World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Two Men and a Truck/International, Inc. v. Domains By Proxy, LLC / John Stuart

Case No. D2012-0551

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 Domains By Proxy, LLC / John Stuart of Scottsdale, Arizona and Houston, Texas, United States of America, respectively.

2. The Domain Name and Registrar

The disputed domain name <twomenandtruck.org> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 19, 2012, the Center transmitted by email to GoDaddy.com, LLC, a request for registrar verification in connection with the disputed domain name. On March 21, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 24, 2012.

The Center verified that the Complaint together with the amendment to 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 March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.

The Center appointed James McNeish Innes as the sole panelist in this matter on May 1, 2012. 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 is the largest franchised group engaged in moving services in the United States of America (“United States”) with locations in 32 states. The moving services relate to the provision of trucks and labor for packing, loading, delivery and unloading of goods. The record demonstrates that the Complainant has a substantial number of trade mark registrations incorporating the “Two Men and a Truck” name. It has used the name and marks in connection with its services since 1988, and currently operates from more than 200 locations worldwide. The disputed domain name was registered on September 18, 2007. The Respondent appears to be engaged in the provision of services similar to those of the Complainant in the United States.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

(a) Based on a simple comparison, the disputed domain name is confusingly similar to the Complainant’s TWO MEN AND A TRUCK trade mark. The disputed domain name replicates the Complainant’s TWO MEN AND A TRUCK Mark, with the mere deletion of the letter “a”.

(b) In fact, the only difference between the TWO MEN AND A TRUCK mark and the disputed domain name is the deletion of the letter “a” immediately preceding the term “truck”. This intentional deletion does not serve to distinguish the disputed domain name from the Complainant’s mark. It is well established that likelihood of confusion is not eliminated, or even necessarily reduced, by the addition or deletion of a letter.

(c) Furthermore, given the renown of the TWO MEN AND A TRUCK mark, as well as the Complainant’s use of the TWO MEN AND A TRUCK mark, the relevant consumers, on seeing the disputed domain name, will reasonably, but mistakenly, believe that it is related to the Complainant and its services.

(d) The Respondent cannot demonstrate or establish any rights or legitimate interest in the disputed domain name. The Respondent registered the disputed domain name long after the Complainant had established rights in its TWO MEN AND A TRUCK mark through extensive use.

(e) Because the Complainant’s adoption and extensive use of the TWO MEN AND A TRUCK mark predate the Respondent’s registration of the disputed domain name, the burden is on the Respondent to establish rights or a legitimate interest in the disputed domain name.

(f) Because the Respondent is neither an authorized franchisee of the Complainant nor a licensee of the TWO MEN AND A TRUCK mark, the Respondent has no right to exploit the Complainant’s TWO MEN AND A TRUCK mark, or confusingly similar variations thereof, in the course of selling or advertising any products or services. The Respondent’s use of the disputed domain name to promote its own moving services business plainly constitutes trademark infringement and unfair competition, and is not a legitimate interest or use. The Respondent’s use of the disputed domain name is clearly commercial, is for the financial benefit of the Respondent, is without authorization from the Complainant, and is with the intent to divert consumers seeking the Complainant’s services to the Respondent’s competitive business. For these reasons, consumers are misled by the disputed domain name.

(g) The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent has derived a financial benefit from the use of confusingly similar variations of the Complainant’s TWO MEN AND A TRUCK mark in the disputed domain name, and has sought to profit by using the disputed domain name to promote the Respondent’s purported business activities by free-riding on the goodwill associated with the Complainant’s TWO MEN AND A TRUCK mark.

(h) The Respondent’s bad faith registration of the disputed domain name is established by the fact that the disputed domain name is virtually identical to the Complainant’s TWO MEN AND A TRUCK mark, and was acquired by the Respondent long after the Complainant’s mark became famous.

(i) That the Respondent has targeted the Complainant is also obvious from the notoriety of the Complainant’s TWO MEN AND A TRUCK mark. The mark has been used extensively for many years. The Respondent could only have registered or acquired a domain name so confusingly similar to the Complainant’s mark with intent to capitalize on the hard-earned and valuable goodwill associated with the Complainant’s TWO MEN AND A TRUCK mark.

(j) The Respondent’s bad faith registration and use of the disputed domain name are further evidenced by the fact that, as discussed above, the Respondent has sought to profit from the disputed domain name by using it to create an aura of affiliation with the Complainant, for the purpose of selling competitive moving services. See Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(a) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

(b) That the respondent has no rights or legitimate interests in respect of the disputed domain name.

(c) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that the disputed domain name is identical or confusingly similar to its mark for the following reasons:

(a) The domain name <twomenandtruck.org> is confusingly similar to the dominant portion of the Complainant’s TWO MEN AND A TRUCK marks.

(b) The only difference between the Complainant’s mark and the disputed domain name is the deletion of the letter “a”.

(c) The disputed domain name deletes a non-distinctive letter and is confusingly similar to the Complainant’s trademark.

The Panel accepts the Complainant’s contentions. The disputed domain name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of the evidence presented may demonstrate a respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii):

(a) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(c) you [respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests it may have in the disputed domain name. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent.

The Panel finds that the Complainant has made a prima facie case on the record element of the UDRP, which the Respondent has not rebutted. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(a) circumstances indicating that you [respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(b) you [respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(c) you [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(d) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Respondent has made no Response in this connection. The Complainant has made contentions that lead the Panel to conclude that there exist some of the situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to attract users to its web sites by creating confusion with the Complainant’s mark.

The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.

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 disputed domain name, <twomenandtruck.org > be transferred to the Complainant.

James McNeish Innes
Sole Panelist
Dated: May, 4 2012

 

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