WIPO Domain Name Decision D2003-0947 for trucklife.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Trucklife Limited v. Truckstop Supply Co. Limited

Case No. D2003-0947

 

1. The Parties

The Complainant is Trucklife Limited of, Croydon, Surrey, United Kingdom of Great Britain and Northern Ireland ("the Complainant"), represented by Sprecher Grier Halberstam LLP of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Truckstop Supply Co. Limited of London, United Kingdom of Great Britain and Northern Ireland (variously "the Respondent" and "the First Respondent"(see below)).

 

2. The Domain Name and Registrar

The disputed domain name ("the Domain Name") is registered with Tucows ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2003. On November 28, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact (Andrew Harris). The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on January 12, 2004.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 30, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complaint refers to the Respondent as the First Respondent and refers to Andrew Harris, the Respondent�s administrative and technical contact, as the Second Respondent. For convenience, the Panel adopts the same terms for the remainder of this decision.

 

4. Factual Background

The Complainant was incorporated in England on February 7, 2002, to supply accessories (such as kettles, plates, mugs, TVs, vacuum cleaners) for use in trucks.

According to the Complainant, it spent the first few weeks setting up in preparation for trade. It placed its first order with a supplier in March 2002, and supplied its first customer in April 2002. The documentary evidence shows that in April 2002, the Complainant was receiving invoices addressed to it by reference to its corporate name, for substantial quantities of supplies. There is, for example, an invoice from a Dutch supplier dated April 18, 2002, totaling in excess of �43,000. The earliest of the exhibited invoices is one for more than �8,000 dated April 4, 2002.

The First Respondent was incorporated in England in 1981. It is engaged in a similar field of activity to that in which the Complainant is engaged. The First Respondent was formed by the Second Respondent who is also the proprietor of another business, RoadPro Limited which, according to the Complainant, distributes accessories for trucks and caravans.

The Domain Name was registered by the First Respondent on April 18, 2002. On the same date the domain name, was registered on behalf of the First Respondent.

As at June 20, 2003, the date when the Complainant�s lawyers first wrote to the Second Respondent at RoadPro Limited, both the Domain Name and connected to the website of RoadPro Limited.

In the correspondence which followed the June 20 letter, the Second Respondent denied that he had been aware of the Complainant�s corporate/trading name when he registered the Domain Name. He stated that the Domain Name was generic. He denied any possibility of confusion resulting from the linking of the Domain Name to the RoadPro website. The Second Respondent declined to accede to the Complainant�s demand for transfer of the Domain Name.

On October 17, 2003, the Complainant filed a complaint with Nominet UK in respect of the domain name. The respondent to that complaint was the service provider who registered that domain name on behalf of the Respondents. However, on November 17, 2003, the Second Respondent filed a response in that administrative proceeding in which he made the following points (amongst others):

(a) he has been involved in the supply of accessories to truck drivers since 1979, and set up the First Respondent in 1981;

(b) he is also a journalist. Most of his journalistic activity has been in relation to publications concerned with trucking and truck drivers (e.g., TRUCKING magazine and TRUCK & DRIVER magazine);

(c) he registered the domain name in 1997, and created a website for it. He subsequently had the idea of starting his own online magazine for truck drivers. He registered several domain names with this in mind, all incorporating the word "truck" in one shape or form. His preferred name for the project is the Domain Name;

(d) he registered the Domain Name on April 18, 2002. At the time, he had no idea of the Complainant�s trading name;

(e) Peter Gilbert, the person behind the Complainant, used to work for the First Respondent in a senior position for several years. In the course of that time, the Second Respondent freely discussed his ideas with Mr. Gilbert;

(f) "after several unfortunate incidents, Mr. Gilbert left the company and I did not hear anything about him until I was told he was planning to set up his own company in the identical line of business. My informant did not know what Mr. Gilbert planned to call his company but I assumed that the name would include some reference to trucks or trucking."

(g) in response to an allegation that the Second Respondent had engaged in a pattern of making abusive registrations, the Second Respondent admitted that he had once had a dispute with a senior representative of a company named Avtex and that in retaliation he registered the domain name, ;

(h) the Complainant is engaged in a substantially identical business activity to that of the First Respondent. Mr. Gilbert has copied the First Respondent�s business model and is using the same suppliers and is selling to the same customers. This competitive activity has meant that the Second Respondent has had to spend more time on the business and has had to shelve the idea of using the domain name for his online magazine. Nonetheless, he means to pursue that project in due course.

 

5. Parties� Contentions

A. Complainant

The Complainant contends that it has common law rights (ie unregistered rights) in the trademark TRUCKLIFE in relation to its field of activity. It cites English legal authority in support of that proposition and claims that TRUCKLIFE is a common law/unregistered trademark in the hands of the Complainant. It contends that the Domain Name is identical to its trademark TRUCKLIFE.

The Complainant further contends that the Respondents have no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that none of the illustrative examples of what constitutes rights or legitimate interests, which are set out in paragraph 4(c) of the Policy, are applicable.

The Complainant contends that pointing the Domain Name to a competitor�s website cannot constitute fair use of the Domain Name. The Complainant also contends that the Second Respondent�s explanation set out in the Response to the Nominet UK Complaint is implausible. The Complainant observes that the Second Respondent made no reference to this reason for registering the Domain Name when he responded to the Complainant�s lawyers in August 2003.

The Complainant contends that the Domain Name was registered and is being used in bad faith and contends in this respect that paragraphs 4(b)(ii), (iii) and (iv) are applicable. The Complainant contends that the Second Respondent�s disingenuous explanation for the registration of the Domain Name is a further indication of bad faith.

B. Respondent

The Respondents have not responded. All that the Panel has from the Respondents is the Second Respondent�s response filed in the Nominet UK complaint. This was produced by the Complainant and the essence of it (insofar as it is relevant to this dispute) is set out above under "Factual Background."

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

Where a respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).

A. Identical or Confusingly Similar

Clearly, for the purposes of paragraph 4(a)(i) of the Policy, the Domain Name (absent the generic domain suffix) is identical to the Complainant�s claimed trademark TRUCKLIFE. But is TRUCKLIFE truly a trademark in the Complainant�s hands? While it is true that the Complainant�s fledgling business had hardly got off the ground by April 2002, it is plain that suppliers were by this time doing substantial business with the Complainant under the name TRUCKLIFE. The word "Limited" can be ignored in this context, it being a generic term which is commonly omitted when referring to companies.

The Panel has noted the well known English legal authorities submitted by the Complainant in support of the Complainant�s contention in this regard. The Panel is of the view that while the scope of the Complainant�s common law rights will have been very narrow in April 2002, they would have been sufficient to enable the Complainant to restrain a competitor using the name TRUCKLIFE in relation to precisely the same field of activity.

Accordingly, the Panel finds that the Complainant has rights in the trademark TRUCKLIFE and had those rights in April 2002, at the time the Domain Name was registered. Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Respondents� Rights or Legitimate Interests

The Respondents claim that the Domain Name was registered for the purposes of an online magazine. There is no suggestion that there is any other justification for registration of the Domain Name.

The Respondents� claim would have been sufficient to defeat this Complaint if the Respondents had been able to produce to the Panel some evidence of the Respondents� preparations to develop the magazine. The Respondents have not done so. Indeed, the Second Respondent has indicated that he has not had any time to do anything in this regard. Accordingly, all that the Panel has before it is a bare assertion. That is not enough.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

If, as the Respondents claim, when the Respondents registered the Domain Name they had no idea of the Complainant�s trading name and genuinely registered the Domain Name for the purpose claimed by the Second Respondent, namely for the purposes of an online magazine, the Complaint must fail.

Indeed, on the Respondents� story, the Respondents have serious grounds for complaint against Mr. Gilbert, the founder of the Complainant. On the Respondents� story, Mr. Gilbert, with knowledge of the Second Respondent�s plans for an online magazine, set up the Complainant using the very name that the Second Respondent intended to use as the principal element of his preferred domain name for that purpose.

However, the Panel is unable to accept the Respondents� explanation. The factors which have weighed with the Panel are as follows:-

(1) Had the Second Respondent really had plans of the kind he claims, he could have been expected to have registered the Domain Name much earlier;

(2) The Second Respondent has acknowledged that the Complainant�s suppliers and customers are the same as the Respondents� suppliers and customers. Accordingly, one would have expected the Respondents to have heard of the Complainant�s plans (including its trading name) very quickly after the Complainant started making contact with those suppliers/customers. On the evidence of the Complainant, which the Panel accepts, the Domain Name was registered a good ten weeks after the Complainant first went out into the marketplace under its corporate name. The Panel believes it improbable that the Second Respondent was not aware of the Complainant�s trading name at the date of registration of the Domain Name.

(3) The Second Respondent made no reference to his alleged plans when responding to the Complainant�s lawyers� allegations of passing off. Had these plans of the Second Respondent been genuine plans, one would have expected the Second Respondent to have come forward with that explanation up front. One would also have expected the Second Respondent to have gone on the offensive and expressed outrage at the Complainant�s behaviour.

(4) On a previous occasion when the Second Respondent fell out with someone, he registered that person�s company name as a domain name.

None of these factors on their own is conclusive, but taken together, in the Panel�s view, they represent a very strong indication that the Respondents registered the Domain Name with knowledge of the Complainant�s trading name/trademark. The purpose may have been to block the Complainant from registering the Domain Name. It may have been to disrupt the Complainant�s business. It may have been with a view to confusing Internet users, diverting would-be customers of the Complainant to the Respondents. It is to be noted that on registering the Domain Name the Respondents connected the Domain Name to a trading website of a competitor, RoadPro Limited, another company of the Second Respondent.

At all events, the Panel is satisfied, on the balance of probabilities, that the Respondents registered the Domain Name for one or more of those purposes. The Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(a)(iii) of the Policy and one or more of paragraphs 4(b)(ii),(iii) and (iv) of the Policy.

 

7. Decision

In light of the foregoing findings, namely that the Domain Name is identical to a trademark in which the Complainant has rights, that the Respondents have no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Domain Name be transferred to the Complainant.

 

 

Tony Willoughby
Sole Panelist

Dated: February 12, 2004

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