The True Value Company v. Redline Computer, inc.
Claim Number: FA0612000858901
Complainant is The True Value Company (“Complainant”), represented by Kristine
M. Boylan, of Merchant & Gould P.C., 3200 IDS
Center,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <truevalueusa.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2006.
On December 4, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <truevalueusa.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting an initial deadline of January 2, 2007 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@truevalueusa.com by e-mail. Pursuant to Respondent’s request, the deadline to submit a response was extended to January 17, 2007.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <truevalueusa.com> domain name is confusingly similar to Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or legitimate interests in the <truevalueusa.com> domain name.
3. Respondent registered and used the <truevalueusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The True Value Company, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRUE VALUE mark (i.e. Reg. No. 2,540,617 registered on February 19, 2002 and Reg. No. 1,165,207 issued on August 18, 1981). Complainant has used the TRUE VALUE mark for the international manufacture and distribution of hardware goods in approximately 8,000 stores since 1963. Complainant has registered the domain name <truevalue.com>, which it uses in connection with the sale of its services and goods.
Respondent registered the <truevalueusa.com> domain name on February 24, 2004. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website offering goods and services in competition with Complainant’s good and services under the TRUE VALUE mark.
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 established rights in the TRUE VALUE mark through registration of the mark with the USPTO. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <truevalueusa.com> domain name is
confusingly similar to Complainant’s TRUE VALUE mark because Respondent’s
domain name uses Complainant’s mark in its entirety and merely adds to it the
geographical term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <truevalueusa.com> domain name. Complainant must make a prima facie case and then the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name here because Respondent has failed to respond to the Complaint. See 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to policy ¶ 4(c).
Complainant alleges that Respondent is using the <truevalueusa.com>
domain name to redirect Internet users to Respondent’s website offering
competing goods and services.
Respondent’s use of the domain name to sell competing goods is not a use
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see also Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding 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); see also Glaxo Group Ltd.
v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Additionally, Respondent has offered no evidence and no
evidence is present in the record suggesting that Respondent is commonly known
by the <truevalueusa.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Redline Computer, inc.” Therefore, Respondent has failed to establish
rights or legitimate interests in the <truevalueusa.com> domain
name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Am. Online, Inc. v.
World Photo Video & Imaging Corp.,
FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as
“Sunset Camera” and “World Photo Video & Imaging Corp.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <truevalueusa.com> domain name, which is confusingly similar to Complainant’s TRUE VALUE mark, in order to redirect Internet users to Respondent’s website offering similar goods and services. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is using the <truevalueusa.com>
domain name to redirect Internet users to Respondent’s website that offers
competing goods and services for the assumed profit of Respondent. The Panel finds that because Respondent’s
domain name is confusingly similar to Complaint’s TRUE VALUE mark, Internet
users may become confused as to Complainant’s affiliation with the
website. Presumably, Respondent is
profiting from this confusion from the sale of competing goods and/or
services. As such, Respondent’s use of
the <truevalueusa.com> domain name to offer competing goods and
services constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)).
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 <truevalueusa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 6, 2007
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