TruServ Corporation v. TrueValue.net
Claim Number: FA0311000214460
PARTIES
Complainant
is TruServ Corporation, Chicago, IL
(“Complainant”) represented by Kristine
M. Boylan, of Meagher & Geer PLLP, 33 South Sixth Street, Suite 4200,
Minneapolis, MN 55402.
Respondent is TrueValue.net,
210 Ave. H, San Manuel, AZ 85631 (“Respondent”) represented by Todd Diaz De Valdes, 525 W. Wetmore Rd. Suite 111, Tucson, AZ
85705.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <truevalue.net>,
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.
Edmund
P. Karem as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 25, 2003; the Forum received a hard copy of the
Complaint on November 25, 2003.
On
December 3, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <truevalue.net>
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
December 8, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 29, 2003 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@truevalue.net by e-mail.
A
timely Response was received and determined to be complete on December 29, 2003.
An
Additional Submission was received from Complainant on January 5, 2004. Pursuant to Forum Supplemental Rule 7, the
additional submission was untimely because it was not received within five
calendar days after the date the Response was submitted.
On January 19, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Edmund P. Karem
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
bases its contention that Respondent has no rights in the domain name on
Complainant’s own trademark rights in True Value Hardware brand stores and its
ownership of a number of U.S. applications and registrations for the True Value
trademark and service mark. It contends
that it is a manufacturer and distributor for a cooperative of approximately
8,000 retail stores, most of which operate under True Value service marks and
sell a range of products bearing those marks.
Complainant owns the domain name, <truevalue.com>, and has a
number of other domain names registered that use the True Value mark either
alone or as a root.
Further
Complainant alleges that Respondent has no rights or legitimate interests in
True Value or a domain name with True Value as a root; that Respondent’s
administrative contact is not a member of the cooperative; does not have any
licensing rights and his only connection with the cooperative is that he was
employed by his father’s True Value Hardware in Arizona which store was a
member of the cooperative. Respondent
has registered and is using the domain name in bad faith because it was used to
leverage a deal Respondent’s administrative contact was pitching to Complainant
and Complainant did not accept the deal. The website is dormant, Complainant
contends.
B.
Respondent
Respondent
contends it has a legitimate interest in the domain name because it was going
to use it to provide web services to TruServ members and that the effort to do
so is outlined in correspondence, meetings and emails. Respondent contends that after TruServ
declined the proposal that it converted the website for the purpose of
promoting a real estate service whereby consumers could visit a website to
request “The true value of your home” and that value would be provided by
professionals.
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.
FINDINGS
The difference between Complainant’s
domain name and that of Respondent is that one is .net and one is .com. Clearly Complainant has registered the mark
True Value. Respondent candidly admits
that the domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights.
Respondent’s administrative contact has
never operated a True Value store of his own.
He is the son of a former member of the cooperative who had a True Value
store. Respondent’s administrative
contact worked in that store. That
relationship does not authorize the use of the True Value mark. See Vinidex
Pty. Ltd. V. Auinger, AF-0402 (eResolution Oct. 18, 2000) The Vinidex
decision found that a former employee knew or should have known that
Complainant’s mark was in use as a part of the corporate name and as a
trademark and therefore understood the legitimate interests and rights of the
Complainant. By contrast Respondent
would have known of its own lack of interest or right. See also Jaccard
Corp. v. GDC, FA 152463 (Nat. Arb. Forum June 20, 2003) Jaccard
held that there was no right or legitimate interest in a domain name where
there was no evidence of an agreement
between Complainant and Respondent authorizing Respondent to register or use
the name.
Respondent asserts that it intended to
use the name to provide individual websites for members of Complainant’s
cooperative and provide information on a central location where individual
cooperative members could utilize the Internet as a means of increasing sales. Complainant did not accept the offer of a
business partnership. In the almost
four years since Complainant notified Respondent that it has chosen to stay
with its current web development vendor and would not enter into a business
arrangement with Respondent’s administrative contact, the domain name website
has been dormant. A notice on the
website states, “COMING SOON!” There
are no rights or legitimate interests in a domain name where Respondent merely
passively held the name. See Am. Home Prod. Corp. v. Malgioglio, D2000-1602
(WIPO Feb. 19, 2001); see also Bloomberg
L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no
right or legitimate interest can be found where Respondent fails to use the
disputed domain name).
The True Value mark has gained fame. The use of a domain name confusingly similar
to a trademark that has gained fame is evidence of bad faith. Samsonite
Corp. v. Colony Holding, Case No. FA 94313 (Nat. Arb. Forum Apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly known mark at the time of registration). Respondent had actual or constructive
knowledge of the mark at the time of the registration since its administrative
contact had been an employee of one of the member stores before the
registration.
The True Value mark has obtained
worldwide notoriety. See TruServ Corp. v. CreativeV, Case No. FA
97849 (NAF Aug. 17, 2001) (stating that with “annual sales of billions of
dollar, retail operations in all fifty states and in many countries around the
world, and advertising expenditures in the many millions of dollars, the TRUE
VALUE trademarks and service marks have obtained worldwide notoriety and
fame”).
The use of a confusingly similar domain
name that encompasses another’s famous trademark is evidence of bad faith
registration as found in Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002)
(stating, “while an intent to confuse consumers is not required for a finding
of trademark infringement, intent to deceive is strong evidence of a likelihood
of confusion”).
There is a dispute between the parties as
to whether, during the negotiations on the proposed partnership, TruServ
Corporation was aware of the registration of the domain name by
Respondent. Respondent insists that
they were. Complainant denies knowledge
in a declaration by Eric Lane, an employee of TruServ. This declaration is not in affidavit form
and thus the state of the proof is that Complainant denies knowledge of the
registration and Respondent asserts it was a known fact. The exhibits accompanying the response are
copies of electronic mail messages between the parties, relative to
Respondent’s proposal of a partnership.
Nowhere in that correspondence or in the partnership proposal itself is
Respondent identified as the registered holder of the disputed domain
name. Rather he is identified as
control yourself.com, inc. or Chris’ True Value Hardware. The weight of the evidence thus leads the
arbitrator to conclude that during the negotiations on Respondent’s proposal
for a partnership, Complainant was unaware of the registration.
Registration of a domain name that
incorporates another entity’s mark, where the registrant has knowledge of that
other entity’s interest, is evidence of bad faith. See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)
(finding that where an alleged infringer chooses a mark he knows to be similar
to another it can be inferred that his intent was to confuse).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truevalue.net>
domain name be TRANSFERRED from Respondent to Complainant.
Edmund P. Karem, Panelist
Dated: January 21, 2004
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