WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings, Inc. v. Bruce Grice / Gabriella Grice
Case No. D2017-1512
1. The Parties
The Complainant is TPI Holdings, Inc. of Norfolk, Virginia, United States of America ("United States or U.S."), represented by Kilpatrick Stockton, LLP, United States.
The Respondent is Bruce Grice / Gabriella Grice of Tuscaloosa, Alabama, United States.
2. The Domain Name and Registrar
The disputed domain name <equiptrader.net> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 3, 2017. On August 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Center has received email communications from the Respondent between August 8, 2017 and August 14, 2017.
The Center appointed Michael D. Adams as the sole panelist in this matter on September 6, 2017. 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 a provider of classified advertisements in both print and online media using marks that combine the term "trader" with numerous terms or phrases. Several examples of the Complainant's marks include AUTO TRADER, AUTOTRADER.COM, BOAT TRADER, COMMERCIAL TRUCK TRADER, CYCLE TRADER, and EQUIPMENT TRADER among multiple others. By the Complainant's own account, the first use of "trader" formative marks date back over forty (40) years in print and since 1996 online. The Complainant is the owner of multiple United States federal registrations for its "trader" marks, including: EQUIPMENT TRADER (U.S. Reg. No. 3605275), registered April 14, 2009; EQUIPMENT TRADERONLINE.COM (Reg. No. 2873928), registered August 17, 2004; and HEAVY EQUIPMENT TRADER (Reg. No. 1473136), registered January 19, 1988. In addition, the Complainant owns, either directly or through an affiliate, <equipmenttrader.com> and <equipmenttraderonline.com> and uses these domains in connection with classified advertisements for heavy equipment. Based on the Complainant's calculations, <equipmenttrader.com> posts ads for over 100,000 pieces of equipment for sale or lease every month.
Neither the Complainant nor the Respondent has provided information regarding the business of the Respondent, but the Complainant provided screenshots of the website associated with the Domain Name at the time of the Complaint submission. Based on a review of these screenshots, the Respondent's use of the Domain Name resolves to classified advertisements focused on leasing and sales of heavy equipment. A cursory review of the website at the Domain Name by the Panel indicates that this website also uses the terms EQUIPTRADER and EQUIPMENT TRADER interchangeably.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its family of registered "trader" formative marks for use in connection with classified advertising and that the Complainant is the senior user of these marks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant further submits that the Respondent's use of the Domain Name does not constitute a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the Complainant's marks. The Complainant notes that the Domain Name was registered and is being used in bad faith as it directs to web pages that display services that are identical to those referred to in the Complainant's trademark registrations. The Complainant further contends that the Domain Name is being used to deceive consumers and trade off the Complainant's goodwill, which does not establish rights or legitimate interests in the Domain Name.
The Complainant further states that there is no relationship between it and the Respondent and that it has not authorized the Respondent to use its trademark.
The Complainant requests that the Domain Name be transferred to it.
The Respondent did not substantively reply to the Complainant's contentions or offer any evidence of record. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondents' default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove:
(i) that the Domain Name is identical or confusingly similar to a mark or marks in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Complainant asserts that the Domain Name is identical or confusingly similar to its family of "trader" marks and more specifically to its EQUIPMENT TRADER mark. In this regard, the Panel finds that the Domain Name is effectively identical and certainly confusingly similar to the mark EQUIPMENT TRADER in which the Complainant has registered rights. The truncation of the word "equipment" to "equip" does not provide any distinction, particularly in light of the Respondent's use of the Domain Name to offer identical services to that of the Complainant. Furthermore, the Respondent's use of the terms "equiptrader" and "equipment trader" interchangeably on its own website, seemingly without distinction, supports the Panel's conclusion that "equiptrader" and "equipment trader" are functionally identical or at least confusingly similar in the given situation. As a result, the Panel finds that the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
As stated above, the Respondent has not offered any evidence regarding rights or legitimate interest to the Domain Name. In addition, there is no evidence of record to suggest that the Respondent owns trademark registrations for, or is otherwise commonly known by, the trademark EQUIPTRADER or the Domain Name. While the Panel acknowledges that it is possible for two parties to both possess rights and legitimate interests to a similar domain name for identical services, there is no evidence to suggest that such is the case here. To the contrary, the available evidence suggests that the Respondent is not commonly known by the Domain Name, and uses the Domain Name to unfairly capitalize off the Complainant's mark. As a result, the Panel considers that the Respondent's use of the Domain Name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use.
The material on file does not provide any other basis on which the Respondent could have rights or legitimate interests in the Domain Name. Thus, the Panel finds that the Respondent has no such rights and the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent has used the Domain Name intentionally to attract Internet users to the website at the Domain Name by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of this website. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith.
There is no material on the file that displaces this presumption. On the contrary, this presumption is reinforced by the Complainant's submission of the screenshots evidencing that the Domain Name resolves to content offering classified advertisements for the leasing and sale of heavy equipment, including content and contact information directly copied from Complainant's website. As a result, the Panel finds the third requirement of the UDRP is satisfied.
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, <equiptrader.net> be transferred to the Complainant.
Michael D. Adams
Date: October 19, 2017