True & Co. v. Web Parking Inc
Claim Number: FA1604 001668370
Complainant is True & Co. (“Complainant”), represented by Kristin Garris of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Web Parking Inc (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trueandco.us>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2016; the Forum received payment on April 6, 2016.
On April 7, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <trueandco.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2016 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 postmaster@trueandco.us. Also on April 7, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant has rights in the TRUE TRUE & CO mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,669,407, filed on January 31, 2012, registered on January 13, 2015). Respondent’s <trueandco.us> domain name is confusingly similar to the TRUE TRUE & CO mark because it contains the mark, less the spaces and on instance of the word “true,” while merely replacing the ampersand with the word “and” and adding the country-code top-level domain (“ccTLD”) “.us.”
Respondent is not commonly known by the <trueandco.us> domain name because it is not authorized to use the TRUE TRUE & CO mark and because WHOIS information identifies “Web Parking Inc” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used as a linking portal for click-through links.
Respondent uses the <trueandco.us> domain name in bad faith because it offers the domain for sale and because the resolving website is used as a linking portal for click-through links. Respondent registered the <trueandco.us> domain name in opportunistic bad faith because it did so in order to capitalize on Complainant’s launch of the TRUE TRUE & CO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <trueandco.us> domain name was created on May 30, 2012.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered and subsisting trademark. The Complainant has made an adequate showing of its asserted trademark rights.
Respondent’s <trueandco.us> domain name is confusingly similar to the TRUE TRUE & CO mark because it contains the mark, while merely replacing the ampersand with the word “and” and adding the ccTLD “.us.” The disputed domain name only contains one instance of the word “true” and lacks the spaces between the words of the mark. The Panel concludes that the <trueandco.us> domain name is confusingly similar to the TRUE TRUE & CO mark pursuant to Policy ¶ 4(a)(i). That is, the minor distinctions Respondent has made in the disputed domain name do not distinguish it from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. There is no evidence in the record that indicates Respondent is the owner of a competing trademark registration.
Respondent is not apparently known by the <trueandco.us> domain name because it is not authorized to use the TRUE TRUE & CO mark and because WHOIS information identifies “Web Parking Inc” as Registrant. Respondent is not commonly known by the <trueandco.us> domain name according to Policy ¶ 4(c)(iii).
Respondent apparently fails to use the <trueandco.us> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used as a linking portal for click-through links. Complainant has provided screenshots of the resolving webpage in Exhibit J, displaying links such as “Guitars,” “Word Games,” and “Berkshire Guitars.” This evidence suggests that Respondent hosts these links to receive click-through fees and, therefore, fails to use the <trueandco.us> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use as specified by Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently uses the <trueandco.us> domain name in bad faith because it offers the domain for sale. Complainant has provided WHOIS information in Exhibit A, including the language “The owner of the domain you are researching has it listed for sale at $250.” Complainant claims that this is an offer for sale in excess of Respondent’s out-of-pocket registration costs. As this is likely technically true and there is no evidence in the record to rebut this claim, the Panel finds that Respondent registered and uses the domain name in bad faith according to Policy ¶ 4(b)(i).
Further, Respondent apparently uses the <trueandco.us> domain name in bad faith because the resolving website is used as a linking portal for click-through links. Complainant has provided screenshots of the resolving webpage in Exhibit J, displaying links such as “Guitars,” “Word Games,” and “Berkshire Guitars.” These screen shots suggest that Respondent hosts these links to receive click-through fees. Therefore, it appears that Respondent uses the <trueandco.us> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that Respondent registered the <trueandco.us> domain name in opportunistic bad faith because it did so in order to capitalize on Complainant’s launch of the TRUE TRUE & CO mark. Complainant notes Respondent registered the <trueandco.us> domain name on May 30, 2012. Complainant suggests that this is the same day in which Complainant’s use of the mark was launched and publicized. Complainant offers evidence of this publication in Exhibit F. This evidence seems to show that Respondent targeted Complainant based on publicity of its mark. As such, the Panel find that Respondent’s registration of the <trueandco.us> domain name constitutes opportunistic bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Therefore, the Panel finds that the Respondent has engaged in bad faith use or registration of the disputed domain name.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trueandco.us> domain name TRANSFERRED from the RESPONDENT to the COMPLAINANT.
Kenneth L. Port, Panelist
Dated: May 1, 2016
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