DECISION

TruServ Corporation v. TrueValue.net

Claim Number: FA0311000214460

PARTIES

Complainant is TruServ Corporation, Chicago, IL (“Complainant”) represented by Kristine M. Boylan, of Meagher & Geer PLLP, 33 South Sixth Street, Suite 4200, Minneapolis, MN 55402.  Respondent is TrueValue.net, 210 Ave. H, San Manuel, AZ 85631 (“Respondent”) represented by Todd Diaz De Valdes, 525 W. Wetmore Rd. Suite 111, Tucson, AZ 85705.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <truevalue.net>, registered with Network Solutions, Inc.

PANEL

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

Edmund P. Karem as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 25, 2003; the Forum received a hard copy of the Complaint on November 25, 2003.

On December 3, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <truevalue.net> is registered with Network Solutions, Inc. and that the 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 December 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 29, 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@truevalue.net by e-mail.

A timely Response was received and determined to be complete on December 29, 2003.

An Additional Submission was received from Complainant on January 5, 2004.  Pursuant to Forum Supplemental Rule 7, the additional submission was untimely because it was not received within five calendar days after the date the Response was submitted.  

On January 19, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant bases its contention that Respondent has no rights in the domain name on Complainant’s own trademark rights in True Value Hardware brand stores and its ownership of a number of U.S. applications and registrations for the True Value trademark and service mark.  It contends that it is a manufacturer and distributor for a cooperative of approximately 8,000 retail stores, most of which operate under True Value service marks and sell a range of products bearing those marks.  Complainant owns the domain name, <truevalue.com>, and has a number of other domain names registered that use the True Value mark either alone or as a root.

Further Complainant alleges that Respondent has no rights or legitimate interests in True Value or a domain name with True Value as a root; that Respondent’s administrative contact is not a member of the cooperative; does not have any licensing rights and his only connection with the cooperative is that he was employed by his father’s True Value Hardware in Arizona which store was a member of the cooperative.  Respondent has registered and is using the domain name in bad faith because it was used to leverage a deal Respondent’s administrative contact was pitching to Complainant and Complainant did not accept the deal. The website is dormant, Complainant contends. 

            B. Respondent

Respondent contends it has a legitimate interest in the domain name because it was going to use it to provide web services to TruServ members and that the effort to do so is outlined in correspondence, meetings and emails.  Respondent contends that after TruServ declined the proposal that it converted the website for the purpose of promoting a real estate service whereby consumers could visit a website to request “The true value of your home” and that value would be provided by professionals.                     

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

FINDINGS

Identical and/or Confusingly Similar

The difference between Complainant’s domain name and that of Respondent is that one is .net and one is .com.  Clearly Complainant has registered the mark True Value.  Respondent candidly admits that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.   

Rights or Legitimate Interests

Respondent’s administrative contact has never operated a True Value store of his own.  He is the son of a former member of the cooperative who had a True Value store.  Respondent’s administrative contact worked in that store.  That relationship does not authorize the use of the True Value mark.  See Vinidex Pty. Ltd. V. Auinger, AF-0402 (eResolution Oct. 18, 2000)  The Vinidex decision found that a former employee knew or should have known that Complainant’s mark was in use as a part of the corporate name and as a trademark and therefore understood the legitimate interests and rights of the Complainant.  By contrast Respondent would have known of its own lack of interest or right.  See also Jaccard Corp. v. GDC, FA 152463 (Nat. Arb. Forum June 20, 2003)  Jaccard held that there was no right or legitimate interest in a domain name where there was no evidence of  an agreement between Complainant and Respondent authorizing Respondent to register or use the name. 

Respondent asserts that it intended to use the name to provide individual websites for members of Complainant’s cooperative and provide information on a central location where individual cooperative members could utilize the Internet as a means of increasing sales.  Complainant did not accept the offer of a business partnership.  In the almost four years since Complainant notified Respondent that it has chosen to stay with its current web development vendor and would not enter into a business arrangement with Respondent’s administrative contact, the domain name website has been dormant.  A notice on the website states, “COMING SOON!”  There are no rights or legitimate interests in a domain name where Respondent merely passively held the name.  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no right or legitimate interest can be found where Respondent fails to use the disputed domain name). 

                  

Registration and Use in Bad Faith

The True Value mark has gained fame.  The use of a domain name confusingly similar to a trademark that has gained fame is evidence of bad faith.  Samsonite Corp. v. Colony Holding, Case No. FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).  Respondent had actual or constructive knowledge of the mark at the time of the registration since its administrative contact had been an employee of one of the member stores before the registration. 

The True Value mark has obtained worldwide notoriety.  See TruServ Corp. v. CreativeV, Case No. FA 97849 (NAF Aug. 17, 2001) (stating that with “annual sales of billions of dollar, retail operations in all fifty states and in many countries around the world, and advertising expenditures in the many millions of dollars, the TRUE VALUE trademarks and service marks have obtained worldwide notoriety and fame”).      

The use of a confusingly similar domain name that encompasses another’s famous trademark is evidence of bad faith registration as found in Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9^th Cir. 2002) (stating, “while an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion”).    

     

There is a dispute between the parties as to whether, during the negotiations on the proposed partnership, TruServ Corporation was aware of the registration of the domain name by Respondent.  Respondent insists that they were.  Complainant denies knowledge in a declaration by Eric Lane, an employee of TruServ.  This declaration is not in affidavit form and thus the state of the proof is that Complainant denies knowledge of the registration and Respondent asserts it was a known fact.  The exhibits accompanying the response are copies of electronic mail messages between the parties, relative to Respondent’s proposal of a partnership.  Nowhere in that correspondence or in the partnership proposal itself is Respondent identified as the registered holder of the disputed domain name.  Rather he is identified as control yourself.com, inc. or Chris’ True Value Hardware.  The weight of the evidence thus leads the arbitrator to conclude that during the negotiations on Respondent’s proposal for a partnership, Complainant was unaware of the registration. 

Registration of a domain name that incorporates another entity’s mark, where the registrant has knowledge of that other entity’s interest, is evidence of bad faith.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (finding that where an alleged infringer chooses a mark he knows to be similar to another it can be inferred that his intent was to confuse). 

DECISION

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

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

Edmund P. Karem, Panelist

Dated: January 21, 2004

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