Altec Industries, Inc. v. I 80 Equipment
Claim Number: FA1204001437753
Complainant is Altec Industries, Inc. (“Complainant”), represented by Morris W. Richardson of RichardsonClement PC, Alabama, USA. Respondent is I 80 Equipment (“Respondent”), represented by April A. Marshall of Lane & Waterman, LLP, Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usedaltecbuckettrucks.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Fernando Triana, Esq. as Chair of the Panel.
David S. Safran, Esq. as Co-Panelist.
Honorable Judge Karl V. Fink (Ret.) as Co-Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 3, 2012.
On April 3, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <usedaltecbuckettrucks.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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 postmaster@usedaltecbuckettrucks.com. Also on April 3, 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 April 23, 2012.
Additional submissions were filed by Complainant and Respondent on May 1 and May 4, 2012, respectively.
On May 2, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David S. Safran, Esq. and Judge Karl V. Fink as Co-Panelist and Fernando Triana, Esq. as Chair of the Panel.
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.
A. Complainant
The Complaint is based on the Complainant’s use and ownership of the trademark ALTEC -and its derived mark family- in the United States of America since 1956, to identify utility service truck bodies and special duty truck bodies along with other related goods and services.
Complainant’s main contentions are as follows:
1. The domain name <usedaltecbuckettrucks.com> contains the trademark ALTEC in its entirety, merely adding the generic terms “used bucket trucks” and the generic top-level domain name “.com”. Thus, the disputed domain name is confusingly similar to the ALTEC trademark.
2. Respondent has no rights or legitimate interests with respect to the domain name <usedaltecbuckettrucks.com>: i) Respondent is not commonly known by the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark ALTEC; iii) the disputed domain name reverts to a website in which Respondent offers for sale used ALTEC-branded and non-ALTEC-branded bucket trucks; and iv) Respondent is profiting from the sales of ALTEC and non-ALTEC-branded trucks on its website.
3. Respondent registered the domain name <usedaltecbuckettrucks.com> in bad faith: i) Respondent is capitalizing upon Complainant’s good will and disrupting Complainant’s business by using the disputed domain name to redirect Complainant’s customers to Respondent’s website, where used ALTEC-branded and non-ALTEC-branded bucket trucks are being sold, and ii) Respondent had at least constructive knowledge of the mark ALTEC and Complainant’s rights in it, because Respondent sells used ALTEC and ALTEC’s competitors vehicles in its website.
B. Respondent
1. Respondent is in the business of purchasing, repairing and selling used bucket trucks and other capital equipment. Most of the used trucks purchased and sold by Respondent are ALTEC-branded trucks.
2. Respondent registered the disputed domain name <usedaltecbuckettrucks.com> for the specific purpose of promoting the sale of used ALTEC-branded bucket trucks.
3. The current website found at the domain name is still under construction, which is evidenced by its limited functionality and the “lorem ipsum dolor ist” dummy text, often used during website development.
4. The website developer took the site live before approval by Respondent. The used trucks listing posted on the site were used for testing of the inventory module programming.
5. When the website programming is completed, only used ALTEC- branded trucks will be listed and sold from Respondent’s website.
6. Respondent concedes that the domain name <usedaltecbuckettrucks.com> makes use of Complainant’s mark; however, it is used to refer to the genuine used products of Complainant, most of which Respondent acquired directly from Complainant. This is a nominative fair use of Complainant’s mark made in good faith.
7. Respondent’s preparations to use the domain name meet all of the requirements of a bona fide offering of goods or services: i) Respondent intends to list and offer for sale only ALTEC-brand used trucks, ii) Respondent has not used its website to sell any goods at this time, and iii) the site clearly states that the website is provided by Respondent, and once the website is live, the Disclaimer will state that there is not affiliation between Complainant and Respondent.
C. Additional Submissions
C.1. Complainant’s Additional Submission.
1. Complainant’s main concern is that Respondent uses the disputed domain name to attract ALTEC customers and lead them to a website that sells not only used ALTEC vehicles, but also vehicles of Complainant’s competitors.
2. Although Respondent claims that it registered the disputed domain name on September 17, 2010, the WHOIS database indicates that the domain name was created on August 15, 2006.
3. This dispute should be decided upon the facts at the time that Complainant submitted its Complaint against Respondent, and not upon promises of what Respondent says it will do in the future. Thus, it has been well established that at the time of the filing of the Complaint that Respondent used the disputed domain name to resolve to a website that advertised ALTEC-branded and non-ALTEC-branded used trucks, an only promises to change the website after this dispute arose.
4. “Nominative fair use” is not a defense in this domain name dispute. On the contrary, Respondent has used the domain name in bad faith, since it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
C.2. Respondent’s Additional Submission.
1. Respondent has replaced its website developer and is working to complete the site as intended, that is, to sell only ALTEC-branded used trucks.
2. Complainant’s assertion that Respondent registered the domain name <usedaltecbuckettrucks.com> on August 15, 2006 is false and unsupported by any evidence.
3. The site is currently under construction, it is not and has not been functional, and thus no vehicles were sold or could have been sold from the site. Actually, the site receives no traffic while it is under development, despite being brought live prematurely.
4. Respondent sells used equipment by manufacturers other than Complainant on its website <i80equipment.com>, which is not at issue in this case.
1. The disputed domain name <usedaltecbuckettrucks.com> describes the Respondent’s new business, which cannot be accurately described without using the trademark ALTEC.
2. Respondent’s website (to which the disputed domain name reverts) was taken live and included a listing of ALTEC-branded and non-ALTEC-branded used trucks because the former website developer failed in following Respondent’s instructions.
3. Respondent proved preparations to use the domain name <usedaltecbuckettrucks.com> in connection with a website in which Respondent will only sell original ALTEC-branded used trucks, directly acquired from Complainant.
4. Respondent did not register the disputed domain name in bad faith, since Respondent does not intend to disrupt Complainant’s business, or to create a likelihood of confusion with Complainant as to the source or sponsor of Respondent’s website.
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."
Likewise, paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that: “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
The Panel will make special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three (3) elements to obtain an order that a domain name be cancelled or transferred:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly (Section B), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly (Section C), the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
Complainant contends to be the owner of the trademark ALTEC in the United States of America, and a family mark derived from it, which has been used since 1956 to identify utility service truck bodies and special duty truck bodies, along with other related goods and services.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
The Industrial Property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world. When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the trademark ALTEC and a trademark family derived from it. Exhibits 3, 4, 5, 6, 7, 8, 9, 10 and 11 to the Complaint include:
· Copy of the registration certificate No. 849,304, granted by the United States Patent and Trademark Office (USPTO) for the trademark ALTEC in international class 12. According to this document, Complainant has used the trademark ALTEC in the US commerce since May 1, 1956.
· Copy of the registration certificate No. 3,053,226, granted by the United States Patent and Trademark Office (USPTO) for the trademark ALTEC (design mark) in international classes 7 and 12. According to this document, Complainant has used the trademark ALTEC (design mark) in the US commerce since July 31, 1992.
· Copy of the registration certificate No. 3,879,725, granted by the United States Patent and Trademark Office (USPTO) for the trademark ALTEC ENVIRONMENTAL PRODUCTS (design mark) in international class 7. According to this document, Complainant has used the trademark ALTEC ENVIRONMENTAL PRODUCTS (design mark) in the US commerce since January 1, 2007.
· Copy of the registration certificate No. 3,879,725, granted by the United States Patent and Trademark Office (USPTO) for the mark ALTEC GREEN FLEET (design mark) in international classes 7, 12 and 37. According to this document, Complainant has used the mark ALTEC GREEN FLEET (design mark) in the US commerce since October 6, 2009.
· Copy of the registration certificate No. 3,596,633, granted by the United States Patent and Trademark Office (USPTO) for the mark ALTEC HYBRID (design mark) in international classes 7, 12 and 37. According to this document, Complainant has used the mark ALTEC HYBRID (design mark) in the US commerce since June 15, 2005.
· Copy of the registration certificate No. 3,989,659, granted by the United States Patent and Trademark Office (USPTO) for the mark ALTEC NUECO (design mark) in international class 35. According to this document, Complainant has used the mark ALTEC NUECO (design mark) in the US commerce since November 29, 2010.
· Copy of the registration certificate No. 2,510,154, granted by the United States Patent and Trademark Office (USPTO) for the mark ALTEC SENTRY in international classes 9, 16 and 41. According to this document, Complainant has used the mark ALTEC SENTRY in the US commerce since January 26, 2000.
· Copy of the registration certificate No. 4,074,055 granted by the United States Patent and Trademark Office (USPTO) for the mark ALTEC SENTRY (design mark) in international classes 9, 16 and 41. According to this document, Complainant has used the mark ALTEC SENTRY (design mark) in the US commerce since April 26, 2011.
· Copy of the registration certificate No. 3,596,633, granted by the United States Patent and Trademark Office (USPTO) for the mark ALTEC SUPPLY (design mark) in international class 35. According to this document, Complainant has used the mark ALTEC SUPPLY (design mark) in the US commerce since February 29, 2008.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the trademark ALTEC and its derived mark family, and the exclusive right to use it in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]
Thus, Complainant established its rights in the trademark ALTEC, for purposes of Paragraph 4(a)(i) of the Policy
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
Complainant alleges that the disputed domain name incorporates the trademark ALTEC, adding only the generic terms “used bucket trucks”, and the generic top-level domain name “.com”. Thus, the domain name <usedaltecbuckettrucks.com> and the trademark ALTEC are confusingly similar.
Respondent responds to this allegation conceding that the domain name <usedaltecbuckettrucks.com> comprises the trademark ALTEC. Respondent contends to be in the business of purchasing, repairing and selling used bucket trucks, most of them original ALTEC-branded trucks directly acquired from Complainant. Respondent also contends that the disputed domain name was registered with the purpose of selling Complainant’s used trucks only. Thus, the trademark is used to refer to the genuine used goods of Complainant and the domain name was conceived and registered to simply describe Respondent’s business.
Before establishing whether or not the domain name <usedaltecbuckettrucks.com> is confusingly similar to the Complainant’s trademark ALTEC, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, ”.co” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., .co., .de, .cr, .es, nor the insertion of a gTLD have a distinctive function.
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
[T]he addition of the generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services.
Most of Internet users seeking for used or previously owned vehicles do not associate the word "used" with their manufacturer, but with their previous owner or seller. The Panel concludes so after conducting a search on the GOOGLE engine for the search criterions “used vehicles” and “used trucks”. The results shows that used vehicles, including used trucks, are mostly sold by sellers different from their manufacturers, who are unrelated. They can be interpreted as a common practice in the market of used vehicles and trucks. Thus, to begin with, the addition of the descriptive term “used” in the disputed domain name <usedaltecbuckettrucks.com> conveys a clear message: The website to which it reverts likely belongs to a third party rather than to Complainant, and they are not necessarily affiliated. This message excludes any degree or confusing similarity between the disputed domain name and the trademark ALTEC.
In addition, Exhibit 14 to the Complaint and Exhibit 1 to the Complainant’s Additional Submission include a printout of Respondent’s website <i80equipment.com>. The evidence shows that Respondent is indeed engaged in the business of selling used bucket trucks, and also that most of those used trucks are ALTEC-branded.
Trademark rights are not absolute. Many jurisdictions all over the world have introduced limitations to trademark rights either by means of case law or by amendments to the law in force. Respondent cited US case law to prove that its use of the trademark ALTEC is a legitimate fair use according to the doctrine of the “nominative fair use”. This doctrine establishes a limitation to trademark rights as it allows a defendant in a trademark infringement case to “use a plaintiff’s trademark where doing so is necessary to describe the plaintiff’s product and does not imply a false affiliation or endorsement by the plaintiff of the defendant”. The Panel has found similar limitations to trademark rights in other jurisdictions, according to which third parties are allowed to use registered trademarks to offer for sale or to advertise the availability of lawfully marked goods or services, provided that such use is made in good faith, has informative purposes and will not confuse or mislead consumers as to the source of those goods or services[3].
Since Respondent is developing a website in which Internet users will be able to find and purchase only ALTEC–branded bucket trucks (as further discussed in Section B), Respondent needs to use the mark ALTEC to accurately inform Internet users what its new line of business is about. Respondent cannot do so without using the mark ALTEC. Therefore, this Panel concurs with Respondent and believes that the domain name <usedaltecbuckettrucks.com> simply describes Respondent’s commercial activity.
Although in other circumstances the addition of descriptive terms such as “used bucket trucks” may not be enough to differentiate a trademark from a domain name, the Panel believes that in the present case these terms are not only necessary but enough to differentiate the one from the other.
In consequence, as per this reasoning, the disputed domain name is not confusingly similar to the Complainant’s trademark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is not duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent.
In the Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 (Mar 30, 2001), the Panel stated that:
Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to Respondent, who must prove those rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name <usedaltecbuckettrucks.com>: i) Respondent is not commonly known by the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark ALTEC in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain name reverts to a website in which Respondent offers for sale ALTEC-branded and non-ALTEC-branded used bucket trucks; and iv) Respondent is profiting from the sales of ALTEC and non-ALTEC-branded trucks on its website.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of proof to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that the domain name <usedaltecbuckettrucks.com> was acquired on September 17, 2010 with the specific purpose of promoting the sale of ALTEC-branded used bucket trucks. The website found by Complainant, as shown in Exhibit 15 to the Complaint (also Exhibit 2 to the Response) is still under construction: Its functionality is limited, it displays the “lorem ipsum dolor sit” dummy copy text and the used truck listings were posted on the site for testing of the inventory module programming. Since the website developer took it live without Respondent’s approval, he was dismissed. Once the website programming is completed, only ALTEC-branded bucket trucks will be offered for sale and sold from it. The website clearly indicates that the trucks are provided by Respondent; however it will also include a disclaimer stating that Respondent is not owned, operated or otherwise affiliated with Complainant.
Complainant contends in its additional submission that Respondent registered the disputed domain name on August 15, 2006 as shown in Exhibit 13 to the Complaint (that is, more than six years ago), however Respondent did not make changes to the website until it was given notice of the Complaint.
The Panel wishes to clarify the real registration date of the disputed domain name. The domain name <usedaltecbuckettrucks.com> was registered on September 17, 2010 as shown in its WHOIS registration data (Exhibit 2 to the Complaint). Exhibit 13 to the Complaint, on which Complainant supported its contention that the disputed domain was registered six years ago, includes the WHOIS registration data of the domain name <i80equipment.com> also owned by Respondent. Thus, Complainant’s assertion is incorrect.
This Panel believes that Respondent has demonstrated preparations to use the domain name <usedaltecbuckettrucks.com> in connection with a bona fide offering of goods. Although a one-year-and-nine-months period may seem long to develop and launch a website, it is still reasonable time to develop a new line of business.
It is true that the website found by Complainant included a listing of used trucks branded with both Complainant’s and its competitor’s trademarks. Yet, Respondent has proven that this website is still under construction and also that its former website developer failed in following its instructions (as shown in Exhibits 1, 2 and 3 to the Response), mainly: First, the new website was not supposed to be taken live during its development. Second, the new website was not supposed to be a copy of Respondent’s site <i80equipment.com>. However, the website was taken live without Respondent’s approval and it included listings of used ALTEC-branded and non-ALTEC-branded trucks displayed on the Respondent’s home website. The website developer used them only to make some tests on the module programming, and not because Respondent intended to profit from the sale of non-ALTEC-branded used trucks.
Respondent has also proven that its website has not received any traffic during its development (Exhibits 11 and 12 to the Respondent’s Additional Submission). Therefore, Respondent has not profited in any manner from the website (sales of ALTEC-branded and non-ALTEC-branded trucks, advertisement, pay-per-click advertisement, etc.). These facts confirm too that the website found by Complainant was under construction and was not functional.
This website clearly states on its upper left corner that it belongs to Respondent, which prevents Internet users from believing that it is owned, sponsored or endorsed by Complainant. The disclaimer that Respondent intends to display on the website once it is functional will reinforce this message and will clarify that Respondent and Complainant are not affiliated in any manner.
Complainant requires the Panel to make a decision based upon the facts at the time of submission of the Complaint. Those facts show that Respondent has been preparing the launching of a website in which only ALTEC-branded used trucks will be sold. Complainant also requires the Panel to refrain from making a decision based upon Respondents promises of what will be done in the future. What Complainant calls “promises”, this Panel deems as preparations to use the website in connection with a bona fide offering of goods.
Therefore, the second requirement of paragraph 4 (b) of the Policy is not met either.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the sole Panelist to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website 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 his/her website or location or of a product or service on his/her website or location.
Complainant claims that Respondent is using the disputed domain name, which includes and is confusingly similar to the ALTEC trademark, to direct consumers to a website where vehicles manufactured by Complainant’s competitors are sold. In addition, Complainant contends that Respondent had constructive knowledge of its trademark ALTEC at the time the disputed domain name was registered.
In prior Section B, the Panel discussed Complainant’s first contention and concluded that Respondent successfully proved preparations to use the domain name <usedaltecbuckettrucks.com> in connection with a website in which Respondent will only sell ALTEC-branded used trucks. Respondent also proved that, to date, it has not profited from the sale of non-ALTEC-branded used trucks on its website and does not intend to do so. Thus, Respondent did not register the disputed domain name to disrupt Complainant’s business, nor to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant and its trademark.
Additionally, in prior Section A the Panel referred to Respondent’s knowledge of the trademark ALTEC mark at the time the disputed domain name was registered: Respondent is involved in the business of purchasing, repairing and selling used bucket trucks, including those manufactured by Complainant. Thus, such knowledge of the trademark ALTEC is just a consequence of Respondent’s business. In addition, Respondent registered the domain name <usedaaltecbucketrucks.com> with the purpose of developing a website in which only ALTEC-branded used trucks will be sold. This deliberate use of the trademark ALTEC does not entail registration in bad faith as using this trademark is necessary to accurately describe Respondent’s new line of business.
The three elements of the Policy 4 (a) (iii) are not satisfied in the present case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <usedaltecbuckettrucks.com> domain name REMAIN WITH Respondent.
Fernando Triana, Esq., Chair of the Panel
David S. Safran, Esq., Co-Panelist.
Honorable Judge Karl V. Fink (Ret.) as Co-Panelist.
Dated: May 18, 2012
[1] See MatchNet PLC. v. MAC Trading, D2000-0205, (WIPO May 11, 2000), citing British Broad. Corp. v. Renteria, D2000-0050, (WIPO Mar. 23, 2000).
[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201, (WIPO May 5, 2002).
[3] Decision 486 of the Commission of the Andean Community is the current trademark law of the Andean Community member countries (Colombia, Bolivia, Ecuador and Peru). Article 157 of Decision 486 states as follows:
Registration of the mark shall not confer on its owner the right to prohibit a third party from using the mark to publicize, including the use of comparative advertising, to offer for sale or to advertise the existence or availability of lawfully marked goods or services, or to advertise the compatibility or suitability of spare parts or accessories that may be used with goods bearing the registered mark, provided that such use is made in good faith, is confined to the purpose of informing the public and is not liable to mislead or confuse as to the corporate origin of goods or services concerned”. (emphasis added).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page