The True Value Company v. Michele Dinoia
d/b/a SZK.com
Claim Number: FA0508000548290
Complainant is The True Value Company (“Complainant”),
represented by Kristine M. Boylan,
of Merchant & Gould P.C., 3200
IDS Center, 80 South Eighth Street, Minneapolis, MN 55402-2215. Respondent is Michele Dinoia d/b/a SZK.com
(“Respondent”), Via Trilussa 11,
Pineto, TE 64025, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwtruevalue.com>,
registered with Dotster, Inc.
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.
Judge Harold Kalina (Ret.)
as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 30, 2005.
On
September 6, 2005, Dotster, Inc. confirmed by e-mail to the National
Arbitration Forum that the <wwwtruevalue.com>
domain name is registered with Dotster, Inc. and that Respondent is the current
registrant of the name. Dotster, Inc.
has verified that Respondent is bound by the Dotster, 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
September 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 27, 2005 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@wwwtruevalue.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 30, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Judge Harold Kalina (Ret.) 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwtruevalue.com> domain name is confusingly similar to
Complainant’s TRUE VALUE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwtruevalue.com>
domain name.
3. Respondent registered and used the <wwwtruevalue.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
True Value Company is an international manufacturer and wholesale distributor
for a cooperative of approximately 8,000 retail stores, including hardware
stores. Complainant first used its TRUE
VALUE mark in commerce in 1963.
Complainant owns
dozens of trademark registrations world-wide for the TRUE VALUE mark. Complainant has registered the TRUE VALUE
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,165,207 issued August 18, 1981).
Respondent
registered the <wwwtruevalue.com> domain
name on July 13, 2003. Respondent’s
domain name resolves to a website featuring links to third-party commercial
websites that directly compete with Complainant’s business.
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."
In view of
Respondent's failure to submit a response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that the respondent’s failure to respond allows all reasonable inferences of
fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint.”).
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
asserts that it has established rights in the TRUE VALUE mark through
registration with the USPTO. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Respondent’s <wwwtruevalue.com> domain name is
confusingly similar to Complainant’s TRUE VALUE mark because the domain name
incorporates Complainant’s mark in its entirety and merely adds the prefix
“www” to the mark. Such a change is not
enough to overcome the confusingly similar aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See Marie Claire Album v. Blakely,
D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not
distinct in the “Internet world” and thus the respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark); see
also Bank of Am. Corp. v. InterMos,
FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain
name <wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF AMERICA because it “takes advantage of a typing
error (eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <wwwtruevalue.com> domain
name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp.
v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[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.").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <wwwtruevalue.com> domain
name. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Respondent is
using the <wwwtruevalue.com> domain
name to operate a website featuring commercial links to various third-party
websites, through which Respondent presumably receives referral fees. Thus, the Panel finds that Respondent’s use
of a domain name that is confusingly similar to Complainant’s mark to divert
Internet users to third-party websites for Respondent’s own commercial gain
does not constitute 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).
See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Dec. 31, 2002) (finding that respondent’s diversionary use of complainant’s
marks to send Internet users to a website which displayed a series of links,
some of which linked to competitors of complainant, was not a bona fide offering of goods or
services); see also Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
Moreover,
Respondent is not commonly known by the <wwwtruevalue.com>
domain name. Thus, the Panel
concludes that Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum
Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Complainant also avers that Respondent lacks rights and legitimate interests in
the <wwwtruevalue.com> domain
name because Respondent’s addition of the prefix “www” to Complainant’s TRUE
VALUE mark constitutes typosquatting.
Thus, the Panel finds that Respondent’s use of the <wwwtruevalue.com> domain name constitutes typosquatting, which is evidence that
Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii)
. See
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that respondent’s
<wwwdinersclub.com> domain
name, a typosquatted version of complainant’s DINERS CLUB mark, was evidence in
and of itself that respondent lacks rights or legitimate interests in the
disputed domain name vis-à-vis complainant); see also Black & Decker Corp. v.
Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or
legitimate interests where the respondent used the typosquatted
<wwwdewalt.com> domain name to divert Internet users to a search engine
webpage, and failed to respond to the complaint).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party commercial websites. Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv), as Respondent is using the <wwwtruevalue.com>
domain name to intentionally attract, for commercial gain, Internet users
to its website, by creating a likelihood of confusion with Complainant as to
the source, sponsorship, affiliation or endorsement of its website. See
H-D Michigan, Inc. v. Petersons Auto,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Complainant also
asserts that Respondent registered and used the <wwwtruevalue.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent has a
long history of engaging in patterns of registering domain names confusingly
similar to the marks of trademark holders.
Respondent has had at least thirty-two successful UDRP actions filed
against it. Thus, the Panel finds that
Respondent’s registration and use of the <wwwtruevalue.com>
domain name, along with its long established pattern of registering domain
names that reflect the marks of others is evidence that Respondent registered
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See
Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17,
2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering
multiple domain names that infringe upon others’ famous and registered
trademarks); see also Australian Stock
Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶
4(b)(ii) where the respondent registered multiple infringing domain names containing
the trademarks or service marks of other widely known Australian businesses).
Moreover,
Complainant contends that Respondent registered and used the disputed domain
name in bad faith because Respondent’s <wwwtruevalue.com>
domain name is merely a typosquatted variation of Complainant’s TRUE VALUE
mark. The Panel finds that Respondent’s
registration and use of the typosquatted domain name constitutes bad faith
registration pursuant to Policy ¶ 4(a)(iii).
See Zone
Labs, Inc. v. Zuccarini, FA 190613
(Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of
[the <zonelarm.com> domain name] that capitalizes on the typographical
error of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is
the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”); see also Black & Decker Corp. v. Khan,
FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com>
domain name was registered to “ensnare those individuals who forget to type the
period after the ‘www’ portion of [a] web-address,” which was evidence that the
domain name was registered and used in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwtruevalue.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 12, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum