Acument Intellectual Properties, LLC v. Aaron's General Store.com
Claim Number: FA1009001348931
Complainant is Acument Intellectual Properties, LLC ("Complainant"), represented by James R. Foley of Clark Hill PLC, Illinois, USA. Respondent is Aaron's General Store.com ("Respondent"), represented by Samuel V. Edens, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <genuinetorxscrews.com> and <aaronstorxscrews.com>, registered with Network Solutions, 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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2010; the National Arbitration Forum received payment on September 28, 2010.
On September 28, 2010, Network Solutions, Llc. confirmed by e-mail to the National Arbitration Forum that the <genuinetorxscrews.com> and <aaronstorxscrews.com> domain names are registered with Network Solutions, Llc. and that Respondent is the current registrant of the names. Network Solutions, Llc. has verified that Respondent is bound by the Network Solutions, Llc. 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 September 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2010 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@genuinetorxscrews.com and postmaster@aaronstorxscrews.com. Also on September 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 October 19, 2010.
On October 25, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends:
that it owns and has used the trademark TORX for threaded fastening devices since 1968, and that it owns both common-law rights and numerous US and foreign trademark registrations for that mark;
that Respondent has registered and used the disputed domain names since May 2008, some forty years after Complainant’s registration;
that Respondent’s use of the mark as part of its domain names is designed to attract Internet users to the domain names as a result of the good will in Complainant’s mark; and
that the domain names resolve to web sites that offer products that compete directly with Complainant, including directly competing products that are not genuine TORX® products.
B. Respondent
Respondent contends:
that Complainant, a much larger entity, is using this proceeding for improper purposes;
that Respondent has purchased, and is a legitimate reseller of, a substantial volume of genuine TORX product;
that Respondent sells both TORX and “TORX look alike screws”;
that Respondent agreed to “separate the TORX® from the fake TORX® or Six Lobe products and put them on separate web sites”;
that hearing nothing further from Complainant, Respondent believed the situation to be acceptable;
that Respondent has used the domain names as addresses for specialty store web sites;
that Respondent bought $1,300,000 in genuine TORX inventory and cannot re-sell them without use of the web sites;
that Respondent complied with Complainant’s request to add a disclaimer to his site indicating that TORX® is a registered trademark of Complainant;
that Complainant has ceased to promote the TORX mark in favor of its new TORX PLUS mark; and
that TORX is a common word that appears on millions of web sites.
The panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights; that respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and is being used in bad faith.
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.
Complainant, Acument Intellectual Properties, LLC, owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its TORX mark (Reg. No. 847,266 issued April 9, 1968). Such registration is sufficient for Complainant to establish rights in its TORX mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s domain names use the TORX mark owned by Complainant, and add to that mark the generic terms “genuine” or “aarons,” respectively, as well as the descriptive term “screws,” and the generic top-level domain (“gTLD”) “.com.” Such additions do not sufficiently distinguish the disputed domain names from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Accordingly, the Panel finds that Respondent’s <genuinetorxscrews.com> and <aaronstorxscrews.com> domain names are confusingly similar to Complainant’s TORX mark under Policy ¶ 4(a)(i).
Respondent argues, in essence, that it is a legitimate reseller of genuine TORX®-branded products, and accordingly is entitled to use the TORX mark as part of its domain names. The flaw in Respondent’s position, however, is that in addition to selling genuine product bearing Complainant’s mark, it also uses the self-same domain names to provide links (presumably paid) to web sites offering competing products that are not genuine TORX. While cases decided under the Policy differ as to whether a bona fide reseller of genuine branded product may properly register and use domain names containing the brand owner’s trademark, it is considerably clearer that such usage is impermissible when the web site to which the domain name resolves directs at least some Internet customers to competing, unlicensed and unauthorized product. Such usage improperly leverages the goodwill of the brand name toward the end of selling product in competition with it.
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <genuinetorxscrews.com> and <aaronstorxscrews.com> domain names pursuant to Policy ¶ 4(c)(ii). The registrant of the domain names is identified on the WHOIS listings as “Aaron’s General Store.com.” 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The evidence suggests that Respondent has used the disputed domain names to resolve to websites that contained a list of hyperlinks referencing Complainant’s TORX products, and offering certain products for sale. While in some circumstances such usage may amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), the problem here is that some of the offered products are not genuine TORX® brand products but rather are those of Complainant’s competitors. Complainant contends, and Respondent does not clearly deny, that Respondent commercially benefits from the hyperlinks through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain names has not been a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)).
That some of the products sold by Respondent may be genuine TORX® products does not suffice to establish legitimate rights. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Respondent contends that the hyperlinks found on one of the web sites to which its domain names resolve were generated by the registrar of the domain name. Respondent claims that it does not have control over the hyperlinks found on that site. The Panel finds, however, that Respondent is responsible for the content found on the resolving website under Policy ¶ 4(a)(ii). See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”).
Further, if Respondent’s statement that TORX is “in common use throughout the world” is intended as a suggestion that the mark is generic, Respondent offers no evidence sufficient to support such a conclusion.
Lastly, Respondent’s suggestion that it will be unable to re-sell its legitimately-purchased TORX inventory without use of the disputed domain names does not seem well-founded. Respondent has offered no evidence that it cannot sell this inventory through other channels of distribution, and/or via web sites that resolve from domain names using generic terms for the types of products at issue or that otherwise do not confusingly incorporate Complainant’s mark.
As discussed above, Respondent has registered and used the disputed domain names to host a list of hyperlinks to Complainant’s competitors’ products. Complainant further alleges that the <aaronstorxscrews.com> domain name currently resolves to a website that purports to only sell Complainant’s products, but in fact sells both Complainant’s products and Complainant’s competitors’ products. There is evidence supporting Complainant’s assertion, and Respondent has not clearly rebutted it.
The Panel concludes that Respondent’s registration and use of the disputed domain names was in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Such usage also constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <genuinetorxscrews.com> and <aaronstorxscrews.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: November 8, 2010
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