DECISION

Freightliner LLC v. Sterling Truck Sales, LLP

Claim Number:  FA0306000164312

PARTIES

Complainant is Freightliner LLC, Portland, OR (“Complainant”) represented by James Geringer, of Klarquist Sparkman LLP.  Respondent is Sterling Truck Sales, LLP, Sterling, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sterlingtruck.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 16, 2003; the Forum received a hard copy of the Complaint on June 17, 2003.

On June 19, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <sterlingtruck.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sterlingtruck.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sterlingtruck.com> domain name is identical/confusingly similar to Complainant’s STERLING mark.

2. Respondent does not have any rights or legitimate interests in the <sterlingtruck.com> domain name.

3. Respondent registered and used the <sterlingtruck.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Freightliner LLC, is the parent company of Sterling Truck Corporation, a manufacturer and seller of trucks headquartered in northern Ohio. Complainant sells trucks under the STERLING mark throughout the U.S., Canada, Mexico, Australia and New Zealand via a network of dealerships, including a dealership in Respondent’s city and state of domicile, Sterling, Colorado.

Complainant registered the STERLING mark on October 5, 1999, on the Principal Register of the U.S. Patent and Trademark Office (U.S. Reg. No. 2,282,569). Complainant also operates a website at the <sterlingtrucks.com> domain name, and has done so since 1997.

Respondent, Sterling Truck Sales, LLP, registered the <sterlingtruck.com> domain name on April 16, 2001, and is not licensed or authorized to use Complainant’s STERLING mark for any purpose. At the disputed domain name, Respondent advertises its trucks to consumers in the Sterling, Colorado area.

In response to contacts by Complainant, Respondent emailed Complainant on February 19, 2003, offering to sell its domain name registration to Complainant for $50,000. As an alternate offer, Respondent offered to place a link on its website to Complainant’s domain name for “a modest fee per year.”

DISCUSSION

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has established rights in the STERLING mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through use of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <sterlingtruck.com> domain name is confusingly similar to Complainant’s STERLING mark. The disputed domain name adds the descriptive word “truck” to Complainant’s mark. This term, descriptive of the type of product that Complainant produces under its STERLING mark, does not distinguish the domain name from Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that the <sterlingtruck.com> domain name is confusingly similar to Complainant’s STERLING mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent did not submit a response to the Complaint. Thus, the Panel has only the allegations and exhibits contained within the Complaint from which to reach its decision. Although Complainant bears the burden of proof on each element of Policy ¶ 4(a), the Panel may view the Complaint in a light favorable to Complainant, and will draw all factually supported inferences in favor of Complainant. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

In this dispute, the Panel also chooses to view Respondent’s failure to respond as an admission that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Respondent advertises its “Sterling Truck Sales” dealership at the <sterlingtruck.com> domain name, displaying which trucks and trailers it is currently offering and providing consumers with information on how to reach Respondent. Respondent conducts this business under Complainant’s STERLING mark, without authorization or license by Complainant. While Respondent’s dealership is in Sterling, Colorado, and it is conceivable that Respondent’s use of the STERLING mark in its business and domain name is used in a geographic (and hence unprotectable) sense, the Panel has received no evidence in favor of such a proposition from Respondent. Furthermore, Complainant has alleged that there is a STERLING-brand dealership that is a part of its “network of dealerships” in the town of Sterling, Colorado, itself. Presumably, this dealership predates Respondent’s business, as Complaint appears to rely upon this fact in its Complaint. This supports the conclusion that Respondent was aware of the goodwill surrounding Complainant’s mark when it began operating its business and registered its domain name. In its knowing use of Complainant’s mark to compete with Complainant, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and cannot be considered to be making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). With no evidence before the Panel to the contrary, the Panel finds that neither of these “safe harbor” provisions of the Policy are applicable to Respondent. See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Avery Dennison Corp. v. Ray Steele d/b/a Mercian Labels Ltd. and selfadhesivelabels.com, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

As stated above, Respondent’s WHOIS contact information lists its name as “Sterling Truck Sales,” and the disputed domain name hosts several pictures of Respondent’s dealership. However, Respondent has not come forward to demonstrate to the Panel that it was “commonly known by” the disputed domain name prior to the registration of the disputed domain name. On the other hand, Respondent has registered a domain name that not only includes Complainant’s registered STERLING mark, but is identical to its “Sterling Truck” tradename. In light of Respondent’s default, the Panel agrees with Complainant’s assertion that Respondent is not “commonly known by” the disputed domain name as contemplated by Policy ¶ 4(c)(ii). Thus, Respondent is unable to avail itself of this provision. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <sterlingtruck.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant contends that Respondent registered the disputed domain name for the primary purpose of selling its domain name registration to Complainant. To support this assertion, Complainant submitted to the Panel an email from Respondent, offering to sell its domain name registration for $50,000. However, this email came in response to a presumably unsolicited email sent by Complainant, which apparently had the subject line, “looking for that win-win.” This initial portion of the email exchange between the parties is conspicuously omitted from Complainant’s submission, bringing into question the actual context of Respondent’s “offer” to sell its domain name registration. In any event, the Panel is not willing to find that Respondent began operating a truck dealership under Complainant’s mark in order to facilitate the sale of a domain name registration, or that it waited patiently for almost two years after registering its domain name to make its sale offer. As the evidence indicates that Respondent did not register the disputed domain name primarily for the purpose of selling its domain name registration to Complainant, it cannot be said to have registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also Puky GmbH v. Ignatius Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where Complainant initiated contact with Respondent and Respondent responded with an offer to sell its domain name registration for $50,000).

However, Respondent does operate in the same field as Complainant, and should be well aware of Complainant’s rights in the STERLING mark. Moreover, Complainant claims to have a STERLING-brand truck dealer located in Respondent’s municipality. Coupled with Complainant’s registration of the STERLING mark on the Principal Register of the U.S. Patent and Trademark Office, which is considered prima facie evidence that Complainant has the exclusive right to use the mark in the United States, the Panel infers that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the STERLING mark. Respondent’s registration of the domain name despite this knowledge, and its subsequent use of the domain name to advertise a business that may siphon potential consumers away from Complainant, is evidence that the <sterlingtruck.com> domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

The Panel thus finds that Respondent registered and used the <sterlingtruck.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <sterlingtruck.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  July 28, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/780.html