True Value Company v. Jucco Holdings
Claim Number: FA0604000684382
Complainant is True Value Company (“Complainant”), represented by Kristine M. Boylan, of Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402-2215. Respondent is Jucco Holdings (“Respondent”), 655 Flower St. #337, Los Angeles, CA 90017.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <acetruevalue.com>, registered with Nameking.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 20, 2006.
On April 20, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <acetruevalue.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 April 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 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@acetruevalue.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 makes the following assertions:
1. Respondent’s <acetruevalue.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or legitimate interests in the <acetruevalue.com> domain name.
3. Respondent registered and used the <acetruevalue.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, True Value Company, operates more than six thousand retail hardware stores under the TRUE VALUE mark. Complainant has continuously used the TRUE VALUE mark in connection with its hardware stores, products and services since 1963.
Complainant also operates websites at the <truevalue.com>, <truevalueco.com>, <truevaluecorporation.com>, <truevaluestores.com> and <true-value.com> domain names.
Complainant owns several trademark registrations for the TRUE VALUE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,540,617 issued February 19, 2002; Reg. No. 1,165,207 issued August 18, 1981; Reg. No. 1,128,203 issued December 25, 1979). Complainant has also registered the TRUE VALUE mark in numerous countries around the world, including Canada, Norway and Russia.
Respondent registered the <acetruevalue.com> domain name on February 2, 2004. Respondent’s website at the disputed domain name features links to Complainant’s competitors in the retail hardware industry.
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.
Because Complainant has registered the TRUE VALUE mark with
the USPTO, Complainant has demonstrated its rights in the mark pursuant to
Policy ¶ 4(a)(i). See 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.”); see also 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.”).
Additionally, the <acetruevalue.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark because it contains Complainant’s entire mark and merely adds the term “ace,” which refers to the mark of one of Complainant’s competitors. In G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002), the panel found the respondent’s <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> was confusingly similar to the complainant’s CELEBREX mark because it incorporated the entire mark and merely added several of the marks of Complainant’s competitors. The panel stated, “The addition of other well-known drug brand names does not diminish the capacity of the disputed domain name to confuse Internet users, in fact, it actually adds to the potential to confuse.” Id. Therefore, the mere addition of the mark of one of Complainant’s competitors in the <acetruevalue.com> domain name renders the disputed domain name confusingly similar to Complainant’s TRUE VALUE mark under Policy ¶ 4(a)(i). See Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from the respondent’s addition of a generic word to the complainant’s mark in a domain name is less significant because the respondent and the complainant operate in the same industry).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden then shifts to Respondent to show it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). See
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 has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the
burden effectively shifts to Respondent. Respondent’s failure to respond means
that Respondent has not presented any circumstances that would promote its
rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <acetruevalue.com> domain name. See
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); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Because the WHOIS information lists the domain name
registrant as “Jucco Holdings c/o Admin Admin” and there is no other evidence
in the record suggesting that Respondent is commonly known by the disputed
domain name, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>); 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).
Furthermore, Respondent’s <acetruevalue.com> domain name, which is confusingly similar to Complainant’s TRUE VALUE mark, resolves to a web page containing links to Complainant’s competitors in the retail hardware industry. In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that Respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because Respondent was diverting Internet users to the website of one of the complainant’s competitors. Respondent is also diverting Internet users seeking Complainant’s services to the websites of Complainant’s competitors. Respondent likely receives click-through fees for diverting consumers to these websites. Therefore, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to manage a web
page displaying links to the websites of Complainant’s competitors. The Panel infers that Respondent receives
click-through fees for each consumer it diverts to these websites. Consequently, Respondent
is misdirecting Internet users seeking Complainant’s retail hardware services
under the TRUE VALUE mark to competing websites for its own commercial gain and
is taking advantage of the confusing similarity between the disputed
domain name and Complainant’s TRUE VALUE mark in order to profit from the
goodwill associated with the mark. Such
use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
the respondent profits from its diversionary use of the complainant's mark when
the domain name resolves to commercial websites and the respondent fails to
contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov.
30, 2000) (finding bad faith where the respondent's use of the domain name at
issue to resolve to a website where similar services are offered to Internet users
is likely to confuse the user into believing that the complainant is the source
of or is sponsoring the services offered at the site).
Because Respondent’s website at the disputed domain name
contains links to the websites of Complainant’s and its competitors, the Panel
finds that Respondent has registered and used the <acetruevalue.com> domain name for the primary purpose of
disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); 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 the complainant's marks suggests that the
respondent, the complainant’s competitor, registered the names primarily for
the purpose of disrupting the complainant's business).
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 <acetruevalue.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 1, 2006
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