Complainant is Detro Trailers LLC of Bainbridge, Indiana, United States of America, represented by Frost Brown Todd LLC, United States of America.
Respondent is John’s Trailer Sales, Inc. of Toledo, Ohio, United States of America, represented pro se. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2013. On March 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 March 22, 2013. On March 25, 2013, Complainant submitted a request for suspension of the proceedings until April 4, 2013. On March 27, 2013, the Center notified that the proceedings would be suspended until April 4, 2013. On March 28, 2013, the Center received an email communication from the technical contact appearing in the WhoIs database, and also received on April 3, 2013 an email communication from the person who claims to be the technical contact for the Domain Name. Subsequent to Complainant’s request on April 4, 2013, the Center notified to the Parties on the same date that the proceeding has been reinstituted as of April 4, 2013 and the due date for Response was April 19, 2013. The Response was filed with the Center on April 4, 2013.
The Center appointed Christopher S Gibson as the sole panelist in this matter on May 3, 2013. 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.
On April 22, 2013, Complainant filed a Supplemental Filing with the Center. The Panel determines that it will admit and consider this filing. 4. Factual Background
Complainant, Detro Trailers, including its predecessor’s in interest, partners, and related companies, has been engaged in the business of the retail sale of trailers and related parts and services for over 25 years. Complainant applied for registration of the DETRO trademark in the United States, Serial No. 85/810,514, for use in connection with trailer sales and services on December 26, 2012.
The Domain Name was registered on July 19, 2005. 5. Parties’ Contentions A. Complainant
Domain Name is Identical or Confusingly Similar to Complainant’s Trademark:
Complainant is located in central Indiana and sells trailers to customers from the Midwest region of the United States, stating that it is one of the largest trailer retailers in that area. In addition to applying for the DETRO trademark as noted above, Complainant submits that it has used other trademarks containing the word “Detro” for trailer sales and services and related products and accessories, and thus has common law trademark rights in such terms. Complainant has used DETRO as a trademark continuously and exclusively in connection with trailer sales and services since as early as 1990. Complainant maintains strict control over the use of its DETRO marks. Each year Complainant spends thousands of dollars on advertising, marketing and promotional materials with the DETRO marks in connection with offering trailers and related services to the consuming public. The advertising, marketing and promotion of trailer sales through use of the DETRO marks for over 25 years have caused consumers to recognize them as indicators of quality products and services, and to seek out and purchase trailers from Complainant rather than from other providers.
Complainant states that since 2003, it has owned and operated the domain name . Today, customers can review and shop for Detro Trailers via the website linked to this domain name. Accordingly, has become an important asset to Complainant and a key means of communicating with its customers and the public regarding retail trailer sales and accessories and services. Complainant has invested substantially in its website to make it not only an information source and a means of communicating with customers regarding its trailers, but also a means of influencing consumer purchases of trailers from Complainant.
Recently, Complainant states that it became aware that Respondent had registered the Domain Name, . Upon learning that the Domain Name had been registered by Respondent, Complainant investigated and reviewed the website linked to the Domain Name. Complainant claims that it is apparent Respondent set up its website to use the DETRO trademarks to re-direct trailer consumers to its competing retail store. As seen from screen shots of the website linked to the Domain Name, it is used to promote a competing retail trailer store called “John’s Trailer Sales,” which competes for the same consumers as Complainant in the Midwest region of the United States, including in the state of Indiana.
The website content associated with the Domain Name is a mirror image of the website content located at , including the information located at the bottom of the web pages. This web content advertises directly competing services, namely the sale of trailer products, and provides Internet consumers with sales information for John’s Trailer Sales. Complainant contends that Respondent, a direct competitor, registered the Domain Name in an effort to capitalize on the recognition of the DETRO mark by those seeking information on Detro Trailers, thus registering the Domain Name in bad faith. The Domain Name itself implies that Internet users and potential consumers can go to the site linked to the Domain Name to find information on Detro Trailers’ retail sales and services, which is false.
Complainant maintains that if a domain name incorporates a mark in its entirety, it is confusingly similar to that mark despite the addition of other words. The Domain Name incorporates the DETRO mark in its entirety. Moreover, the addition of the descriptive term “sales” to Complainant’s trademark in the Domain Name, which is registered for and used in connection with the promotion of competitive retail sales and services, only increases confusion to those consumers looking for Complainant’s retail sales and services. No rights or legitimate interests in respect of the domain name:
Complainant asserts that Respondent is not using the Domain Name for a legitimate, noncommercial or fair use. Respondent’s “John’s Trailer Sales” retail sales and services is directly competitive with Complainant’s “Detro Trailers” retail sales and services. Respondent’s intent is clear – to obtain a commercial advantage by intentionally misleading and diverting consumers who are looking for legitimate “Detro Trailers” retail sales and services. Such use is not legitimate; rather, it is an illegitimate use – a classic case of cybersquatting and infringement upon Complainant’s rights in its DETRO trademark.
Respondent's name does not include the term DETRO and Respondent is not otherwise commonly known as “Detro.” Respondent is not a distributor, a licensee, or otherwise affiliated with the Complainant. Again, Respondent is a direct competitor to Complainant and is profiting, in bad faith, by misdirecting those searching for Complainant’s services to Respondent’s directly competitive services. Domain Name was Registered and is Being Used in Bad Faith:
Complainant urges that the Domain Name was registered and is being used in bad faith, with a clear intent to profit from confusion. Complainant argues that misdirecting traffic to competitive retail sales and services has repeatedly been found to exemplify bad faith use and registration in UDRP proceedings. Respondent is capitalizing on the DETRO trademark by registering the Domain Name, which includes the DETRO mark, and then profiting from the resulting confused traffic that gets misdirected to that Domain Name.
Respondent’s use of the Domain Name containing the DETRO mark merely to capture customers of Complainant who are seeking trailer products is neither a legitimate, nor good faith, use of this Domain. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, Paragraph 4(b)(iv).
Complainant states that while Respondent’s website, located at , indicates ownership and operation of “John’s Trailers” for over 30 years, John’s Trailers did not open its second location in the state of Indiana until sometime in the year 2004 or thereafter. Accordingly, Respondent’s registration of the Domain Name occurred after it entered into the state of Indiana, where Complainant resides. Indeed, any argument (if made) that Respondent’s registration and use of the Domain Name is for any other purpose than to divert consumers away from Complainant would be beyond the pale. B. Respondent
Respondent states that the Domain Name was purchased and has been owned since 2006. Respondent explains that it is one of the largest enclosed trailer dealerships in the country, with USD7 million in sales per year. It also manufactures its own line of trailers and has been in business as a family owned company for 34 years.
Respondent claims it was in the process of establishing a trailer parts dealership in the Detroit, Michigan area, hence the choice of the Domain Name with the term “detrosales”. However, due to the deep recession that hit the United States, this project was put hold. Now that the economy is getting better, Respondent maintains that it plans to go forward soon and expand its dealership. Further, Respondent indicates that its current dealership is located two miles from the Michigan border and only a half hour from the Detroit, Michigan downtown area. Respondent states that they do shows in this area every year and have a large amount of business in the area. By contrast, Respondent contends that Complainant is located over 7 hours from Detroit.
Respondent emphasizes that its entire family lives in the southern Detroit, Michigan area. Respondent states that it would like to keep the Domain Name for the purpose of selling parts for trailers and aluminum tread plate boxes that are manufacture in Toledo, Ohio. Respondent argues that it does “not see why detro trailers thinks they should have any more rights to the name of detro sales then I do except that we live and operate our business and live in the DETROIT MI AREA.” Respondent emphasizes that Complainant uses Detro Trailers for its legal name and in its advertisements, not “detro sales”. C. Complainant’s Additional Submission
In its Supplemental Filing, Complainant emphasizes that its name is “Detro Trailers,” not “Detroit Trailers,” and that the Domain Name in this proceeding is , not . The Domain Name does not contain the name of a city or geographic region. Respondent in this proceeding has two dealership locations, one in Ohio and the other in Indiana. Complainant has its dealership location in Indiana. As such, Complainant argues that the city of Detroit, Michigan has nothing to do with this proceeding, except as an attempt by Respondent to confuse the issues by making unsupported claims. The Domain Name contains the trademark of Complainant in its entirety, namely, DETRO, having only added the generic term “sales.” Consumers looking for the sales information related to Complainant will instead find the sales information related to Respondent. Any consumer looking for trailer sales in the Detroit, Michigan area would enter “Detroit” into their web browser, not “Detro.” Moreover, the content associated with the Domain Name has absolutely no mention of Detroit, Michigan or the shows that Respondent alleges to have attended in that area. Lastly, Respondent registered the Domain Name after expanding its locations to Indiana, where Complainant is located. All of this, taken together, can lead to but one conclusion: Respondent registered the Domain Name with the intent of misdirecting traffic away from its Midwest competitor, Detro Sales, the Complainant in this proceeding. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant claims common law trademark rights in its mark, DETRO, based on use in commerce for over 25 years and spending thousands of dollars on advertising and marketing while promoting this mark in connection with its retail services and provided evidence of such in its submission. In December 2012, Complainant also applied for a United States trademark application for the mark DETRO citing a date of first use in commerce in 1990. Based on the submissions of the Complainant of evidence of use and of its trademark application, which has not been disputed by the Respondent, the Panel is prepared to find that the Complainant has demonstrated common law rights in DETRO for purposed of these proceedings which predate the initial registration of the Domain Name. See WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 1.7).
Complainant contends that the Domain Name, which incorporates the DETRO mark in its entirety, is confusingly similar to that mark despite the addition of the descriptive term “sales”. These two terms, “Detro” and “sales”, are used in combination in the Domain Name by Respondent in connection with the promotion of competitive trailer sales and related services.
The Panel finds that the Domain Name is confusingly similar to Complainant’s DETRO trademark, entirely incorporating the term while adding the descriptive word “sales” and the “.com” top-level domain, which does not change the overall impression. The descriptive word “sales” does not distinguish the Domain Name from Complainant’s DETRO mark, but only serves to increase the potential confusion to consumers looking for Complainant’s retail services. See WIPO Overview (the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant component of the domain name).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name.
A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Complainant submitted that it is not aware of Respondent having any legitimate rights to the use of the DETRO trademark, that Respondent registered the Domain Name only after expanding its locations to Indiana where Complainant is located, and that Respondent is using the website linked to the Domain Name for the purpose of promoting Respondent’s own directly competitive retail sales and services. The website linked to the Domain Name is used to promote a competing retail trailer store called John’s Trailer Sales, which serves consumers in the Midwest region of the United States, the same region where Complainant offers its commercial services.
Respondent has not denied that it is in the same line of business as Complainant and serves consumers in the same Midwest region. The evidence from Respondent’s website confirms this point. Respondent has acknowledged that Complainant’s proper name is “Detro Trailers”, while its own business name is John’s Trailer Sales. Respondent has argued that the Domain Name, which combines the term “Detro” with the word “sales”, is making an abbreviated reference to the city of Detroit, Michigan, which is allegedly close to Respondent’s Indiana location and sales area. To this point, Complainant has responded that Respondent has two dealership locations, one in Ohio and the other in Indiana, and that the city of Detroit has nothing to do with this case. Moreover, Complainant has observed that the content on Respondent’s website linked to the Domain Name makes no mention of Detroit.
The Panel determines Complainant has successfully established that Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is not Respondent’s business name and the evidence points to Respondent choosing the Domain Name only after opening a retail branch in Indiana, where Complainant is located and has been in the market for many years. Complainant has asserted that Respondent has been using the Domain Name to compete directly with the Complainant in an identical business, in an effort to divert consumers to the Respondent’s website. Normally, the use of confusingly similar domain names in association with providing competing goods and services does not constitute a bona fide offering of goods and services. See American International Group, Inc. v. Reggie Benjamin, NAF Claim No. 944242 (respondent’s use of a confusingly similar domain name to advertise real estate services which competed with complainant’s business did not constitute a bona fide offering of goods or services under paragraph 4(c)(i)) of the Policy; Computerized Security Systems, Inc. d/b/a SAFLOK v. Bennie Hu, FA NAF Claim No. 157321 (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
In view of the discussion above, the Panel finds that Respondent has been taking bad faith advantage of the Complainant’s name and trademark rights. The Panel determines under all of the facts and circumstances of this case, along with all reasonable inferences to be drawn from them, that Respondent registered and is using the Domain Name (i) for the purpose of disrupting the Complainant’s business, and (ii) to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DETRO mark. See Marriott International Inc. v. MCM Tours, Inc., NAF Claim No. 444510 (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); and AOL LLC v. AIM Profiles, NAF Claim No. 964479 (finding that the respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name).
For all of the above reasons, the Panel finds that all the Domain Name was registered and is being used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Christopher S Gibson
Sole Panelist
Date: May 22, 2013
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