DECISION

 

TruServ Corporation v. CreativeV

Claim Number: FA0107000097849

 

PARTIES

Complainant is TruServ Corporation, USA (“Complainant”) represented by Paul D. McGrady, Jr., of Ladas & Parry.  Respondent is Rachel Burke CreativeV, Wilmington, DE, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "truevalue.tv", registered with Dot.TV Corporation.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 2, 2001; the Forum received a hard copy of the Complaint on July 5, 2001.

 

On July 10, 2001, Dot.TV Corporation confirmed by e-mail to the Forum that the domain name "truevalue.tv" is registered with Dot.TV Corporation and that Respondent is the current registrant of the name.  Dot.TV Corporation has verified that Respondent is bound by the Dot.TV Corporation 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 July 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 2001 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.tv by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 10, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

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.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).  The facts of this case establish that each of the three elements set forth in Rule 4(a) of the uniform Domain Name Dispute Resolution Policy are satisfied, namely (1) The Offending Domains are confusingly similar to the TRUE VALUE Marks; (2)          The Respondent has no rights nor legitimate interests in this domain name; and  (3)    The circumstances surrounding the Respondent’s conduct establish that the Respondent has acted in bad faith.

 

B. Respondent

The Respondent has not filed a Response.

 

FINDINGS

Complainant TruServ is the international manufacturer and wholesale distributor for a cooperative of approximately 8,000 retail stores, most of which operate under TRUE VALUE service marks and sell a large range of products bearing the TRUE VALUE trademarks.  TruServ first adopted the TRUE VALUE service mark in 1963 and has used it without interruption since that date.

 

With annual sales of many billions of dollars, 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.

 

Complainant is the owner of several U.S. applications and registrations for the TRUE VALUE trademark and service mark. Complainant is also the owner of many other applications and registrations for TRUE VALUE marks in various foreign jurisdictions.  Further, Complainant has made extensive online use via the Internet of its TRUE VALUE marks through marketing directly to consumers at www.truevalue.com. 

 

Complainant was contacted by an individual identifying himself as “Steve Quinn” who purports to be a representative of the Respondent.  The telephone number Steve Quinn provided to Complainant’s representatives matches the telephone number of several other domain name registrations discovered by Complainant.  Steve Quinn informed Complainant’s representative that CreativeV intended to sell the domain name to an undisclosed third party competitor of Complainant.  Presumably, Steve Quinn contacted Complainant since CreativeV recognized Complainant’s valuable intellectual property rights to the TRUE VALUE marks and hoped that Complainant would attempt to block the sale of the domain name to the third party by offering to purchase the domain name.  Instead, Steve Quinn was informed that any such transfer would violate Complainant’s rights in the TRUE VALUE marks.  Steve Quinn telephoned again some days later to indicate that he intended to proceed with the transfer, regardless.  As of the date of the commencement of this case, Respondent was still the registrant of the domain name in question.

 

The Respondent has made no active use of the domain name.

 

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.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

 

Complainant has provided the registration documents for its TRUE VALUE marks, in multiple classes within the U.S.  I conclude that Complainant – as registered proprietor of the TRUE VALUE marks –  has established the first requirement of this paragraph.

 

The second requirement is that the domain name be identical or confusingly similar to the marks.  Several prior UDRP panels have held that the generic (gTLD) or country code (ccTLD) top level domain name suffix at the end of a domain name is not to be considered when comparing the domain name to a registered or common law trademark.  See World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation .tv does not serve to distinguish those names from Complainant’s marks since .tv is a common Internet address identifier that is not specifically associated with Respondent”); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Like in these prior cases, the inclusion of .tv in this case does nothing to add any distinctiveness that would help a consumer differentiate the domain name from the TRUE VALUE marks.  Thus, paying no attention to the .tv suffix, Complainant’s TRUE VALUE mark is identical to Respondent’s registered domain name.  See Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks); World Wrestling Fed’n Entm’t, Inc. v. Rapuano, DTV 2001-0010 (WIPO May 23, 2001) (“The disputed domain names <worldwrestlingfederation.tv>, <undertaker.tv>, <therock.tv>, <stonecold.tv> and <austin316.tv> are essentially identical to Complainant’s marks [WORLD WRESTLING FEDERATION, UNDERTAKER, AUSTIN 3:16, THE ROCK, and STONE COLD]”).

 

Complainant has shown that it has rights in trademarks, and that the domain name is identical to these marks.  I conclude therefore that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Respondent has asserted no rights or legitimate interests in the disputed domain names, and the Panel can detect none on the evidence before it.  In addition, there is no evidence that any of the methods of proving rights and legitimate interests set forth in paragraph 4(c) apply here.  The domain name is not the legal name of the Respondent.  The Respondent’s asserted name, “CreativeV”, does not incorporate the element TRUE VALUE in any way.  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).  Further, Respondent has made no active use of the domain name.

 

Moreover, two pieces of evidence specifically negate any assumption of legitimate use by the Respondent.  First is the long-term use and significance of the TRUE VALUE marks.  See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).  Second, the threat to sell the domain name to Complainant’s competitor if Complainant did not purchase the domain name from Respondent.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

Based on the above, Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain names, and has thus established the second element needed to prove abusive domain name registration and use.  I conclude therefore that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

The factual circumstances make it clear that upon registering the domain name Respondent was aware or should have been aware of the TRUE VALUE marks due to worldwide publicity, many dozens of registrations and applications, billions of dollars in revenues generated from sales, and TruServ’s maintenance of a website dedicated to the goods and services sold under the TRUE VALUE marks.  Thus, Respondent registered the "truevalue.tv" domain name in bad faith.  See Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

 

Further, Respondent contacted Complainant regarding the domain name in question.  In this conversation and others occurring thereafter, Respondent indicated that he was going to sell the domain name to Complainant’s competitor if Complainant would not purchase the domain name.  While no selling price was ever offered, Respondent’s threats reveal his bad faith registration and use of the domain name.  Notably, several prior UDRP panels have consistently supported this Panel’s conclusion that general offers of sale are evidence of bad faith registration and use.  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).  Thus, the Panel concludes that Respondent has registered or has acquired the domain name primarily for the purpose of selling it to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.  Policy ¶ 4(b)(i).

 

I conclude therefore that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "truevalue.tv" be transferred from the Respondent to the Complainant.

 

 

John J. Upchurch, Panelist

 

Dated:  August 17, 2001