CHHJ Franchising LLC d/b/a College Hunks Hauling Junk v. Hunky Haulers Inc.
Claim Number: FA1204001437968
Complainant is CHHJ Franchising LLC d/b/a College Hunks Hauling Junk (“Complainant”), represented by Geoffrey C. Brethen of Musick, Peeler & Garrett, LLP, California, USA. Respondent is Hunky Haulers Inc. (“Respondent”), represented by Christina S. Loza of Loza & Loza, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hunkyhaulers.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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 5, 2012 and hard copy of the Complaint on the same date.
On April 4, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <hunkyhaulers.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on April 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 2, 2012.
On May 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has acquired trademark rights in the mark “College Hunks Hauling Junk” by use of the mark in connection with its junk hauling business since 2003, extensive marketing and promotional activities, size and revenues of its business and registration of the mark in 2006 and 2007. Complainant alleges that Respondent’s disputed domain name <hunkyhaulers.com> is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the mark and registered and used the disputed domain name in bad faith.
Respondent acknowledges Complainant’s rights in its mark but contends that the disputed domain name is not identical or confusingly similar. Respondent also contends that it has rights and legitimate interests in the disputed domain name and uses it in Canada, where its trash hauling business is located, that it has rights and legitimate interests in the domain name, is commonly known as Hunky Haulers, Inc., was not aware of Complainant when it registered the domain name in June 2011, uses the domain name in a bona fide offering of its services, and did not register and use the domain name in bad faith.
Complainant has used its “College Hunks Hauling Junk” domain name in commerce since 2003 and holds 2006 and 2007 trademark registrations. Complainant is a large trash hauling business that operates through 40 franchises in 30 states. Respondent registered its domain name in 2011 in Canada where it is headquartered and is commonly known by its Hunky Haulers, Inc. name in Canada, which is where it does business. Respondent’s domain name does not contain the words “college” and “junk,” and uses the word “hunky” rather than “hunk” and “haulers” rather than “hauling.” Respondent uses the domain name in providing trash hauling services in Canada. No evidence exists that Respondent knew of Complainant or Complainant’s mark at the time it registered the disputed domain name, and no evidence exists that Respondent has used its domain name and website for any purpose other than the bona fide provision of its services in the area it serves in Canada.
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."
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.
Respondent’s domain name is not confusingly similar to Complainant’s mark. It omits two of the four words that are in Complainant’s mark. The inclusion in Complainant’s mark of the word “college” is plainly distinctive and is not included in Respondent’s domain name. Junk is hauled in both businesses, but Complainant’s rights in its mark cannot reasonably preclude even a competitor from characterizing itself as a junk hauler. Consumers are aware of that phenomenon. The words “junk” and “hauler” are generic. If consumers search for Complainant, they will be aware of the clear distinction between Complainant’s mark and Respondent’s domain name. See Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum Feb. 11, 2003). The disputed domain name is not confusingly similar to Complainant’s mark within the meaning of Policy ¶4(a)(i).
Complainant thus has not met its burden to prove one of the elements necessary to prevail on its complaint. It is thus unnecessary for the panel to address the other two elements.
Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hunkyhaulers.com> domain name will REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: May 18, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page