World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Two Men and a Truck/International, Inc. v. Choice Services

Case No. D2012-1116

1. The Parties

Complainant is Two Men and a Truck/International, Inc., Michigan, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America ( “United States”).

Respondent is Choice Services, Wisconsin, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2012. On May 31, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On June 1, 2012, GoDaddy.com, LLC 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 June 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2012. The Response was filed with the Center on June 27, 2012.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 11, 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

Complainant is a franchised local moving company in the United States with locations in thirty-four states. Complainant is engaged in licensing the use of its TWO MEN AND A TRUCK service mark and moving-services operating system. Complainant claims that it has used its mark since at least 1988 and has more than two hundred locations operating worldwide under the name and service mark TWO MEN AND A TRUCK.

Complainant is the owner of the following United States service mark Registrations for use in connection with moving services:

TWO MEN AND A TRUCK & Design Reg. No. 1,953,964 Registered February 6, 1996

TWO MEN AND A TRUCK Reg. No. 2,020,083 Registered December 3, 1996

TWO MEN AND A TRUCK Reg. No. 3,006,814 Registered October 18, 2005

TWO MEN AND A TRUCK & Design Reg. No. 3,006,815 Registered October 18, 2005

Complainant also owns numerous trademark registrations in the European Community and other countries for the above-referenced marks, including Canada, Mexico, Ireland, China, India and New Zealand. Complainant submitted with the Complaint printouts of database information pertaining to the above-referenced United States and non- United States registrations.

Complainant has also registered and uses the domain name <twomenandatruck.com> in connection with its moving services.

The disputed domain name was registered on October 5, 2010.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name incorporates Complainant’s trademark in its entirety and is confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and is using the domain name in bad faith.

B. Respondent

Respondent’s response consisted solely of one email dated June 27, 2012, stating that:

“We purchase [sic] this domain name to run ads for marketing, but not to infringe upon the Two Men with Trucks brand. At this time, we are willing to sell the domain for ‘TwoMenandaTrucks.com’ at a fair market price.”

“We have not profited and/or made any income off this domain, this website just went live on 4/2012 and we paused the website on 5/29/2012. This is verified information by our web developer, and emails by Jay Smith and the designer. This decision was derived from Upper Management to provide you an offer of purchase that both satisfy Two men and a Truck and Jay Smith.”

Respondent did not submit any further information or response.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and used in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s mark for which Complainant owns several trademark registrations in the United States and other countries. The disputed domain name incorporates Complainant’s trademark in its entirety. The addition of an “s” to the word “truck” in the domain name does not avoid a finding of confusing similarity.

Complainant has demonstrated the first element.

B. Rights or Legitimate Interests

Respondent filed a short email response on June 27, 2012, as described above.

There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s marks.

Respondent is not commonly known by the disputed domain name.

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent concedes that it purchased this domain name “to run ads for marketing.” Respondent appears to have registered and is using the disputed domain name solely for financial gain by attracting Internet users looking for Complainant’s website, and thereby obtaining click-through advertising revenue. This is not a bona fide commercial use of a trademark or domain name.

The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding to the disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 Respondent’s website or location of a product or service on Respondent’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

By using the domain name, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondents’ website. Respondent appears to be using the domain name for the purpose of generating click through advertising revenue.

Respondent’s bad faith is further evidenced by the fact that Respondent’s response offers to sell the domain name “at a fair market price.”

Accordingly, the Panel finds that Respondent has registered and is using the domain name in bad faith.

7. Decision

For all 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 <twomenandatrucks.com> be transferred to the Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: July 25, 2012

 

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