WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Two Men and a Truck / International, Inc. v. Domains By Proxy, LLC and Heather Hudson
Case No. D2015-1778
1. The Parties
The Complainant is Two Men and a Truck / International, Inc. of Lansing, Michigan, United States of America ("United States" or "USA"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondents are Domains By Proxy, LLC, of Scottsdale, Arizona, United States and Heather Hudson of Plantation, Florida, United States (collectively, the "Respondent").
2. The Domain Names and Registrar
The disputed domain names <twomenandatruckmiami.com> and <twomenmiami.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2015. On October 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 15, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 22, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2015.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on November 25, 2015. 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 dates of the Domain Names registrations were confirmed by the Registrar to be December 14, 2011 for both. The Complainant provided evidence of multiple trademark registrations for the mark TWO MEN AND A TRUCK including, inter alia, United States Trademark, No. 1,953,964, (registered on February 6, 1996) that predates the date of the Domain Names registration for a variety of services related to moving.
The Complainant is also the registered proprietor of United States Trademark, No. 2,020,083, (registered on December 3, 1996) for TWO MEN AND A TRUCK that also predates the date of the Domain Names registration.
The Complainant is also the holder of a number of domain names, including <twomen.com>, which it has operated since 1998 and currently redirects to its main website at "www.twomenandatruck.com" promoting its TWO MEN AND A TRUCK marks, goods and services.
The Panel also conducted an independent search to determine that the Domain Names are currently active, and resolve to Registrar "parking" pages with links providing click-through advertising.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant's mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties' Contentions
The Complainant and its affiliates, franchisees, and licensees (collectively "Complainant") allege to have adopted and used the TWO MEN AND A TRUCK trademarks for more than 27 years for services related to moving, including all over the Miami, Florida, USA area.
The Complainant, itself or through its franchisees, further alleges that it has used the TWO MEN AND A TRUCK name and service mark, either standing alone or in combination with design elements in connection with moving-related services since at least as early as 1988. The Complainant's use of its TWO MEN AND A TRUCK name and service marks has been valid and continuous since the date of first use and has not been abandoned.
In addition, the Complainant also alleges "that it is in the business of franchising to others the right and license to use its TWO MEN AND A TRUCK service mark and moving-business operating system. The Complainant's franchised system is the largest local moving company in the United States and has served millions of customers, completing more than five million moves over the years. Presently, there are over three hundred (300) TWO MEN AND A TRUCK locations in thirty-nine (39) states within the United States licensed by Complainant, and there are over fifteen hundred (1,500) moving trucks operating throughout the United States prominently displaying the TWO MEN AND A TRUCK mark. Each TWO MEN AND A TRUCK franchise is operated pursuant to a franchise agreement under which Complainant imposes certain obligations and retains certain rights to help ensure the protection of Complainant's service marks and the uniform quality of services provided by Complainant's franchisees in the TWO MEN AND A TRUCK franchise system."
The Complainant also alleges that it owns over 300 domain name registrations that include the TWO MEN AND A TRUCK trademark followed by a geographic location, each of which is used to operate a website for its franchisees in the designated geographic areas. Three domain names of particular interest in this matter are <twomenandatruckmiamifl.com>, <twomenandatruckmiamilakes.com>, and <twomenandatrucknorthmiami.com>, as well as <twomen.com>, all of which resolve to active promotion of the Complainant's marks, goods and services.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark TWO MEN AND A TRUCK alone and/or as part of a device or with other words, in respect of a wide range of goods and services. The Domain Names are confusingly similar to the trademarks in which the Complainant has rights. The addition of the geographic descriptor "Miami" does not significantly affect the appearance or pronunciation of the Domain Names. Therefore, the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant's trademark TWO MEN AND A TRUCK and other marks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. Thus, the Respondent's registration and use of the Domain Names constitutes bad faith registration and use under the Policy, and requests transfer of the Domain Names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for TWO MEN AND A TRUCK (and these rights precede the date of the Respondent's obtaining the Domain Names). Moreover, a Google search on the expression TWO MEN AND A TRUCK provides several results, all of which are linked with the Complainant. In addition, the Panel finds that the Complainant has satisfactory proven that it has sufficient unregistered trademark rights under the first element of the UDRP.
The Panel finds that the addition of the geographic descriptor "Miami" and the omission of "and a truck" at the end of the Domain Names do not change the overall impression of the designations as being connected to the trademarks of the Complainant. This is particularly so given that the Complainant owns the domain name <twomen.com> and has operated a website at that domain name promoting its goods and services under its mark since 1998. Moreover, the Panel notes that both Domain Names were registered on the same date by the same registrant (the Respondent). The Panel finds that these facts do not prevent a finding of confusing similarity between the disputed Domain Names and the Complainant's marks.
See also, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant's registered and unregistered rights in the trademark TWO MEN AND A TRUCK, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(b)(iii) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent is not related to or affiliated in any way with the Complainant.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in either of the Domain Names. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the widespread and long-standing use of the Complainant's trademark and reputation dating back to 1998, and given the content of its websites — including <twomen.com> — the Complainant claims that the Respondent has registered the Domain Names with full knowledge of the Complainant's trademark TWO MEN AND A TRUCK and uses them for the purpose of misleading and diverting Internet traffic.
The Domain Names incorporate the Complainant's trademarks, as well as its pattern of adding geographic descriptors to its domain names, by adding the geographic descriptor "Miami" at the end — which is already incorporated by Complainant in its other domain names. The Domain Names were registered several decades after the Complainant began using its marks and given that the Respondent is located in Florida where the Complainant operates, the Panel finds compelling factual and circumstantial evidence in the record that the Respondent likely knew of the Complainant's mark when it registered the Domain Names. It has been held in previous cases that knowledge of a corresponding mark at the time of the Domain Name's registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464).
In addition, the Panel notes that the Domain Names are parked with the Registrar and contain sponsored links, from which the Respondent presumably earns click-through revenues attempting to attract consumers looking for the Complainant. There is no indication that the Respondent is making a legitimate use of the Domain Names or is using the Domain Names in connection with a bona fide offering of goods or services. The Panel finds such use satisfies bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent has taken active steps to conceal its identity, by registering the Domain Names using the Domains by Proxy private registration service, which indicates bad faith by the Respondent. See, e.g. Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
Given the evidence of the Complainant's prior rights in the mark, the timing of the registration of the Domain Names by the Respondent, the use of proxy registrations, together with evidence that both Domain Names resolve to parked pages with sponsored ads, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
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 Names <twomenandatruckmiami.com> and <twomenmiami.com> be transferred to the Complainant.
Ellen B. Shankman
Date: December 9, 2015