Complainant is Two Men and a Truck / International, Inc. of Okemos, Michigan, United States of America (“Complainant”) represented by Kilpatrick Townsend Stockton LLP, United States of America.
Respondent is Sky Moving and Storage of Hallandale, Florida, United States of America (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2011. On May 12, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2011. The Response was filed with the Center on June 30, 2011.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 22, 2011. 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. 4. Factual Background
Complainant is the largest franchised local moving company in the United States, with locations in thirty-two states. Complainant is engaged in licensing the use of its TWO MEN AND A TRUCK service marks (the “Mark” or “Marks”) and moving-services operating system. Complainant currently has more than two hundred locations operating worldwide under the trade name and Mark TWO MEN AND A TRUCK. Complainant is the holder of numerous Marks on the Principal Register of the United States Patent & Trademark Office, including, but not limited to:
MARK REGISTRATION NO. REGISTRATION DATE
TWO MEN AND A 1,953,964 February 6, 1996
TRUCK & Design
TWO MEN AND A 2,020,083 December 3, 1996
TRUCK
TWO MEN AND A 3,006,814 October 18, 2005
TRUCK
TWO MEN AND A 3,006,815 October 18, 2005
TRUCK & Design
In addition, Complainant holds numerous registrations throughout the world for the TWO MEN AND A TRUCK Mark, including trademark registrations in Canada, Mexico, Ireland, the People’s Republic of China, India, New Zealand and the European Community. Moreover, Complainant registered and is using the domain name to provide information concerning Complainant, its franchisees, and its moving services on its website.
According to the publicly available WhoIs information Respondent in this administrative proceeding is Sky Moving and Storage, registrant of the Disputed Domain Name, . 5. Parties’ Contentions A. Complainant
Complainant in this administrative proceeding is Two Men and a Truck / International, Inc. of Okemos, Michigan, United States of America. Complainant claims that Respondent has deliberately infringed Complainant’s invaluable rights in its TWO MEN AND A TRUCK Mark through the unlawful registration of the Disputed Domain Name, . Complainant claims that it has satisfied the three requisite elements under the Policy and requests that the Disputed Domain Name be transferred to it.
Complainant contends that the Disputed Domain Name is confusingly similar to its TWO MEN AND A TRUCK Mark. The Disputed Domain Name, , contains the identical TWO MEN AND A TRUCK Mark with the mere addition of the generic term “inc.”. Complainant contends that the addition of this generic term does not detract from—but rather adds to—the confusing similarity. Further, Complainant claims that the fact that Respondent owns the Disputed Domain Name, which contains the identical Mark owned by the Complainant, leads to the inevitable conclusion that the Disputed Domain Name is confusingly similar to the Mark in which Complainant has rights.
Complainant further contends that Respondent cannot demonstrate or establish any rights or legitimate interests in the Disputed Domain Name. Respondent registered the Disputed Domain Name long after Complainant had established rights in its TWO MEN AND A TRUCK Mark through extensive use. There is no relationship between Complainant and Respondent that gives rise to any license, permission, or other right by which Respondent could own or use the Disputed Domain Name incorporating Complainant’s TWO MEN AND A TRUCK Mark. Respondent is not an authorized franchisee of Complainant and there has never been any business relationship between Complainant and Respondent. Complainant does not sponsor or endorse Respondent’s activities in any respect and has not provided its consent to Respondent’s use and exploitation of the TWO MEN AND A TRUCK Mark in the Disputed Domain Name.
Finally, Complainant claims that Respondent registered and is using the Disputed Domain Name in bad faith. According to the Complaint, by using the Disputed Domain Name , Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the TWO MEN AND A TRUCK Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. B. Respondent
Respondent is Sky Moving and Storage of Hallandale, Florida, United States of America. Respondent claims that it chose the Disputed Domain Name because of the descriptive nature of the name. It further claims that the words in the Disputed Domain Name are very common in the moving industry and that it may be legitimate to register a domain name consisting of dictionary words as well as to use the website to which the domain name resolves to provide content that is relevant to the meaning of those words.
Respondent also contends that it is not attempting to capitalize on Complainant’s Mark because it had no knowledge of Complainant prior to this proceeding. Therefore, Respondent states that the Disputed Domain Name cannot have been registered in bad faith.
Significantly, Respondent states that it agrees to transfer the Disputed Domain Name at no cost to Complainant provided that Complainant terminate this proceeding and agree that it will not commence any other legal proceedings against Respondent or its representative with respect to this matter. 6. Discussion and Findings
Since Respondent now seems to agree to transfer the Disputed Domain Name to Complainant, this proceeding may be moot. However, in an abundance of caution, the Panel will proceed with its analysis. The Panel notes that paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that “some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits.” A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name and the TWO MEN AND A TRUCK Mark are confusingly similar for purposes of paragraph 4(a)(i) of the Policy. The test of confusing similarity under the first element is an objective comparison between the domain name and the complainant’s trademark in appearance, sound, meaning, and overall impression. See, e.g., Hertz System, Inc. v. Jeff Park,WIPO Case No. D2007-1120 (and cases cited therein); Referral Experts LLC v. Integrated Medical Solutions Corporation,WIPO Case No. D2007-0231. Since “two men and a truck” is the distinctive portion of the Complainant’s Mark, the Panel finds that the Disputed Domain Name meets this objective test of confusing similarity. Moreover, the addition of the generic term “inc”, which merely denotes Complainant’s corporate structure, does not detract from, but rather adds to, the confusing similarity. See Inter IKEA Systems B.V. v. InterikEA.com, Inc.,WIPO Case No. D2006-1379 (“Panels have held on many occasions that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and where only a generic word has been added.”). Therefore, the Panel finds that the first element of the Complaint has been met. B. Rights or Legitimate Interests
The Panel finds that Respondent cannot demonstrate or establish any rights or legitimate interests in the Disputed Domain Name. First, Respondent registered the Domain Name long after Complainant had established rights in its TWO MEN AND A TRUCK Mark through extensive use.
Second, while Respondent correctly asserts that it may be legitimate for a respondent to register a domain name consisting of a dictionary word or words and use the website to which it resolves as a resource for information relevant to the common meaning of the dictionary word or words, this business model is legitimate only if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks.” Landmark Group v. DigiM, L.P., NAF Case No. 285459; see also National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; WIPO Overview 2.0, paragraph 2.2. Indeed, panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning and not, for example, as here, to trade off third-party rights in such word or phrase. WIPO Overview 2.0, paragraph 2.2.
Third, there is no relationship between Complainant and Respondent that gives rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s TWO MEN AND A TRUCK Mark. Respondent is not an authorized franchisee of Complainant and there has never been any business relationship between Complainant and Respondent. Complainant does not sponsor or endorse Respondent’s activities in any respect and has not provided its consent to Respondent’s use of the TWO MEN AND A TRUCK Mark in the Disputed Domain Name and on the website to which it resolves. See Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S, WIPO Case No. D2006-0912 (“neither the Respondent nor Mr. Ozkutuk can claim a legitimate right or interest in the disputed domain name . . . [because] use of the disputed domain name was at no point licensed or approved by the Complainant”). Therefore, the Panel finds that the second element of the Complaint has been met. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith. The inclusion of a well known trademark in a domain name, of which the respondent must reasonably have been aware, constitutes opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
It strains credulity to believe that Respondent did not know of Complainant’s Mark when it registered the Disputed Domain Name. First, Complainant has numerous federally registered Marks and is the largest franchised local moving company in the United States, where the Respondent is located, with locations in thirty-two states. Complainant is engaged in licensing the use of its TWO MEN AND A TRUCK Mark and moving-services operating system and currently has more than two hundred locations operating worldwide under the Mark TWO MEN AND A TRUCK. Thus, as a member of the trade, Respondent must reasonably have been aware of Complainant and its business. Second, in this Panel’s view, when a company holds incontestable Marks, as does Complainant, the consuming public – and certainly those in the same industry – are deemed to have constructive knowledge of those Marks. Indeed, Complainant’s Marks have acquired a high degree of public recognition and distinctiveness as a symbol of the source of high quality services offered by Complainant, and embody valuable reputation and goodwill belonging exclusively to Complainant. Lastly, Respondent registered the Disputed Domain Name on February 9, 2011, long after the TWO MEN AND A TRUCK Mark became well known in the United States. Therefore, Respondent’s registration and use of the Disputed Domain Name constitutes opportunistic bad faith.
The Panel finds that Respondent’s bad faith registration and use of the Domain Name are further evidenced by the fact that Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s TWO MEN AND A TRUCK Mark as to the source, affiliation, or endorsement of the website. Respondent could only have registered the Disputed Domain Name, which is so confusingly similar to Complainant’s Mark, to capitalize on the valuable goodwill associated with the Mark by using the Disputed Domain Name to sell its competitive moving services. See Hilton Group plc v. Forum LLC,WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith). Therefore, the Panel finds that the third element of the Complaint has been met. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name, , be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Dated: July 25, 2011
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