Altec Industries, Inc. v. R. Ents
Claim Number: FA1204001437844
Complainant is Altec Industries, Inc. (“Complainant”), represented by Morris W. Richardson of RichardsonClement PC, Alabama, USA. Respondent is R. Ents (“Respondent”), represented by Scott P. Sandrock of Brennan, Manna & Diamond, LLC, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <altecbuckettrucks.org>, 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.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 4, 2012.
On April 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <altecbuckettrucks.org> 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 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@altecbuckettrucks.org. Also on April 10, 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 25, 2012.
Complainant’s reply dated April 30, 2012 and Respondent’s sur-reply dated May 4, 2012 were both received and considered.
On April 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq. 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.
A. Complainant
Complainant, Altec Industries, Inc., (“Complainant”) alleges that it owns rights in the mark ALTEC because it has registered the mark numerous times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 849,304 registered May 21, 1968). Respondent’s, R. Ents, (“Respondent”) <altecbuckettrucks.org> domain name is confusingly similar to Complainant’s ALTEC mark. Respondent has no rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Respondent’s disputed domain name redirects Internet users to another website at <altecbuckettruck.com>, which contains third-party links and advertisements. Complainant contends the links and advertisements displayed on the resolving website produce commercial gain for Respondent in the form of referral fees and sales of non-ALTEC vehicles. Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends Respondent’s registration and use of the disputed domain name to attract Internet users for its own commercial gain via a website where various competing third-party links are displayed indicates bad faith. Respondent creates a likelihood of confusion by using the ALTEC mark to suggest that Complainant is the source or sponsor of the resolving website. Respondent registered the disputed domain name with at least constructive knowledge of Complainant’s rights in the ALTEC mark.
B. Respondent
Respondent alleges that Complainant’s Complaint is not an attempt to protect its trademark but is an attempt to eliminate competition and the secondary sale and leasing market for its products. Respondent’s <altecbuckettrucks.org> domain name is not confusingly similar to Complainant’s ALTEC mark. Complainant does not allege that it has obtained a trademark for the name “Altec Bucket Trucks.” Respondent has rights and legitimate interests in the <altecbuckettrucks.org> domain name because Respondent is making a legitimate noncommercial use of the domain name, as it resolves to an informational webpage containing information about certain products manufactured by Complainant. Respondent uses the disputed domain name to host its own web page and is not receiving third-party revenues. Respondent did not register and is not using the disputed domain name in bad faith as Respondent maintains a full informational web page and has made no offer to sell the disputed domain name to Complainant. Complainant submitted no evidence to support its allegation that Respondent is receiving click-through referral fees from the links displayed on the resolving website.
The Panel finds that the domain name registered by Respondent is identical or confusingly similar to the trademark or service mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and 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 alleges that it owns rights in the ALTEC mark because it has registered the mark numerous times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 849,304 registered May 21, 1968). A USPTO trademark is sufficient evidence to prove that Complainant has rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
Complainant argues that Respondent’s <altecbuckettrucks.org> domain name is confusingly similar to Complainant’s ALTEC mark because the disputed domain name contains the ALTEC mark and merely adds the descriptive terms “bucket” and “trucks” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that similar additions to a mark do not distinguish a disputed domain name. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, Respondent’s <altecbuckettrucks.org> domain name is confusingly similar to Complainant’s ALTEC mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <altecbuckettrucks.org> domain name because Respondent is not commonly known by the disputed domain name. Complainant asserts that it has not given Respondent permission to use the disputed domain name and that the WHOIS information identifies the registrant of the disputed domain name as “R. Ents.” The WHOIS information and other evidence suggests no affiliation between Respondent and the disputed domain name and therefore, Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent lacks rights and legitimate interests because the <altecbuckettrucks.org> domain name redirects Internet users to another domain name, <altecbuckettrucks.com>, where third-party links and advertisements for Complainant’s competitors are displayed. Complainant asserts that Respondent commercially profits from this resolving website. Respondent’s use of the disputed domain name to host a website featuring links and advertisements to competitors does not establish a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. This use of the disputed domain name does not constitute 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).”).
Complainant alleges that Respondent is using the disputed domain name to direct Internet users to a website at which various competing third-party links are displayed and third-party vehicles in competition with Complainant are advertised. Complainant asserts that Respondent, by using the disputed domain name containing Complainant’s ALTEC mark, is attempting to direct Internet users to Respondent’s website for commercial gain. Complainant contends that Respondent is creating a likelihood of confusion by using the ALTEC mark to suggest that Complainant is the source or sponsor of the resolving website. Complainant argues that Respondent receives links to other websites from the disputed domain name, and that Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant asserts that Respondent registered the <altecbuckettrucks.org> domain name with at least constructive knowledge of Complainant’s rights in the ALTEC mark by virtue of Complainant’s USPTO trademark registration. Respondent fails to establish that it had no knowledge of Complainant’s mark. Based upon the above, the Panel finds that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <altecbuckettrucks.org> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: May 14, 2012
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