BODIS

#TruckPro USA .com : Business gets hit with #UDRP, wins but no #RDNH finding

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UDRP has been denied.

TruckPro LLC attempted to take the domain TruckProUSA.com from its owners, a trucking business located in Tennessee, via the UDRP process.

The domain is being actively used for products and services unrelated to those of the Complainant, and it’s not warehoused or parked for profit. The Respondent pointed out in their response to the UDRP:

“Respondent is commonly known by the disputed domain name as it operates its ecommerce business in connection with the trade name “TruckProUSA.” Additionally, Respondent does make a bona fide offering of goods or services as Respondent is not a competitor. Rather, Complainant’s website appears to offer parts for commercial trucks while Respondent does not offer these types of products. Furthermore, Respondent’s website, logo, and overall appearance is much different than Complainant’s website.”

One dissenting panelist stated that the Complainant should be slammed with a finding of Reverse Domain Name Hijacking; however, the majority decision of the panel was against such a finding.

Full details of this decision for TruckProUSA.com follow:

TruckPro, LLC v. Michael Cohn / H&H Enterprises

Claim Number: FA1811001815412

PARTIES

Complainant is TruckPro, LLC (“Complainant”), represented by Kathryn K. Van Namen of Butler Snow, LLP, Tennessee, USA. Respondent is Michael Cohn / H&H Enterprises (“Respondent”), represented by Edward Playfair of Adams and Reese, LLP, Tennessee, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <truckprousa.com>, registered with GoDaddy.com, LLC.

PANEL

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.

Michael A. Albert (Panel Chair), The Hon. Neil Anthony Brown QC, and David S. Safran as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 7, 2018; the Forum received payment on November 14, 2018.

On November 8, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <truckprousa.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 November 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2018 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@truckprousa.com. Also on November 19, 2018, 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 December 14, 2018.

On December 19, 2018, an Additional Submission dated was received from Complainant. On December 24, 2018 an Additional Submission was received from Respondent.

On December 26, 2018, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert as Panel Chair and The Hon. Neil Anthony Brown QC and David S. Safran as Panelists.

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

PARTIES’ CONTENTIONS

A. Complainant’s allegations are as follows:

Complainant is one of the largest independent retailers and distributors of heavy-duty, aftermarket truck parts and services. Complainant has rights in the TRUCKPRO mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,371,324, registered Jul. 25, 2000). Respondent’s <truckprousa.com> domain name is confusingly similar to Complainant’s TRUCKPRO mark as Respondent merely adds the geographic suffix “usa” and a “.com” generic top-level domain (“gTLD”) to the mark.

Respondent has no rights or legitimate interests in the <truckprousa.com> domain name. Respondent is not authorized or licensed to use Complainant’s TRUCKPRO mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users in order to directly compete with Complainant.

Respondent registered and uses the <truckprousa.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it offers competing goods and services. Further, Respondent had actual and constructive knowledge of Complainant’s rights in the TRUCKPRO mark prior to registering and subsequent use of the disputed domain name.

B. Respondent’s allegations are as follows:

Respondent operates an e-commerce website that offers aftermarket accessories intended for individual owners of pickup trucks and jeeps to outfit their personal vehicles.

Complainant cannot establish rights in the TRUCKPRO mark as it fails to function as a trademark. Specifically, Complainant fails to provide evidence to support its contentions that the mark is famous or well-known. Further, Complainant’s mark is comprised of generic or descriptive terms, and Complainant is not entitled to exclusive rights in these terms. Respondent also provides various examples of the TRUCKPRO mark being used by third parties.

Respondent has rights and legitimate interests in the <truckprousa.com> domain name. Respondent is commonly known by the disputed domain name as it operates its ecommerce business in connection with the trade name “TruckProUSA.” Additionally, Respondent does make a bona fide offering of goods or services as Respondent is not a competitor. Rather, Complainant’s website appears to offer parts for commercial trucks while Respondent does not offer these types of products. Furthermore, Respondent’s website, logo, and overall appearance is much different than Complainant’s website.

Respondent did not register or use the <truckprousa.com> domain name in bad faith. Respondent does not disrupt Complainant’s business nor attempt to confuse users as to source, sponsorship, affiliation, or endorsement of its website. Rather, Complainant and Respondent operate in two different industries and are not competitors. Further, Complainant’s assertion that Respondent had constructive knowledge is insufficient for a finding of bad faith.

C. Additional Submissions

Complainant

Complainant contends that the TRUCKPRO Mark is not generic or descriptive. Attempts to analogize other purportedly generic marks containing either the words “truck” or “pro” with the TRUCKPRO Mark fail because they do not account for the distinctiveness of the combination of the words contained in TRUCKPRO. Panels have held that the mark must be viewed as a whole and not by dissecting the terms of which it is comprised.

Complainant contends that it is famous and well-known and that TruckPro spends approximately $1,000,000 annually to participate in at least three national trade shows attended by more than 20,000 people, and hosts its own industry event for its employees with national vendors, through which it continues to advertise the goods and services it provides in conjunction with the TRUCKPRO Mark. TruckPro reiterates that the WHOIS information available for the disputed domain name does not establish that Respondent is commonly known by the disputed domain name.

Lastly Complainant contends that the TRUCKPRO Mark is not limited to heavy-duty trucks and trailers. While Respondent argued that Complainant’s business model targets a “heavy-duty” customer that is different than those customers attracted to the disputed domain name, Respondent also offers products and services geared to the heavy-duty truck and trailer industry. Until only a few weeks ago, Respondent offered a vehicle selection option through the disputed domain name which included heavy-duty trucks, including Freightliner, Peterbilt, and others. Respondent has since removed the heavy duty vehicles from the selection in an effort to support its self-serving argument that there is no competition between the parties. However, the disputed domain name currently provides links to additional sites, including <pickupfortrucks.com>, which includes the exact same vehicle make, model, and year selection, including heavy-duty trucks like Freightliner, International, and Peterbilt. See Exhibit I, screenshots of heavy-duty trucks advertised through links at the disputed domain name. The <picksupsfortrucks.com> domain name is also registered to H&H Enterprises of Alabama and appears to be associated with Respondent. See Exhibit J, WHOIS information for <pickupsfortrucks.com>. Respondent presumably receives fees or additional profit for the link.

Respondent

Respondent requests that the Panel refuse to consider Complainant’s Additional Submission and the evidence included therein. Complainant filed its Additional Submission pursuant to Supplemental Rule 7, which prohibits additional submissions made for purposes of amending the Complaint. Complainant’s Additional Submission introduces several additional exhibits, some of which are duplicative of those submitted in the Amended Complaint or in the Response (i.e., Exhibits A-D and H to Complainant’s Additional Submission), and others representing a clear attempt to fill in the evidentiary gaps noted by Respondent in its Response.

Respondent H&H Enterprises is a family-run business consisting of several divisions, one of which is “TruckProUSA.” The target consumer of all of these divisions is the same: a pickup truck or jeep enthusiast looking to outfit his or her personal vehicle with off-roading and other recreational accessories. Accordingly, many of Respondent’s websites link to one another to promote the bona fide goods and services offerings on each website, and not, as alleged by Complainant, as part of a bad faith scheme to generate “fees or additional profit for the link.”

Complainant’s Additional Submission, like its Amended Complaint, contains allegations of bad faith regarding the filter tools on Respondent’s websites. Yet the record in this proceeding remains utterly devoid of evidence in support of the allegations.

Respondent’s counsel contacted counsel for Complainant via telephone on November 15, 2018 in an attempt to resolve the matter. During this call, Complainant’s counsel asserted that the filters infringed Complainant’s trademark rights. While disputing all of Complainant’s claimed trademarks rights and allegations of infringement, Respondent nonetheless decided to make changes to the website (specifically, by blocking product search results for any large commercial truck “makes” independently entered into the free text search field, and by removing certain “make” and “model” filters referenced by Complainant), in hopes that such changes might resolve the matter. Respondent made these changes in the spirit of compromise, not with any nefarious intent to cover its tracks. Complainant’s continued pursuit of this UDRP proceeding compounds its own bad faith.

FINDINGS

The above factual disputes, set forth in some detail in both the opening and supplemental submissions of each party, are indicative of the type of trademark dispute ill-suited to resolution under the Policy. Each party has brought forth some plausible evidence regarding its position. Complainant, which bears the burden of proof on each of the three elements required by the Policy, fails to adduce sufficient evidence on two of those three elements to persuade this Panel to alter the status quo with regard to ownership of the domain name registration at this time. Nothing in this decision, however, shall be deemed to prejudge any legal dispute that may be brought by the parties to a tribunal of competent jurisdiction.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant is undisputedly one of the largest independent retailers and distributors of heavy-duty, aftermarket truck parts and services. Complainant also undisputedly holds trademark registrations for the TRUCKPRO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,371,324, registered Jul. 25, 2000). While Respondent contends that these marks should be deemed invalid, its reasoning and evidence fail to rise to a level sufficient for this Panel to be able to find that the USPTO’s issuance of the trademarks was in error. As it is well established that ownership of a trademark registration is prima facie evidence of trademark rights, and as this Panel does not find that it can, on the present record, disregard that registration, Complainant has (at least for purposes of the present proceeding) established ownership of trademark rights in the TRUCKPRO mark.

Respondent’s <truckprousa.com> domain name is confusingly similar to Complainant’s TRUCKPRO mark as Respondent merely adds the geographic suffix “usa” and a “.com” generic top-level domain (“gTLD”) to the mark. It is well established that such additions generally do not avoid a finding of confusing similarity.

Complainant has thus met its burden to establish the first element under the Policy.

Rights or Legitimate Interests AND Registration and Use in Bad Faith

In this case, the Panel considers the second and third factors together as the evidence relating to these factors is closely intertwined.

Complainant fails to establish either the second or third elements under the Policy, namely that Respondent lacks rights or legitimate interests or that Respondent has registered and used the disputed domain name in bad faith.

While the Panel does not have sufficient evidence from which to determine what the outcome might be of a fully-litigated trademark dispute surrounding these issues, the present record does contain some plausible evidence of Respondent’s legitimate business usage of the TruckProUSA trade name. Complainant’s mark has not been shown to be so strong or famous so as to give rise to an inference that Respondent must necessarily have chosen a variant of that mark with an intent to trade on Complainant’s goodwill. Furthermore, Respondent has made at least a prima facie showing that its business, while not unrelated to Complainant’s, has a sufficiently different target customer base so as to decrease the risk of actionable confusion. For these reasons, Respondent’s evidence leaves the Panel unpersuaded that Complainant has met its burden to prove either Respondent’s alleged lack of rights or legitimate interests or Respondent’s alleged bad faith.

Consideration of Supplemental Submissions

Respondent has argued that, for various reasons, Complainant’s supplemental submissions are improper and should be disregarded. In view of the Panel’s holdings set forth herein, this issue is moot inasmuch as the outcome would not vary should the supplemental submissions be disregarded. Accordingly, the Panel has considered them.

Reverse Domain Name Hijacking

Respondent asks the Panel to find this case to be one of Reverse Domain Name Hijacking (RDNH). Rule 15(e) allows the Panel to make a finding of RDNH when Respondent establishes that the Complaint was filed in bad faith and/or primarily to harass Respondent.

The Panel finds that Respondent’s evidence does not suffice to show RDNH.

Respondent, as well as a dissenting Panelist (whose opinion is set forth below), contend that a finding of RDNH is warranted because Complainant should have known that it could not succeed on any fair interpretation of the facts, and because it allegedly misled the Panel by failing to note that a response to its cease-and-desist letter was received.

The Panel does not find Respondent to have met its burden of proof on RDNH based on these two contentions. As to the first contention, the Panel notes that Complainant has undisputedly owned the mark in question, and used it in business, for some 40 years. The disputed domain name is plainly similar in that it uses the identical mark with merely the geographic designation USA (and the TLD “.com”) added. The mark is registered by the USPTO, which has never found (or as far as the Panel is aware ever been asked by Respondent or anyone else to find) that it is generic. We thus respectfully disagree with the Dissenting Panelist’s characterization of the mark as “substantially generic in character.” While the strength of the mark may certainly be a matter for litigation should the parties choose to proceed down that path, numerous factors play into a determination of trademark strength and on the present record we do not believe we can disregard the USPTO’s finding that it is a properly registered trademark. In light of its trademark registration and its 40-years of business use, Complainant seems to us to have had a plausible (albeit ultimately non-prevailing) position in filing this proceeding.

The Dissent also relies for its RDNH views on Complainant’s failure to disclose in its Complaint that Respondent sent a letter in response to Complainant’s cease-and-desist letter. The Panel agrees that a more complete disclosure of the full factual record would have been preferable. Nevertheless, we do not find the omission of this detail to have been deliberately deceptive. There are word limits on Complaints filed under the Policy and reasonable judgment calls need to be made regarding what materials are most relevant to a particular Complaint. Here, Complainant’s point in noting that it had sent a cease-and-desist letter appears simply to have been to indicate that it had engaged in some effort to resolve the dispute. The fact that a response was received may not have seemed material to this point, inasmuch as evidently the dispute was not thereby resolved. Moreover, the Panel does not believe it appropriate to impose a burden on complainants to use their limited space to help make a respondent’s case, as long as the disclosures made in the Complaint are not misleading or materially incomplete. (For instance, had Complainant misled the Panel by falsely denying that it had received any response, the situation would be much different.) Proceedings under the Policy are adversarial in nature, and respondents can be relied upon to identify relevant and responsive materials that they believe help support their positions without it necessarily being the complainant’s responsibility to do so for them.

DECISION

Complainant having failed to establish two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <truckprousa.com> domain name REMAIN WITH Respondent, without prejudice to either party’s right to seek judicial redress with regard to any trademark or other disputes in a court of competent jurisdiction to hear such disputes. The Panel does not find RDNH.

Michael A. Albert, Panel Chair

David S. Safran, Panelist

Dated: January 7, 2019

SEPARATE OPINION BY THE HONOURABLE NEIL ANTHONY BROWN QC ON THE ISSUE OF REVERSE DOMAIN NAMNE HIJACKING

Panelist Brown would make a finding of Reverse Domain Name Hijacking. Findings of Reverse Domain Name Hijacking should be made only when the case for doing so is clear on the evidence. The present proceeding is one such case. It must have been very clear to Complainant that this case would fail as there was no evidence in support of the second or third elements and in particular that there was no evidence that Respondent, having registered a domain name that was substantially generic in character, had targeted Complainant or its business or acted in any inappropriate way towards it, or indeed that it had shown any interest in Complainant at all during the almost 8 years when it, Respondent, owned and used the domain name for its own e-commerce business. Not only was that so, but there was no serious attempt to present any such evidence. Clearly, a finding of RDNH will not be made simply because a complainant’s case is weak, but in the present proceeding there was no case at all against Respondent on the evidence and yet it was pursued.

There is, however, an additional reason why a finding of RDNH should be made. Respondent argued that Complainant had not been entirely frank with the Panel and this panelist is disposed to agree with Respondent. Complainant had relied on its letter of demand to Respondent of August 28, 2018 and its contents. Complainant did not reveal, however, that Respondent had replied to that letter on September 13, 2018, giving reasons why it had a case for retaining the domain name. That fact was not revealed until Respondent revealed it in its Response, showing why it had at least a plausible case for retaining the domain name. That information was therefore in the hands of Complainant when it made its decision to file the Complaint which was on November 7, 2018. Respondent submits that this sequence of events meets one of the criteria that can justify a finding of RDNH, as was illustrated by the decision in Tenaris Connections BV v. Domain Admin, HugeDomains.com, WIPO Case, No. D2018-1849 (Oct. 16, 2018), namely (1) where a complainant provides “intentionally incomplete material evidence – often clarified by the respondent.”

For the combination of those reasons, this Panelist is of the view that a finding of RDNH is appropriate.

Hon. Neil Anthony Brown, QC Panelist


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