The True Value Company v.
Steven Loosle
Claim Number: FA0702000915373
PARTIES
Complainant is The True Value Company (“Complainant”), represented by Kristin
M. Boylan, of Merchant & Gould P.C., 3200 IDS
Center,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truvalue.com> (“the domain
name at issue”), and Network Solutions, Inc. is its registrar (“the Registrar”).
PANEL
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.
Rodney C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on 12 February 2007; the
National Arbitration Forum received a hard copy of the Complaint on 13 February 2007.
On 13 February 2007, the Registrar confirmed by e-mail to the National
Arbitration Forum that the domain name at issue is registered with the Registrar and that Respondent is the
current registrant of the domain name at issue. The
Registrar 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 13 February 2007, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of 5 March 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@truvalue.com by e-mail.
A timely Response was received and determined to be complete on 5 March 2007.
On 12 March 2007, a timely Additional Submission was received from
Complainant.
On 12 March 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Rodney C. Kyle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Basically, in the Complaint, Complainant makes three main sets of contentions.
FIRST MAIN SET
In the first main set of contentions, Complainant basically makes contentions by way of three points or sets of points:
(i) the domain name at issue is registered to Respondent;
(ii) Complainant owns, and therefore has rights in, various trademarks (“the Complainant Trademarks”) and more particularly, the Complainant Trademarks include
(a) registered
trademarks, such as
(b) trademarks,
such as
and Complaint Exhibit A is a list of the global registrations of the TRUE VALUE Trademarks and contains copies of the TRUE VALUE Trademarks registration certificates; and
(iii) the domain name at issue is confusingly similar to the Complainant Trademarks, in that the domain name at issue is nearly identical to the TRUE VALUE Trademarks and strikingly similar to the TRU Trademarks.
SECOND MAIN SET
In the second main set of contentions, Complainant basically contends Respondent has no right or legitimate interest in respect of the domain name at issue. More particularly, Complainant contends by two points or sets of points, the first on the one hand and the second on the other hand:
(i) on the one hand, Complainant is an international manufacturer and wholesale distributor for a cooperative of approximately 8,000 retail stores (including hardware stores, most of which operate under the Complainant Trademarks service marks), and Complaint Exhibit B is a copy of a domain name dispute resolution policy decision to that effect; and
(ii) on the other hand,
(a) Respondent has neither an authorized connection to Complainant or those stores nor any past or present employment or independent contractor relationship to Complainant,
(b) Respondent was never a member of the cooperative and never an authorized vendor,
(c) at all relevant times the domain name at issue was associated with a member store under the terms of a lease of the domain name at issue,
(d) Respondent has never used the domain name at issue, and
(e) Respondent has not conducted any business activity to result in Respondent having a right or legitimate interest in respect of the domain name at issue.
THIRD MAIN SET
In the third main set of contentions, as a general matter, Complainant basically contends that Respondent’s registration of the domain name at issue was in bad faith and that Respondent’s use of the domain name at issue is in bad faith. More particularly, Complainant contends by eight points or sets of points:
(i) Complainant first adopted TRUE VALUE as a service mark in 1963;
(ii)
Respondent registered the domain name at issue in the
name of the member store in 1998 (and with himself as the administrative
contact) and then immediately leased the domain name at issue to that member
store, which was in
(iii)
various of the TRUE VALUE Trademarks had achieved either
or both of fame and
(iv) Complainant owns and uses various domain name registrations which have TRUE VALUE as a root such as <truevalue.com> (and Complaint Exhibits B and C respectively are a copy of a domain name dispute resolution policy decision basically to that effect and a list of such domain name registrations);
(v) Respondent therefore had actual and constructive notice of the TRUE VALUE Trademarks prior to that registration of the domain name at issue;
(vi) in 2003 Respondent became the registrant of the domain name at issue when it came up for renewal;
(vii) in 2006 the domain name at issue was offered for sale on a hardware store owner’s blog and Respondent subsequently sought payment from Complainant for the domain name at issue; and
(viii)
Respondent’s registration of the domain name at issue
was contrary to Policy ¶ 4(b)(ii) in view of the
B. Respondent
Basically, in the Response, Respondent makes three main sets of contentions.
FIRST MAIN SET
In the first main set of contentions, Respondent
(i) disputes neither “(i)” nor “(ii)” of the Complaint’s first main set of contentions;
(ii) does not dispute the aspect of “(iii)” of the Complainant’s first main set of contentions, that the domain name at issue is strikingly similar (and therefore confusingly similar) to the TRU Trademarks;
(iii) disputes the aspect of “(iii)” of the Complainant’s first main set of contentions, that the domain name at issue is confusingly similar to the TRUE VALUE Trademarks, and more particularly disputes the contention that (by the domain name at issue being nearly identical to the TRUE VALUE Trademarks) the domain name at issue is confusingly similar to the TRUE VALUE Trademarks;
(iv) contends in support of point “(iii)” of this list, that the domain name at issue consists of eight letters whereas each of the TRUE VALUE Trademarks consists of ten letters (including the space), such that the difference amounts to a 25% increase in the number of letters; and
(v) contends that the expression “TruValue” is not a trademark owned by Complainant and that it is an expression used by third parties— Respondent contends that an example of such use is as a private label brand of canned vegetables by a third party unaffiliated with Complainant.
SECOND MAIN SET
In the second main set of contentions, Respondent
(i) does not dispute any of “(i),” “(ii)(a),” “(ii)(b),” or “(ii)(c)” of the Complainant’s second main set of contentions;
(ii) contends more particularly regarding “(ii)(c)” of the Complainant’s second main set of contentions, that
(a) the member store to which Respondent leased the domain name at issue was a
GDL Hardware Inc. store,
(b) GDL Hardware Inc.’s store was a member store of Complainant from 1980 to
2006, and
(c) GDL Hardware Inc. had legitimate business purposes for using the disputed
domain name as a marketing tool and made such use of it from 1998 to the
present;
(iii) disputes “(ii)(d)” of the Complainant’s second main set of contentions;
(iv) contends in support of point “(iii)” of this list, that Respondent and Respondent’s spouse ran their personal child-care business from their home since 1994 and used the domain name at issue as a marketing and communication tool for that business from 1998 to the present;
(v) disputes “(ii)(e)” of the Complainant’s second main set of contentions; and
(vi) contends in support of point “(v)” of this list, that
(a) Respondent has 15 years experience running a hardware store,
(b) both Respondent and GDL Hardware Inc. have discussed opening hardware
stores at some future date, and
(c) “(vi)(a)” and “(vi)(b)” of this list are an example of legitimate business
purposes for continued use of the domain name at issue and therefore result in
legitimate interests in respect of the domain name at issue.
THIRD MAIN SET
In the third main set of contentions, Respondent
(i) does not dispute any of “(i)” to “(vii)” of the Complainant’s third main set of contentions;
(ii) can reasonably be construed as disputing “(viii)” of the Complainant’s third main set of contentions;
(iii) basically disputes the two general contentions of the Complainant’s third main set of contentions (i.e. that Respondent’s registration of the domain name at issue was in bad faith and that Respondent’s use of the domain name at issue is in bad faith); and
(iv) contends, apparently in support of point “(iii)” of this list, that
(a) Respondent chose the domain name at issue because of its difference, and uniqueness, as compared to Complainant’s then existing trademarks,
(b) at the time of registering the domain name at issue, Respondent was employed by GDL Hardware Inc.,
(c) from 1998 to the present, all email communications between Complainant and Respondent used email addresses using the domain name at issue, so Complainant had full knowledge of Respondent’s registration and use of the domain name at issue,
(d) from 2000 to 2003, Complainant and GDL Hardware Inc. had an agreement that Complainant would pay GDL Hardware Inc. for sales from Complainant’s website referred to by the website that resolved through the domain name at issue,
(e) in 2006, a GDL Hardware Inc. employee’s online posting of the domain name at issue being for sale was by mistake, was to only a select few hardware store owners, and was retracted once that employee realized that GDL Hardware Inc. was not the registrant of the domain name at issue,
(f) Respondent has never offered the domain name at issue for sale to any of Complainant’s competitors,
(g) on 8 November 2006, Complainant emailed Respondent, requesting transfer of the domain name at issue from Respondent to Complainant, and the request not only was for transfer without just compensation but also implied that Respondent could transfer the domain name at issue to persons inside Complainant’s cooperative— and Response Exhibit A is a copy of that email, and
(h) Respondent has never sought payment from Complainant for the domain name at issue, and instead, by an email on 14 December 2006, by asking Complainant to forward Complainant’s offer to Respondent, Respondent acted on Respondent’s impression that Complainant desired to obtain the domain name at issue (but Complainant did not reply to that email so Respondent assumed Complainant no longer desired the domain name at issue)— and Response Exhibit B is a copy of that email.
C. Additional Submissions
The National Arbitration Forum’s Supplemental Rule 7(b)(iii) requires that additional submissions “include proof of service of these submissions upon the opposing party.” The Additional Submission does not include such proof. The Panel did not otherwise consider the Additional Submission.
FINDINGS
The Panel finds that
(i) the domain name at issue is registered to Respondent and is confusingly similar to one or more of the Complainant Trademarks;
(ii) Respondent has no right or legitimate interest in respect of the domain name at issue; and
(iii) the domain name at issue has been registered and is being used in bad faith.
DISCUSSION
Introduction
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs the Panel to “decide a
complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Policy ¶ 4(a) requires that a complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(i) the
domain name is registered to the respondent and is identical or confusingly
similar to a trademark or service mark in which the complainant has rights;
(ii) the
respondent has no rights or legitimate interests in respect of the domain name;
and
(iii) the
domain name has been registered and is being used in bad faith.
In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that:
Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. “real evidence”); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]
Second, especially as to mode “3”, that Rule 10(d) provides that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Third, as to construing and applying Rule 10(d), especially as to whether mode “1” rather than mode “3” applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not “put in issue”) by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being “relevant to”) establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode “2” rather than either of mode “1” or mode “3” applies, a canvassing of law and commentary shows that
It was not desirable, nor indeed possible, to foreclose the trier’s use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]
and that “The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question.”[5]
The domain name at issue is registered by Respondent and is confusingly similar to one or more of the Complainant Trademarks.
The TRU Trademarks
Regarding the TRU Trademarks, the domain name at issue is registered to Respondent, Complainant owns (and therefore has rights in) the Complainant Trademarks (which include the TRU Trademarks), and the domain name at issue is strikingly similar (and therefore confusingly similar) to the TRU Trademarks. That is so, in view of two main sets of facts.
First, the domain name at issue is registered to Respondent, and Complainant owns (and therefore has rights in) the Complainant Trademarks: those facts respectively correspond to contentions “(i)” and “(ii)”of the Complainant’s first main set of contentions, and Respondent’s disputing neither one of those two contentions, amounts to Respondent admitting those two contentions and they are therefore proven.
Second, the domain name at issue is strikingly similar (and therefore confusingly similar) to the TRU Trademarks: that fact corresponds to that aspect of contention “(iii)” of the Complainant’s first main set of contentions, and Respondent’s not disputing that aspect of that contention, amounts to Respondent admitting that contention and it is therefore proven.
The TRUE VALUE Trademarks
Regarding the TRUE VALUE Trademarks, the domain name at issue is registered to Respondent, Complainant owns (and therefore has rights in) the Complainant Trademarks (which include the TRUE VALUE Trademarks), and the domain name at issue is nearly identical (and therefore confusingly similar) to the TRUE VALUE Trademarks. That is so, in view of two main sets of facts.
First, the domain name at issue is registered to Respondent, and Complainant owns (and therefore has rights in) the Complainant Trademarks: those facts respectively correspond to contentions “(i)” and “(ii)”of the Complainant’s first main set of contentions, and Respondent’s disputing neither one of those two contentions, amounts to Respondent admitting those two contentions and they are therefore proven, so, to the extent that Complaint Exhibit A is proffered as evidence of contention “(ii),” Complaint Exhibit A is immaterial and is therefore inadmissible.
Second, the domain name at issue is nearly identical (and therefore confusingly similar) to the TRUE VALUE Trademarks: that fact corresponds to the fact that although contentions “(iii),” “(iv),” and “(v)” of the Response’s first main set of contentions basically put in issue that aspect of contention “(iii)” of the Complainant’s first main set of contentions, Complainant prevails on the issue.
As for Respondent’s contentions “(iii)” and “(iv),” although the domain name at issue does indeed consist of eight letters whereas each of the TRUE VALUE Trademarks consists of ten letters (including the space), and although that difference does indeed amount to there being 25% more characters in the TRUE VALUE Trademarks as compared to the domain name at issue, the domain name at issue is still confusingly similar to the TRUE VALUE Trademarks. More specifically, rather than the test for confusing similarity under Policy ¶ 4(a)(i) being a percentage difference between the length of character strings, the test is the following: as viewed in its entirety (as to look, sound, and meaning), is the domain name <truvalue.com> confusingly similar to any one of the TRUE VALUE Trademarks as viewed in its entirety (as to look, sound, and meaning)?[6] Applying that test, the domain name at issue is confusingly simlar to any one of the TRUE VALUE Trademarks, despite the domain name at issue’s omissions of the first occurrence of the letter “e”[7] and the space immediately before the letter “v.”[8]
As for the aspect of Respondent’s contention “(v),” that the expression “TruValue” is not a trademark owned by Complainant, the contention is non-responsive to the Complaint since the Complaint did not include that Complainant owns a trademark of that expression.
Lastly, as for the aspect of Respondent’s contention “(v),” that the expression “TruValue” is used by third parties (such as by being used as a private label brand of canned vegetables by a third party unaffiliated with Complainant), that aspect of the contention is irrelevant because Policy ¶ 4(a)(i) does not require that an expression not be used by third parties, and in any event the contention is neither evidenced nor proven.
Respondent has no rights or legitimate interests in respect of the domain name at issue.
That is so, in view of three main sets of facts.
First,
(i) Complainant is an international manufacturer and wholesale distributor for a cooperative of approximately 8,000 retail stores (including hardware stores, most of which operate under the Complainant Trademarks service marks); and
(ii) (a) Respondent has neither an authorized connection to Complainant or those
stores nor any past or present employment or independent contractor
relationship to Complainant,
(b) Respondent was never a member of the cooperative and never an authorized
vendor, and
(c) at all relevant times the domain name at issue was associated with a member
store under the terms of a lease of the domain name at issue.
Those facts respectively correspond to contentions “(i),” “(ii)(a),” “(ii)(b),” and “(ii)(c)” of the Complainant’s first main set of contentions, and Respondent’s disputing none of those four contentions, amounts to Respondent admitting those four contentions and they are therefore proven, so, to the extent that Complaint Exhibit B is proffered as evidence of contention “(i),” Complaint Exhibit B is immaterial and is therefore inadmissible.
Second, Policy ¶ 4(a)(ii) administrative panel decisions regarding burden of production are pertinent. Complainant’s second main set of contentions amounts to a pleading of Policy ¶ 4(a)(ii) and, in view of that second main set of contentions and the immediately preceding paragraph thereof, Complainant has made a prima facie showing that the domain name at issue is within Policy ¶ 4(a)(ii). When, as in this case, “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.”[9]
Third, Respondent has not met that burden since neither the preamble of Policy ¶ 4(c) nor any of the circumstances listed in the body of Policy ¶ 4(c) is satisfied. There are Respondent’s three contentions relating to Complaint contention “(ii)(c)” (i.e. Respondent’s three contentions that the member store to which Respondent leased the domain name at issue was a GDL Hardware Inc. store, that GDL Hardware Inc.’s store was a member store of Complainant from 1980 to 2006, and that GDL Hardware Inc. had legitimate business purposes for using the domain name at issue as a marketing tool and made such use of it from 1998 to the present), but none of them is either evidenced or proven.
Likewise as to not meeting that burden, contention “(iii)” of the Response’s second main set of contentions disputes contention “(ii)(d)” of the Complaint’s second main set of contentions (i.e. disputes that Respondent has never used the domain name at issue), and contention “(iv)” of the Response’s second main set of contentions is that instead Respondent and Respondent’s spouse ran their personal child-care business from their home since 1994 and used the domain name at issue as a marketing and communication tool for that business from 1998 to the present. However, no aspect of that contention “(iv)” is either evidenced or proven.
Similarly as to not meeting that burden, contention “(v)” of the Response’s second main set of contentions disputes contention “(ii)(e)” of the Complaint’s second main set of contentions (i.e. disputes that Respondent has not conducted any business activity to result in Respondent having a right or legitimate interest in respect of the domain name at issue), and contention “(vi)” of the Response’s second main set of contentions is that instead
(a) Respondent has 15 years experience running a hardware store,
(b) both Respondent and GDL Hardware Inc. have discussed opening hardware
stores at some future date, and
(c) “(a)” and “(b)” of this list are an example of legitimate business purposes for
continued use of the domain name at issue and therefore result in legitimate
interests in respect of the domain name at issue.
However, none of the points “(a)” to “(c)” of that contention “(vi)” is either evidenced or proven.
The domain name at issue has been registered and is being used in bad faith. That is so, in view of six main sets of facts.
First, Policy ¶ 4(b) is pertinent. It is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that:
For the purposes of Policy ¶ 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
On the one hand, Policy ¶¶ 4(b)(i), 4(b)(ii), and 4(b)(iii) basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced through applying the respective one of those three provisions. On the other hand, Policy ¶ 4(b)(iv) basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then bad-faith registration is in turn evidenced through applying that provision.
Second, Policy ¶¶ 4(b)(i) and 4(b)(ii), but not 4(b)(iii) or 4(b)(iv), have apparently been contended for by Complainant in this proceeding, and facts pertaining to those contentions include the following:
(i) Complainant first adopted TRUE VALUE as a service mark in 1963;
(ii)
Respondent registered the domain name at issue in the
name of the member store in 1998 (and with himself as the administrative
contact) and then immediately leased the domain name at issue to that member
store, which was in
(iii)
various of the TRUE VALUE Trademarks had achieved
either or both of fame and
(iv) Complainant owns and uses various domain name registrations which have TRUE VALUE as a root such as <truevalue.com>;
(v) Respondent therefore had actual and constructive notice of the TRUE VALUE Trademarks prior to that registration of the domain name at issue;
(vi) in 2003 Respondent became the registrant of the domain name at issue when it came up for renewal; and
(vii) in 2006 the domain name at issue was offered for sale on a hardware store owner’s blog and Respondent subsequently sought payment from Complainant for the domain name at issue.
Those facts respectively correspond to contentions “(i)” to “(vii)”of the Complainant’s third main set of contentions, and Respondent’s disputing none of those seven contentions, amounts to Respondent admitting those seven contentions and they are therefore proven, so, to the extent that Complaint Exhibits B and C are proffered as evidence of contention “(iv),” Complaint Exhibits B and C are immaterial and are therefore inadmissible.
Third, Respondent’s disputing the two general contentions of the Complainant’s third main set of contentions (i.e. that Respondent’s registration of the domain name at issue was in bad faith and that Respondent’s use of the domain name at issue is in bad faith), puts those two general Complaint contentions in issue.
However, none of the points “(a)” to “(f)” of Respondent’s contention “(iv)” (in support of contention “(iii)” of Respondent’s third main set of contentions) is either evidenced or proven.
In contrast, regarding point “(g)” of contention “(iv)” in support of Respondent’s contention “(iii),” Response Exhibit A is material and relevant to resolving the issue since it apparently is a copy of an 8 November 2006 email from Complainant to Respondent, requesting transfer of the domain name at issue from Respondent to Complainant. However, that email neither expresses nor implies that the request for transfer to Complainant was for transfer without just compensation or that Respondent could transfer the domain name at issue to persons inside Complainant’s cooperative. Instead, Response Exhibit A does not express or imply what if any consideration would relate to that transfer (except perhaps as to a cooperative member’s membership in the cooperative), and it implies that a cooperative member’s receipt of a domain name such as the domain name at issue would be contrary to cooperative membership; consistently with all of that, Response Exhibit A also expresses that Respondent’s selling the domain name at issue to any person outside the cooperative would be contrary to trademark law and that a cooperative member’s registration of a domain name such as the domain name at issue is contrary to cooperative membership.
Similarly, regarding point “(h)” of contention “(iv)” in support of Respondent’s contention “(iii),” Response Exhibit B is material and relevant to resolving the issue since it apparently is a copy of an email string: a 14 December 2006 email from Respondent to Complainant, preceded by an email earlier that day from Complainant to Respondent, and preceded by the email that is Response Exhibit A. However, that email string neither expresses nor implies that Respondent has never sought payment from Complainant for the domain name at issue or that Complainant did not reply to that email and no longer desired the domain name at issue. Instead, Exhibit B proves that Respondent expressly asked Complainant to forward Complainant’s offer of sale of the domain name at issue to Respondent and, since Complainant commenced this proceeding shortly after the most recent part of the email string, it also proves that Complainant continued to desire the domain name at issue.
Fourth, Policy ¶ 4(b)(ii) does not avail Complainant. Respondent’s reasonably being construed as disputing contention “(viii)” of the Complainant’s third main set of contentions (i.e. that Respondent’s registration of the domain name at issue was contrary to Policy ¶ 4(b)(ii) in view of the U.S. federal registration of various of the TRUE VALUE Trademarks), puts that Complaint contention in issue. Apparently the only way to read the Complainant’s Policy ¶ 4(b)(ii) contention is that the pattern required by Policy ¶ 4(b)(ii) is not from multiple domain name registrations in relation to one or more trademarks but is instead from a single domain name registration in relation to multiple trademarks. A contention along the lines of what seems to be that Complaint contention, has apparently not been made in other cases under the Policy, or in any event, has apparently not been accepted by panels under the Policy or commentators. Instead, the wording of Policy ¶ 4(b)(ii) seems to indicate that the pattern required by Policy ¶ 4(b)(ii) is a pattern resulting from a respondent’s multiple domain name registrations rather than a pattern resulting from a respondent’s single domain name registration. The sort of pattern required by Policy ¶ 4(b)(ii) is not indicated in this proceeding.
Fifth, however, Policy ¶ 4(b)(i) does avail Complainant. Specifically, this proceeding indicates bad-faith registration circumstances that are characterized by Policy ¶ 4(b)(i) as evidencing bad-faith use of the domain name at issue. More specifically, this proceeding indicates that there are circumstances that Respondent registered or acquired the domain name at issue primarily for the purpose of renting the domain name at issue to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name at issue. Still more specifically:
(i) the primary purpose for Respondent’s 1998 registration or 2003 acquisition of the domain name at issue was apparently to lease (i.e. rent) it to the member store, since, immediately upon registering the domain name at issue, Respondent rented it to the member store and apparently continued to do so upon renewal of the domain name at issue in 2003;
(ii) the member store was a competitor of Complainant, since the relationship between Respondent and each of the member stores of the cooperative can reasonably be inferred as having an element of competition between Complainant and the respective member store— that is particularly so, in view of the facts that Respondent had actual and constructive notice of the TRUE VALUE Trademarks prior to the registration of the domain name at issue and that Response Exhibit A shows conflict between, on the one hand, receipt or registration of a domain name such as the domain name at issue and, on the other hand, cooperative membership; and
(iii) the rental of the domain name at issue was apparently for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name at issue, since there was a substantial geographic and temporal separation (indicated by Google Maps to be approximately 1,460 miles or about 22 1/2 hours by road) between Respondent in Austin, Texas, and the member store in West Valley City, Utah, and the only Respondent contention on the point is not evidenced and is that at the time of Respondent’s initial registration of the domain name at issue, Respondent was employed by a corporation which Respondent contends owned the member store.
Sixth, moreover, the preamble of Policy ¶ 4(b) also avails Complainant, in that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”[10] and “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”[11] Specifically, in view of the facts the Panel has found, and especially in view of the first through fifth main sets of facts under this heading of “Registration and Use in Bad Faith,” the Panel finds bad-faith registration of the domain name at issue and bad-faith use of the domain name at issue.
DECISION
Having established all three elements required under the Policy, the
Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <truvalue.com> domain name be TRANSFERRED
from Respondent to Complainant.
Rodney C. Kyle, B.Sc., LL.B., C.Arb.; Panelist
Dated: 26 March 2007
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[1] W.N. Hohfeld, “Some
Fundamental Legal Conceptions as Applied in Judicial Reasoning,” 23 Yale L.
J., 16, at 27, footnote 23 (emphasis in original).
[2] See, e.g., Rules 5(b)(i), 5(b)(ix), and 14(b): Rule 5(b)(i) includes that “The
response shall … [r]espond specifically to the statements and allegations
contained in the complaint and include any and all bases for the Respondent
(domain-name holder) to retain registration and use of the domain name at issue;”
Rule 5(b)(ix) includes that “The response shall … [a]nnex any documentary or
other evidence upon which the Respondent relies;” and Rule 14(b) includes that
“If a Party, in the absence of exceptional circumstances, does not comply with
any provision of, or requirement under, these Rules … the Panel shall draw such
inferences therefrom as it considers appropriate.” Rule 5(b)(i) and Rule 5(b)(ix) are each
clearly a “provision of, or requirement under, these Rules” within the meaning
of that expression as it appears in Rule 14(b).
[3] Compare Hohfeld¸ supra note
1 (mode “1”) with Ronald Joseph Delisle, Evidence Principles and
Problems, (1st ed. 1984) at 5:
The concept of relevancy is simply dictated by our
own present insistence on a rational method of fact-finding. However, not only must the evidence tendered
be rationally probative of the fact sought to be established; the fact sought
to be established must concern a matter in issue between the parties, i.e. it
must be material. …The law of evidence then principally consists of the study
of canons of exclusion, rules regarding admissibility, which deny receipt into
evidence of information [that] is rationally probative of a matter in issue
between the parties.
Therefore,
evidence that is immaterial, or is material but irrelevant, is inadmissible,
and even evidence that is material and relevant may still be inadmissible in
view of further inadmissibility rules of evidence law.
[4] Delisle, supra note
3, at 94.
[5] Delisle, supra note
3, at 91.
[6] See, e.g., Net2Phone, Inc. v.
Dynasty System Sdn. Bhd, D2000-0679 (WIPO
Sept. 21, 2000).
[7] See, e.g., Pfizer Inc. v. BargainName.com, D2005-0299
(WIPO Apr. 28, 2005) (finding that the <pfzer.com> domain name is
confusingly similar to the complainant’s PFIZER mark, as that domain name
simply omits the letter “i”); Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum Jun. 19, 2006) (finding that
the <myspce.com> domain name is confusingly similar to the complainant’s
MYSPACE mark, as the slight difference in spelling did not reduce the confusing
similarity).
[8] See, e.g., Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark);
Croatia Airlines v. Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com>
is identical to that complainant’s CROATIA AIRLINES mark).
[9] Do The
Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000). To similar effect,
see, e.g., Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002); Twentieth Century Fox Film Corp. v. Benstein,
FA 102962 (Nat. Arb. Forum Feb. 27, 2002).
[10] Digi Int’l v. DDI
Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24,
2002).
[11] Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. Feb. 11, 2002).