WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Two Men and a Truck / International, Inc. v. Jason Rager / Paydues Inc.
Case No. D2011-1312
1. The Parties
The Complainant is Two Men and a Truck / International, Inc. of Lansing, Michigan, United States of America represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Jason Rager / Paydues Inc. of Santa Fe, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name <twomenandatruckfranchise.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On August 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On August 2, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2011. The Respondent transmitted an email to the Center on August 23, 2011, stating:
I am sorry, I have been ill. Can I file for an appeal?”.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 25, 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
The Complainant has registered trade marks for TWO MEN AND A TRUCK in, inter alia, the United States for moving services with use in commerce back to 1988. The Respondent has used the Domain Name to point to a site seeking customers wanting to become a TWO MEN AND A TRUCK franchise and offering a free Two Men And A Truck toolkit.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
The Complainant is the largest franchised local moving company in the United States, with locations in thirty-two states. It is engaged in licensing the use of its TWO MEN AND A TRUCK service mark and moving services operating system. The Complainant has more than two hundred franchised locations operating worldwide under its mark. It has used its trade mark in commerce since 1988 and has various registrations including TWO MEN AND A TRUCK including in the United States where the Respondent is based.
The Respondent registered the Domain Name to seek customers interested in becoming TWO MEN AND A TRUCK franchisees. The site offers a form to fill in to get further information and an option to download “our free two men and a truck franchise toolkit”.
The Domain Name is confusingly similar to the Complainant’s mark incorporating the mark in its entirety with the mere addition of the generic term “franchise” which merely denotes the Complainant’s franchising structure and, therefore, adds to the confusion caused.
The Respondent cannot demonstrate any rights or legitimate interest in the Domain Name. It registered the Domain Name long after the Complainant established rights in its mark through extensive use.
There is no relationship between the Complainant and the Respondent. The Respondent is seeking to create an aura of affiliation with the Complainant by using the Complainant’s mark in the Domain Name. This is a parasitic exploitation of the Complainant’s valuable goodwill and reputation for commercial gain, in bad faith and in violation of the Policy. The Respondent has no right to exploit the Complainant’s mark to promote its own unrelated services. It is clearly commercial use and designed to divert customers seeking information about the Complainant’s franchising system to the Respondent.
The Respondent has registered and used the Domain Name in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the web site. The Respondent’s repeated and prominent use of the Complainant’s mark on its web site only serves to strengthen the appearance of an association with the Complainant. It may also be using the Complainant’s mark to harvest sensitive user information for commercial purposes.
The Respondent did not reply to the Complainant’s contentions. He replied after the due date for a Response saying he had been ill and asking if he could appeal in an email to the Center, but no further information has been submitted to the Panel.
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 trade mark 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 and is being used in bad faith.
A. Identical or confusing similarity
The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s TWO MEN AND A TRUCK registered trade mark and the generic text “franchise”, franchising being a business in which the Complainant operates. The distinctive part of the Domain Name is the TWO MEN AND A TRUCK trade mark. The addition of the non distinctive text “franchise” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s TWO MEN AND A TRUCK trade mark. Therefore, the Panel finds that the first element of the Policy has been established.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interests in the Domain Name. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services given its confusing use, as discussed below, and is not commonly known by the Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a Domain Name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a Domain Name equivalent to the Complainant’s trade mark with only a generic term added which reflects the business in which the Complainant operates. Further, the Panel is of the view that the site attached to the Domain Name using the Complainant’s trade mark and offering services unrelated to the Complainant is confusing on the facts. The use of the trade marks on the site shows that the Respondent must be well aware of the Complainant, its trade mark and its services. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Domain Name, the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Domain Name has been registered and used in bad faith and the third element of the Policy has been satisfied.
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 <twomenandatruckfranchise.com> be transferred to the Complainant.
Dated: August 31, 2011