) (finding that "the addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants").
The Panel finds
that Policy ¶4(a)(i) has
been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <thorloperformance.com>
domain name. When a complainant
establishes a prima facie case
pursuant to Policy ¶4(a)(ii), the burden shifts to the respondent to prove that
it has rights or legitimate interests.
Due to Respondent’s failure to respond to the Complaint, the Panel
infers that Respondent does not have rights or legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent does not have rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by the complainant that the respondent does not have rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
not commonly known by the <thorloperformance.com> domain
name. Thus, the Panel concludes that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum
Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Respondent is
using the <thorloperformance.com> domain name to operate a
commercial website featuring goods that compete with Complainant’s goods. The Panel finds Respondent’s use of a domain
name that is confusingly similar to Complainant’s mark to divert Internet users
to its website for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services
pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶4(c)(iii). See Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶4(c)(iii).”); see
also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds
that Policy ¶4(a)(ii) has
been satisfied.
The Panel finds
Respondent has registered and used the <thorloperformance.com> domain
name in bad faith pursuant to Policy ¶4(b)(iii) by using the domain name, which
contains a confusingly similar version of Complainant's THORLO mark, to sell
socks in direct competition with Complainant.
Such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith
by attracting Internet users to a website that competes with complainant's
business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc.,
FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of
variation from complainant's marks suggests that respondent, complainant's
competitor, registered the names primarily for the purpose of disrupting
complainant's business).
Respondent
registered and used the disputed domain name in bad faith under Policy
¶4(b)(iv), as Respondent is using the <thorloperformance.com>
domain name to intentionally attract, for commercial gain, Internet users
to its website, by creating a likelihood of confusion with Complainant as to
the source, sponsorship, affiliation or endorsement of its website. See Fanuc Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
Policy ¶4(b)(iv) by creating a likelihood of confusion with the complainant's
mark by using a domain name identical to the complainant's mark to sell the
complainant's products); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
The Panel finds
that Policy ¶4(a)(iii) has
been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thorloperformance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated:
Monday, October 31, 2005
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