PACCAR, Inc. v. Enyart Associates and Truckalley.com, LLC
[Indexed as: PACCAR v. Enyart and Truckalley.com]
[Indexed as: Peterbiltalley.com et al.]
[Indexed as: Kenworthalley.com et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0289
Commenced: April 19, 2000
Judgment: May 26, 2000
Presiding Panelist: Richard G. Lyon
Multiple domain names- Limited liability company- Additional respondent-Transfer of registration- No evidence submitted by respondent- Communication not in compliance with all requirements- Substantial investment- Strong secondary meaning of marks- Take advantage- Bad faith usage- Divert prospective customers- Addition of suffix- No right or legitimate interest- ICANN Uniform Domain Name Resolution Policy
Complainant is the owner of numerous U.S. trademark registrations for products that use the names Peterbilt and Kenworth. Complainant has used these trademarks for more than thirty years and claims substantial investment in and strong secondary meaning of these marks in connection with vehicles, vehicle parts, and related services. Respondent registered the domain names "Peterbiltalley" and "Kenworthalley" with .com, .net, and .org extensions.
Held, Domain Names Transferred to Complainant.
Initially Respondents claimed a legitimate right to use the Domain Names but after notification from the Center of these proceedings, Respondents have stated that they have no interest in pursuing this dispute and desire to transfer all domain names to Complainant.
Using paragraph 4(a) of the Policy, and paragraph 15 (a) of the Rules, the Panel found that some Domain Names are identical to the Complainant's trademarks and others use the principal word in Complainant's trademark followed by suffix "alley". Also, Complainant has not licensed or otherwise permitted Respondents to use any of its trademarks in any manner. Respondents have admitted that they have registered the names in part to attract customers to its business and through use of Complainant's names. Thus the Panel finds that Respondents have no right or legitimate interest in the Domain Names as well as bad faith use.
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy
Rules referred to
Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
1. The Parties
Complainant is PACCAR INC., a Delaware (USA) corporation, PACCAR Building, 777 106th Avenue NE, Bellevue, WA 98004 (USA), represented by Sharon Rosse Fowler and Robert C. Cumbow, Graham & Dunn PC, 1420 Fifth Avenue, Suite 3300, Seattle, WA 98101-2390 (USA), hereinafter the "Complainant."
Respondents are Enyart Associates International, a limited liability company, Enyart Associates International, 3259 Blackberry Lane, Malvern, PA 19355-9670 (USA), and TRUCKALLEY.COM, LLC, a limited liability company, and TRUCKALLEY.COM, LLC, 615 Glenview Drive, Horsham, PA 19044 (USA) hereinafter the "Respondents." Enyart Associates International is the party named as respondent in the complaint; TRUCKALLEY.COM LLC was added as a respondent for the reasons given in sections 3, 4, and 6 below.
2. The Domain Name and Registrar
The domain names at issue are kenworthtruck.com, kenworthtruck.net, kenworthtruck.org, peterbiltalley.com, peterbiltalley.net, peterbiltalley.org, kenworthalley.com, kenworthalley.net, kenworthalley.org. These are referred to collectively as the "Domain Names." The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant's complaint on April 12, 2000 (electronic version) and April 14, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 19, 2000.
On April 17, 2000, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On April 17, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions' Verification Response, confirming that the Respondent Enyart Associates International is the registrant and that the contact for both administrative, billing, and technical is John W. Enyart.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on April 19, 2000, to the Respondents Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail. The Center sent notice to Respondent TRUCKALLEY.COM LLC because in correspondence included with the Complaint it was stated that the registration was being transferred to TRUCKALLEY.COM LLC. The postal addresses used for Respondents were as follows:
Enyart Associates International
Attn: John W. Enyart
3259 Blackberry Lane
Malvern, PA 19355-9670 (USA)
Attn: Robert D. Horner
615 Glenview Drive
Horsham, PA 19044 (USA)
The Center advised that the Response was due by May 8, 2000.
No response was received by May 8. A notification of default was sent to Respondents on May 10, by post/courier, facsimile, and electronic mail. On May 11, 2000, the Center received an electronic mail communication from Respondents. While that communication does not comply with all the requirements posed by paragraph 5 of the Rules, its content will be taken into account in the analysis of this matter.
On May 15, 2000, in view of the Complainant's designation of a single panelist (but without prejudice to any election to be made by the respondent) the Center invited Mr. Richard G. Lyon to serve as a panelist.
Having received on May 10, 2000, Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was May 28, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the e-mails exchanged, the evidence presented, the Policy, the Rules and Supplemental Rules.
4. Factual Background
As Respondent has not submitted any evidence in this proceeding, the Administrative Panel's description of the factual background is taken entirely from the material submitted with the Complaint.
Complainant is a manufacturer of vehicles and vehicle parts, and provides related services, under the names Kenworth Truck Company and Peterbilt Motors Company. It is the owner of numerous U.S. trademark registrations for these products that use the names Peterbilt and Kenworth. A list of Complainant's registered U.S. trademarks using these names is set forth in 12 of the Complaint. Complainant has used these trademarks for more than thirty years and claims a substantial investment in and strong secondary meaning of these marks in connection with vehicles, vehicle parts, and related services.
As noted above, in correspondence with Complainant a representative of Respondent TRUCKALLEY.COM stated that it was in the process of transferring the Domain Names to that entity. Respondents have established, or are establishing, an internet based business as a medium through which sellers of commercial trucks can promote their products to prospective buyers. Respondents intended to use the Domain Names as a means of advertising what would be available for sale on its website, including the brand names of vehicles that users of the website might be interested in selling or buying. Respondents state that they have registered additional Domain Names that incorporate the brand names of other commercial vehicles.
5. Parties' Contentions
Complainant. Complainant contends that Respondents have acquired the Domain Names that are identical to, or incorporate the identifying portion of, Complainant's registered trademarks; that Respondents have taken this action to take advantage of the Complainant's trademarks and the goodwill associated with those trademarks by diverting potential buyers from the websites of Complainant and its authorized dealers to the websites that use the Domain Names; and that the Domain Names were registered and are being used in bad faith.
Respondent. Although Respondents initially claimed a legitimate right to use the Domain Names, to identify the products being sold or available for sale on its website, after notification by the Center of these proceedings, Respondents have stated that they have no interest in pursuing this dispute and desire to transfer all names to Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name is registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect to the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
Several of the Domain Names are identical to the Complainant's trademarks. Others use the principal word in Complainant's trademarks followed by suffix "-alley."
B. Legitimate Interest
Complainant is not licensed or otherwise permitted Respondents to use any of its trademarks in any manner, including use in its domain names. Respondents have admitted that they have registered the names in part to attract customers to its business through use of Complainant's names. The Administrative Panel finds that Respondents have no right or legitimate interest in the Domain Names. Given that only Respondent TRUCKALLEY.COM corresponded with either the Complainant or the Center and claimed the right to use the Domain Names, it is appropriate to include that entity as a Respondent.
C. Use in Bad Faith
As stated in the previous subsection, Respondents have admitted use of Complainant's names in part to divert prospective customers to Respondent's business. This fact alone is sufficient to constitute bad faith as to the Domain Names using only Complainant's trademarks. While the addition of the suffix might in some circumstances distinguish the Domain Names from Complainant's Marks, Respondents have described no such circumstances, and incorporation of the marks within Respondents' Domain Names is likely to attract prospective customers searching the internet for Complainant's name. Use of Complainant's marks even with the suffix is likely to cause confusion with those marks. For purposes of this proceeding that is sufficient to establish bad faith.
The administrative panel finds that the Domain Names listed above registered by Respondents are identical, or incorporate key words in, registered trademarks of Complainant; that the Respondent has no right or legitimate interest in respect to the Domain Names; and that the Respondent's Domain Names have been registered and are being used in bad faith. Accordingly, pursuant to 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Names be transferred to the Complainant.
Richard G. Lyon
Dated: May 26, 2000
Domain Name Transferred