TruckMaster Logistics Systems v. Avid Amiri
Claim Number: FA0903001250273
PARTIES
Complainant is TruckMaster
Logistics Systems (“Complainant”), represented by Steven L.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truckmaster.com>,
registered with Network Solutions, Inc.
PANEL
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.
David Safran, Darryl C.Wilson, Beatrice Onica Jarka as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 2, 2009; the National Arbitration Forum received a hard
copy of the Complaint on March 3, 2009.
On March 3, 2009, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <truckmaster.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name.
Network Solutions, Inc. 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 March 5, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 25, 2009 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@truckmaster.com by e-mail.
A timely Response was received and determined to be complete on March
25, 2009.
The Complainant submitted a timely Additional Submission on March 30,
2009.
The Respondent submitted a timely Response to the Additional Submission
submitted by the Complainant.
In addition, both the Complainant and the Respondent have submitted
further points of view (on April 7, 2009 the Complainant and on April 10, 2009
the Respondent) which were transmitted to the Panel. The Panel notes that the further points of
view transmitted by the Complainant and the Respondent are not according to
Supplemental Rule 7(e), but the Panel decided to review them.
On April 3, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David Safran, Darryl C. Wilson, Beatrice Onica Jarka as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
Respondent is requesting a finding of reverse domain name hijacking.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends:
B. Respondent
In its Response the Respondent alleges that:
§
The Complainant does not have a registered trademark in the name “TruckMaster”.
§
The Complainant has not offered any evidence to support a finding
of a common law mark.
§
“TruckMaster” is a
descriptive term and, therefore, is only protected if it has acquired
“secondary meaning,” and
the Complainant has not provided any evidence that the public at large has come
to associate the mark with Complainant’s goods and services.
§
The Respondent and the Complainant do not even sell similar products and/or services, as the core
business of the Respondent is the sale of truck and auto accessories which
differs from the Complainant’s offer of services and products, described as
“downloadable computer software for use with dispatch and tracking freight
trucks” and “brokerage of transportation services.”
§
The Respondent’s use of the disputed domain name is in connection
with a bona fide offering of goods or
services.
§
The Respondent and his associates run a successful Internet
business of dealing in and developing domain names, particularly generic domain
names (i.e., domain names containing common words or phrases and descriptive
terms) and optimizing the domain names for the search engines.
§
The Respondent sells over 25,000 products on its website under the disputed domain name, as a
distributor for several large, nationally-renowned manufacturers.
§
The prior correspondence between the Complainant and the
Respondent shows that both parties believed Respondent had rights or a legitimate business interest in the domain name.
§
The Respondent has not registered and is not using the disputed
domain name in bad faith.
§
The Complainant has engaged in reverse domain name hijacking.
C. Additional Submissions
By additional submission, the Complainant
further contends that:
§
It has
established common-law rights in the mark TruckMaster
in commerce and though the disputed domain, as it has made gross revenues of
$7.9 million in 2006, and $10.4 million in 2007 and $9.6 million in 2008, and
it has spent $67,000 on advertising the Disputed Domain from 2000 to 2002
alone,
§
There is
likelihood of confusion between the disputed domain name and the Truckmaster trademark in which the
Complainant asserts common law trademark.
§
The
Respondent is intentionally misrepresenting the existence of his “business” to
the Panel and online visitors are evidence that Respondent is making other
intentional misrepresentations in his Response,
§
The Respondent
engaged in deception to create the perception of compliance with the UDRP to
potential panelists, as it is not actually developing any business under the
disputed domain name as it pretends, evidence in this sense being the three
orders placed by the Complainant agents on the website which were all canceled,
§
The
Respondent is attempting to sell the disputed domain and always intended to do
so,
§
The Respondent is fabricating evidence online in
anticipation of an ex officio investigation by the Panel, and in support
of his misrepresentations in the Response,
By the Response to the additional submissions, the Respondent further
contends that:
§
The
Complainant has not succeeded to prove its common law rights in the disputed
domain name.
§
There is
no likelihood of confusion between the products of the Complainant and the
disputed domain name as the traffic arriving at the domain name is arriving in
search of the truck accessory products offered by the Respondent and not in
consideration of the products offered by the Complainant as it results from the
evidences attached.
§
The
cancellation of the orders placed by the Complainant’s agents was intentional
as the Respondent suspected that it comes from Complainant.
By the further
points of view sent by the Complainant on April 7, 2009 and by the Respondent
on April 10, 2009 which were transmitted to the Panel, both parties are summing
up the same reasoning already presented above and the Panel considers that
there is no need to further repeat it.
FINDINGS
The Panel finds that the Complainant has not adequately met the burden
required in order to receive the requested relief
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 asserts in its Complaint and
Additional Submission its common law rights in the TRUCKMASTER mark through its
use of the mark since 1996 in connection with the provision of logistical commercial
software for trucking companies.
Common law trademark rights are sufficient to
support a complaint under the Policy, but the Complainant bears that burden of
proving such rights. See
Best Web Resources, Inc. v. Floral Craft, Inc, FA 264403 (Nat. Arb.
Forum June 7, 2004) (finding that the issue is not whether the claimed mark is
weak or strong, but whether there is sufficient evidence of a mark in the first
place).
Under
- the association made by the actual purchasers of the product
bearing the claimed trademark between the trademark with the
producer as evidenced by survey or direct consumer testimony;
- the degree and manner
of advertising under the claimed trademark;
- the length and manner of use
of the claimed trademark; and
- the exclusive use of the claimed trademark.
There is not doubt that the Complainant’s
claimed trademark is not an inherently distinctive trademark. This is why the
common law trademarks claimed by the Complainant have to be supported by a
secondary meaning acquired by the claimed mark in consideration of the criteria
mentioned above.
It is the opinion of the Panel that the
reasoning and the evidence provided by the Complainant in support of a
secondary meeting for the claimed trademark are at least prima facie far from attesting the criteria indicated above. The
Complainant asserts that it has expended thousands of dollars in advertising
the disputed domain name and that its products are known by the TRUCKMASTER
mark. The only evidences produced by the Complainant in its favor are
statements of its agents and representatives and evidence of some advertising
Check Ledger from 2000 to 2002 almost 5 years before the Complainant’s
registration in the disputed domain name lapsed.
In addition, the Complainant has not been
sufficiently bothered by the use of the disputed domain name by the Respondent
for more than a year since its registration in the disputed domain name has
lapsed and the Respondent registered the disputed domain name to start any
legal action for putting an end to such use and continued its business under another
domain name.
Under the present circumstances, the Panel is of the view that
Complainant has failed to prove under the UDRP that it possesses common law
trademark rights in “TRUCKMASTER.” See., e.g., Supremo n.v./s.a
v. Tella, D2001-1357 (WIPO Feb. 15, 2002) (finding that Complainant failed
to prove common law rights in “Supremo”); see
also EMONEY GROUP Inc. v. eMoney, FA 96337 (Nat. Arb. Forum Mar. 26, 2001)
(finding that the claimed mark “EMONEY” was generic and had not acquired
secondary meaning); see also Hugo Daniel Barbaca
Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find
common law rights where the complainant provided little evidence showing the
extent of its use of the mark over the three years that the complainant claimed
to have been using the mark); see also Witteles v. Domain Guy, FA 616302 (Nat. Arb. Forum Feb. 27,
2006) (finding that the complainant failed to prove common law rights because
it “did not provide any evidence of secondary meaning or continuing use…”).
Moreover, even if it is assumed that Complainant has rights in the
TruckMaster trademark, confusing similarity has not been proved given the
specific mark claim of the Complainant and its use (Internet based
software retail) relative to the use by the Respondent of the disputed domain
name (sale of sale of truck and auto
accessories).
Therefore, the Panel finds that Complainant lacks rights in the mark
under Policy ¶ 4(a)(i).
As the Panel concluded that Complainant has
not satisfied Policy ¶ 4(a)(i) because it has failed
to establish rights in the mark, the Panel declines to analyze the other two
elements of the Policy. See Creative
Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the
Policy, the complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb.
Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or
legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name
Hijacking
Respondent asserts that Complainant has attempted to engage in reverse
domain name hijacking by filing the instant UDRP case while knowing that
Respondent had rights or legitimate interests in the disputed domain name, and
that Respondent did not, or could not, have registered or used the disputed
domain name in bad faith.
In order to find reverse domain name hijacking, the Respondent must show that the
Complainant brought the claim in bad faith despite the knowledge that the
Respondent has an unassailable right or legitimate interest in the disputed
domain name. See Koninklijke KPN N.V. v. Telepathy
Inc., D2001-0217
(WIPO May 7, 2001) (finding that to prevail on a claim of, the respondent must
show that the complainant brought the claim in bad faith despite the knowledge
that the respondent has an unassailable right or legitimate interest in the
disputed domain name, or that the respondent lacks the requisite bad faith
registration and use of the disputed domain name); see also Labrada
Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that the
complainant engaged in reverse domain name hijacking where it used “the Policy
as a tool to simply wrest the disputed domain name in spite of its knowledge
that the Complainant was not entitled to that name and hence had no colorable
claim under the Policy”).
Under these proceedings, the Panel found in
the reasoning and evidences provided by the Complainant a strong belief that it
is the holder of common law rights in TRUCKMASTER claimed mark. In this sense
the Panel cannot identify bad faith in filing the complaint against the
Respondent.
Therefore, no reverse domain name hijacking had been found.
DECISION
Having not established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED, but no reverse domain name
hijacking has been found.
Beatrice Onica Jarka
David Safran, Darryl C. Wilson,
As Panelists
Dated: April 15, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum