National Arbitration Forum

 

DECISION

 

P J Trailers v. O-C Trailers Inc.

Claim Number: FA0601000630872

 

PARTIES

Complainant is P J Trailers (“Complainant”), P.O. Box 199, 1807 FM 2352, Sumner, TX 75486.  Respondent is O-C Trailers Inc. (“Respondent”), 1412 8th Street SE, Orange City, IA 51041.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pjtrailers.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Jacques A. Léger, c.r. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2006.

 

On January 19, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <pjtrailers.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 27, 2006 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@pjtrailers.com by e-mail.

 

A timely Response was received and determined to be complete on February 27, 2006.

 

 

On March 8, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jacques A. Léger as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

(1)  The domain name used by O-C Trailers is confusingly similar to the trademark or service mark to which Complainant has rights because:

 

Complainant contends that "PJ Trailers" is a brand known throughout the continental U.S. and Canada that it has used for its products for nearly 16 years.  It further contends that the first use of this brand occurred prior to the registration of the domain name by the respondent.  Also, the vast majority of the products carried by the Respondent in the past 3 or more years have been, according to  Complainant, that of direct competitors to PJ Trailers.  Thus, it contends that since O-C Trailers is only offering a limited amount of products manufactured by PJ Trailers, the use of <pjtrailers.com> by Respondent is confusing and misleading to the consumers and diminishes the brand and business reputation of the Complainant.

 

Complainant contends that Respondent currently uses pictures of PJ Trailers products on its website which link to a competitor’s brochure for similar products.  The use of photos from PJ Trailers that link to a competitor’s product is done without its permission.  This use is deceptive, misleading and harmful to the brand and business reputation of Complainant.

 

 

(2) Why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint:

 

Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this Complaint because:

 

Respondent has enjoyed countless hits on its site because of the use of <pjtrailers.com>.  Complainant alleges this because of phone calls it has received regarding the O-C Trailers website, when the caller is in fact looking for information regarding PJ Trailers.

 

(3) Why the domain name should be considered as having been registered and being used in bad faith:

Complainant contends that Respondent specifically registered the <pjtrailers.com> domain name so that they could take advantage of the outstanding reputation and quality of its products.  Respondent has sold the products of Complainant for more than 6 years.  According to Complainant, Respondent knew of the PJ name and took advantage of it to its detriment.  It reaffirms that the use of <pjtrailers.com> by Respondent is confusing and misleading to the consumer and diminishes the brand and business reputation of Complainant.

 

B. Respondent

 

(1)  The domain name used by O-C Trailers is not confusingly similar to the trademark or service mark to which Complainant has rights because:

 

Respondent contends that at the time of the domain name registration, more than 6 and a half years ago, the manufacturer of “PJ Trailers” was better known as PJ Manufacturing, Inc., which was its official name.  Its current web address at <pj-trailers.com> was registered under the name PJ Manufacturing.  In the year 2000, more than a year after Respondent had registered the domain name <pjtrailers.com>, Complainant changed its corporate name.  Respondent further contends that it changed its logo to now read “PJ Trailers” during the same period.  Respondent contends that by changing its name, Complainant has brought confusion upon itself, and cannot blame Respondent for it.  In addition, the combination of letters in <pjtrailers.com> could be interpreted in a number of ways, since the letters “p” and “j” could stand for almost anything, and the combination of letters that follow “trailers” has multiple meanings.

 

In response to the allegations of false publicity, Respondent contends that Complainant has given it different brochures over the years to help promote and sell its product line. Information gathered from these brochures is used on <pjtrailers.com> to better describe the product line and showcase PJ Trailers’ products.  (For the convenience of the Panel, the Respondent produced, as exhibit #1, an example of a brochure provided by PJ Trailer Mfg., with its name clearly printed across the top of the brochure, with the trailers presented on the brochure being samples of its product line). The trailers portrayed and their corresponding information in exhibit #1, according to the Respondent, is the exact information it refers to on its website.

 

 

(2) Why Respondent should be considered as having rights or legitimate interests in respect of the domain name <pjtrailers.com>:

 

Respondent contends that domain name registration has always been for the most part, “First Come, First Served” and considers itself as “First Come” in this case.  To the argument that Respondent does not qualify as a representative of Complainant, it contends that it represents at least five different companies that offer the same type of trailers than the one being manufactured by PJ Manufacturing, and it is hence unreasonable for Complainant to think that Respondent should supply over 50% of the product it sells in this type of trailer.  Respondent contends that the impossibility to meet the qualification as an official representative of Complainant justifies that it should have rights in the use of <pjttrailers.com>, because it also distributes trailers that are being manufactured by Complainant.

 

(3) Why the domain name should be considered as having been registered and being used in good faith:

 

Respondent contends that when it originally registered and purchased the domain name <pjtrailers.com>, it was the very first trailer dealer in the U.S. to have a working website, having had a web presence for a number of years already.  It further contends that it was considering a name change for its business due to the generic name which customers did not necessarily relate to.  Peter J. Noteboom, the owner of the Respondent, was considering namely the addition of a partner in the business, his brother Arie Noteboom, Jr., known all his life as “Junior” rather than Arie.  Hence, Respondent contends that it was considering the name “PJ Trailer Sales” or “P & J Trailer Sales,” because that would have fit both the first name and middle initial of the owner, or could also be used if his potential partner, Arie “Jr” came on board.  It further contends that following the suggestion that it secure any potential domain names that it may want to consider for the future and to coordinate it with any possible name change, Respondent took the liberty of registering the domain name <pjtrailers.com>.

 

In the year following the registration and after considering the change of business name, Respondent decided to stay with the business name O-C Trailers, Inc.  Although the Respondent continues to hold the domain name <pjtrailers.com>, it contends that it has never used this domain name in any form of advertising or promotions what-so-ever, nor does it include the domain name anywhere on its website.  The domain name that it primarily advertises and promotes to bring traffic to its business is <trailersforsale.com>. Even though, some of their official documents such as letterhead, etc., may include the domain name <octrailers.com>.  Respondent contends that its website is a stand alone website that does not offer any links to any other websites, nor any other related site where it may advertise or do business.

 

C. Additional Submissions

 

No additional submissions were given to the Panel during these proceedings.

 

FINDINGS

 

For the reasons hereafter explained, the Panel finds that Complainant, both through positive evidence and Respondent’s own admission, has discharged its burden of proof on each of the three elements; consequently, the Complaint is accepted.

 

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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

(2)   the 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.

 

Identical and/or Confusingly Similar

 

This question raises two issues: (1) does Complainant have rights in a trademark or a service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

 

Complainant asserts that <pjtrailers.com> is confusingly similar to its trade-mark PJ TRAILERS.  It further states that the brand PJ Trailers has been known for nearly 16 years throughout Canada and the U.S.A.

 

Respondent contends that the brand has not been used for sixteen years as PJ Trailers, but rather as PJ Manufacturing.  The name PJ Trailers has been in use by Complainant for a little less than six years.  Also, it further contends that the mark “pjtrailers” could stand for almost any kind of product since the letters “p” and “j” taken alone stand for nothing particular, and the word “trailer” can as well be understood either as a road vehicle or a series of short extracts from a movie.

 

The Panel notes that Complainant has not provided any evidence of registration of its PJ TRAILERS mark with any governmental authority.  However, the Panel finds that registration is not required to demonstrate rights under Policy ¶ 4(a)(i).  In the decision of Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001), the panel found that “[t]he Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”  Thus, despite the lack of registration, the Panel could still find that Complainant has common law rights in its trademark if a proof of secondary meaning associated with the mark is submitted to the Panel.  To this effect, the Panel in Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) decided that “[O]n account of long and substantial use of [the mark] in connection with its [business], it has acquired rights under the common law.”  On one hand, the Complainant asserts that it has used the PJ TRAILERS mark for as much as sixteen years, but did not submit any evidence supporting any secondary meaning of its mark.  The Panel cannot assume that the foundation of a company under a trade name necessarily carries evidence of secondary meaning of the mark associated with its products.  On the other hand, Respondent wrote in its response that: “At that time [of the registration] we were aware of the PJ Trailer brand of trailer, and were in fact selling some of their product line.”  Thus, with this admission being measured for what it states, the Panel is in order to find that prior to the registration of the domain name <pjtrailers.com> by Respondent, the brand PJ Trailers was already in use by Complainant.  Thus, the Panel finds that common law rights existed on behalf of Complainant in the mark PJ TRAILERS at the date of registration, especially because the “PJ” part of the name is what constitutes the distinctiveness of the mark, the rest being mainly descriptive.

 

The Panel must now decide whether or not the domain name <pjtrailers.com> is confusingly similar to the trademark of Complainant.  Because the domain name incorporates Complainant’s mark in its entirety and differs only by the addition of the top-level domain “.com” and the omission of a space, the Panel finds that these differences are not relevant to a determination of similarity under Policy ¶ 4(a)(i).  In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), the panel found that <pomellato.com> is identical to the complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant.  Also, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the Panel found that <hannoverre.com> was identical to the mark HANNOVER RE, as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.”

 

For these reasons, the Panel finds that Complainant has satisfied its burden of proof under Policy ¶ 4(a)(i) and that the domain name <pjtrailers.com> is confusingly similar to the trademark PJ TRAILERS.

 

Rights or Legitimate Interests

 

Complainant contends in this part that Respondent has enjoyed countless hits on their site because of the use of <pjtrailers.com>, following commentaries to this effect by some purchasers and consumers.  Complainant contends that the <pjtrailers.com> domain name resolves to Respondent’s business website that offers some of Complainant’s products and the products of its competitors.  Furthermore, Complainant asserts that Respondent displays photos of its products without permission and that these photos link to competitors’ products.

 

The Panel notes that on the account of section 4(a)(ii) of the Policy, all that Complainant has to prove is a prima facie case.  Once this has been done, the burden is on Respondent to prove its legitimate interest in the domain name.  For example, in Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel stated that:

 

[p]roving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question. 

 

The Panel considers the allegations submitted by Complainant as sufficient prima facie evidence of illegitimate interest in the domain name.

 

Thus, Respondent has to rely on any of the justifications enacted in ¶ 4(c) of the Policy to justify its interest in <pjtrailers.com>.  Respondent contends that it initially registered the <pjtrailers.com> domain name, because it was considering changing the name of its business to one based on family members.  It appears from the Response that Respondent is not using the disputed domain name to promote its own business; it admits that it does not “promote this domain name, period.”  Hence, following this admission from Respondent, the Panel finds that Respondent is not making use of the disputed domain name to promote its own business, further determining that this does not preclude a finding of rights or legitimate interests under Policy ¶ 4(b).

 

Following ¶ 4(c) of the Policy, it is possible for Respondent to dismiss Complainant’s proceedings if  it proves (i) that the use of the domain name in connection with a bona fide offering of goods or services (ii) that it has been commonly known by the domain name, even if it has no trademark or service mark rights (iii) that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Panel finds that Respondent’s use of Complainant’s PJ TRAILERS mark in the disputed domain name to operate its commercial website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  In MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000), the panel decided that the respondent had 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.  Also, in Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) the panel concluded to no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors. 

 

As to Policy section 4(c)(ii), the Panel cannot conclude that the Respondent has been commonly known by the domain name, since even the Respondent admits that: “We just plain do NOT advertise or promote this domain name, period.”  As well, in its response, the Respondent confessed that “the domain name that we primarily advertise and promote to bring traffic to our website is www.trailersforsale.com. Although, some of our official documents such as letterhead, etc.., may include the domain name “octrailers.com.” 

 

Thus, the Panel finds that Respondent has no rights or legitimate interest in respect of the domain name <pjtrailers.com>.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered the <pjtrailers.com> domain name specifically to take advantage of the reputation and quality of the PJ TRAILERS brand of products.  Complainant  further alleges that it has received calls from several customers stating that they arrived at Respondent’s website when they were searching for information regarding Complainant’s products.  Respondent contends that Complainant did not begin using the PJ TRAILERS mark until after Respondent had registered the <pjtrailers.com> domain name.

 

The Panel finds that Respondent’s use of Complainant’s PJ TRAILERS mark to divert Internet users to its website offering some of Complainant’s products alongside those of its competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  For example, in the Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) decision, the respondent’s use of <land-cruiser.com> to advertise its business, which sold goods in competition with the complainant was considered sufficient by the panel to establish bad faith as defined in Policy ¶ 4(b)(iv). 

 

Furthermore, Complainant alleges that Respondent obviously knew about its PJ TRAILERS mark, because Respondent has sold its products for more than six years.  In fact, Respondent has admitted that it knew about Complainant’s mark when it registered the <pjtrailers.com> domain name.  The Panel finds that Respondent’s knowledge of  Complainant’s rights in the mark at the time of the domain name registration and the subsequent use of the domain name to resolve to its own website is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  To this effect, see Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), where the panel found that “[t]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”

 

Accordingly, the Panel finds that Complainant has met its burden, both by positive evidence and the own admission of Respondent, that the latter has registered the domain name <pjtrailers.com> at a time when it knew about Complainant’s use of the PJ TRAILERS brand and without actually using it to promote its own business, giving convincing signs of bad faith registration and use pursuant to ¶ 4(a)(iii) of the Policy.

 

 

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 <pjtrailers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Jacques A. Léger, c.r., Panelist
Dated: March 22, 2006

National Arbitration Forum