DECISION

 

1800TruckWreck, LLC v. Randall MPR / Randall Marketing and Public Relations

Claim Number: FA2404002093210

 

PARTIES

Complainant is 1800TruckWreck, LLC ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Randall MPR / Randall Marketing and Public Relations ("Respondent"), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <1800truckaccident.com>, registered with Squarespace Domains II LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Eugene I. Low as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 15, 2024; Forum received payment on April 15, 2024.

 

On April 16, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <1800truckaccident.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2024 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@1800truckaccident.com. Also on April 17, 2024, 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 May 7, 2024.

 

On May 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Eugene I. Low as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: UNSOLICITED SUBMISSIONS

Complainant filed an unsolicited Additional Submission on May 8, 2024 (the "Additional Submission").

 

Forum's Supplemental Rule 7 provides that it is within the discretion of the Panel to accept or consider unsolicited additional submissions.

 

The Panel considered that Complainant's unsolicited Additional Submission does not materially impact on the substance of the case and Respondent is not prejudiced by the lack of an opportunity to respond. In the interest of conducting these proceedings in an efficient manner, the Panel decided to take into account Complainant's Additional Submission.

 

PARTIES' CONTENTIONS

The Panel has considered both parties' arguments and evidence. The parties' respective cases are summarized as follows.

 

A. Complainant

1800TruckWreck, LLC ("1800TruckWreck") is based primarily in Texas offering legal services, especially in connection with truck related accidents, with offices in Dallas, Texas, Fort Worth, Texas, Houston, Texas, Chicago, Illinois, Birmingham, Alabama and Atlanta, Georgia. More information can be found about 1800TruckWreck at 1800TruckWreck's official website at <1800TruckWreck.com> which has been in use since 2014. In that period of time, 1800TruckWreck has expended in excess of $30 million promoting its services under the mark and has engaged in substantial amounts of community outreach throughout the United States promoting the mark.

 

1800TruckWreck is the owner of the 1-800-TRUCKWRECK trademark which is registered with the United States Patent and Trademark Office covering "Legal Services" in Class 45 (registered on May 24, 2022 with a date of first use of August 7, 2014).

 

Complainant's registrations for the 1-800-TRUCKWRECK mark were applied for and issued well before the registration date for the disputed domain name on August 25, 2023.

 

Due to extensive use, promotion, and commercial success, the 1-800-TRUCKWRECK mark is well-known to countless consumers.

 

1800TruckWreck uses this distinctive logo on its website:

The disputed domain name is confusingly similar to Complainant's 1-800-TRUCKWRECK trademark. It includes the 1-800-TRUCK portion of the mark in its entirety (omitting the hyphens) and replacing the word "WRECK" with its most common synonym, "ACCIDENT" along with the most common gTLD, ".com."  This is not sufficient to distinguish the domain name from the 1-800-TRUCKWRECK.

 

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant's 1-800-TRUCKWRECK mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant's 1-800-TRUCKWRECK mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant's goods and services. The disputed domain name is being used for a competing legal services business. Respondent's website also prominently displays a logo in the identical colors of Complainant's logo.  Additionally, the URL on one page uses "/truckwreck."

 

Respondent's use of the prominent 800TRUCK portion of the mark with the identical colors for Complainant's mark on its site may initially suggest to an unsuspecting computer user that the site is associated with Complainant when it is not.

 

Respondent registered the disputed domain name in bad faith. At the time that the disputed domain name was registered, the 1-800-TRUCKWRECK mark was already well known and certainly familiar to countless consumers. It is clear from the domain name as well as the use of similar colors and logos, along with the fact that 1800TruckWreck has an office in Atlanta where Respondent is located, that Respondent was not only familiar with the 1-800-TRUCKWRECK mark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the 1-800-TRUCKWRECK mark (replacing "wreck" with the synonym "accident") in order to create an association with Complainant and its services. Respondent's registration, maintenance, and use of the disputed domain name with knowledge of Complainant's rights in its 1-800-TRUCKWRECK Mark is evidence of bad faith registration and use. Additionally, by using the domain name, Respondent's website gives the false impression of an affiliation with Complainant and its marks, making it clear that Respondent has sought to benefit commercially from Complainant's well-established goodwill.

 

B. Respondent

The domain name does not match the Complainant's trademark registration. Complainant argues that the 1-800-TRUCKWRECK mark colors selections are similar and the 1 800 TRUCK ACCIDENT LLC logo are confusingly similar, and that the famousness of its mark is an issue. Rather, the Complainant uses 1-800-TRUCKWRECK as its trademark, not 1 800 TRUCK ACCIDENT LLC or 800 TRUCK ACCIDENT LOGO.

 

Complainant has shown no use of its alleged mark or the Respondent's domain name that will lead to confusion or dilution.

 

1-800-TRUCKWRECK Trademark registration indicates "Color is not a feature of the mark" while the fact that the Complainant's mark is not famous.

 

Respondent is legitimately using the domain name <1800truckaccident.com>, not to label goods and services, but as victims services. The Respondent's website is in the construction phase and upon completion will be a victims service organization website used to assist truck accident victims with records and information.

 

Complainant alleges trademark infringement. For there to be a trademark infringement, trademark law looks to whether there is a likelihood of confusion between the goods and services of the trademark holder and the alleged infringer, or whether there is a likelihood of dilution of the mark. Complainant offers no evidence of confusion or dilution to support its claims of infringement.

 

Respondent's companies are registered Victims Service Organizations that qualify to provide such services. There is nothing wrong with doing so and such activity is indicative of an entrepreneur, not a squatter. There is absolutely no evidence that Respondent intends to register domain names that match trademark holders' marks in order to sell them to the trademark holders.

  

Respondent has ownership rights to 1 800 Truck Accident LLC. The <1800truckaccident.com> domain was acquired by RANDALL MARKETING AND PUBLIC RELATIONS to provide victim services. The domain name, 1 800 truck accident phone number and victims service concept is of value to 1 800 Truck Accident LLC.

 

Complaint attempted to hijack Respondent's business name in the state of Georgia. This was an unsuccessful attempt, but displays the manner in which the 1-800-TRUCKWRECK team attempts to bully and steal.

 

C. Complainant's Additional Submission

Respondent improperly compares Complainant's registration for the mark 1-800-TRUCKWRECK and Design and disregards Complainant's registration for the mark 1-800-TRUCKWRECK which appears without any design elements.

 

While Respondent argues that the disputed domain name is in the construction phase and will be used to assist victims of accidents to obtain records, it is clear that the disputed domain is being used for a competing legal services business. Respondent is using the disputed domain name to promote legal services, using statements such as "Get a free consultation with 1800Truck Accident Legal Team for Maximum Injury Settlements." This use is in direct competition with Complainant and its services in the same geographic area. The use of a domain name that is confusingly similar to Complainant's 1-800-TRUCKWRECK to attract computer users to Respondent's own site is not 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 of the domain name pursuant to Policy ¶ 4(c)(iii).

 

Respondent argues that it did not register or use the disputed domain name in bad faith because its activity is as "an entrepreneur and not a squatter." As more fully set forth in the Complaint, at the time that the disputed domain name was registered, the 1-800-TRUCKWRECK mark was already well known and certainly familiar to countless consumers. It is clear from the domain name as well as the use of similar colors and logos, along with the fact that 1800TruckWreck has an office in Atlanta where Respondent is located, that Respondent was not only familiar with the 1-800-TRUCKWRECK mark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the 1-800-TRUCKWRECK mark (replacing "wreck" with the synonym "accident") in order to create an association with Complainant and its services. Respondent's registration, maintenance, and use of the disputed domain name with knowledge of Complainant's rights in its 1-800-TRUCKWRECK Mark is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).

 

FINDINGS

Complainant has failed to establish all three elements. As such the disputed domain name shall remain with Respondent.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The Panel considers that the disputed domain name is not identical or confusingly similar to Complainant's registered trademark 1-800-TRUCKWRECK within the meaning of the Policy.

 

Leaving aside minor differences between the disputed domain name and Complainant's registered trademark (namely, the two hyphens and the ".com" gTLD which do not impact on the Panel's assessment under this element), the key question for the Panel to decide is whether "TRUCKACCIDENT" and "TRUCKWRECK" are confusingly similar for the purpose of the Policy.

 

The Panel considers that "TRUCKACCIDENT" and "TRUCKWRECK" look and sound quite differently, so what remains is whether the two are, conceptually, sufficiently confusingly similar. The Panel accepts that "accident" and "wreck" can be synonyms in certain circumstances, for example in the context of incidents involving vehicles.

 

However, when making the assessment under this element, the Panel notes that Complainant's registered trademark is a relatively descriptive mark, comprising the toll free number "1-800" followed by the descriptive terms "truck" and "wreck". For the Complainant to be able to establish its case under this element, the Panel would require to see more evidence showing that its mark has acquired distinctiveness or secondary meaning to such an extent that there is a likelihood of confusion covering even synonymatic descriptive terms which are not visually or phonetically similar. The Panel considers that Complainant's evidence falls short of this threshold.

 

Rights or Legitimate Interests

Given the Panel's findings under the first element, it is not necessary for the Panel to embark on a detailed analysis of the second and third elements. However, for the sake of completeness and to address some of Complainant's arguments, the Panel will also briefly address the other two elements.

 

There are some factual disputes as to the current state of use of the disputed domain name. Complainant contends that the disputed domain name is used in relation to a website which provides legal services, whereas Respondent contends that the website is in the construction phase and upon completion will be used as a victims service website. The Panel is not in a position to resolve such factual disputes, though the Panel was able to access the website and see the contents referred to in Complainant's evidence. Be that as it may, however, based on the current materials, the Panel is not able to deny the possibility that Respondent uses or intends to use this fairly descriptive domain name for its bona fide offering of goods or services, even though such goods or services may be in competition with Complainant's goods or services. Complainant refers to some similarities between the contents of the parties' respective websites (e.g. the colors in the logos), but in the Panel's opinion, such similarities are not sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under this element.

 

Registration and Use in Bad Faith

Given the Panel's findings in the second element, it naturally follows that this third element cannot be established.

 

DECISION

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 <1800truckaccident.com> domain name REMAIN WITH Respondent.

 

 

 

 

Eugene I. Low, Panelist

Dated: May 10, 2024