Westmore · UDRP DecisionMacktruck.com
The Panel ordered transfer of <macktruck.com>. It found the domain confusingly similar to Complainant’s famous and distinctive MACK mark, found no rights or legitimate interests on the record, and concluded that Respondent intentionally used the domain for commercial gain by creating confusion with Complainant’s mark. The Panel found bad faith under Policy paragraph 4(b)(iv) and did not decide whether the USD 8,000 sale proposal also established bad faith under paragraph 4(b)(i).
The timeline behind macktruck.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates a strong paragraph 4(b)(iv) fact pattern where a respondent in the trademark owner’s industry uses a domain combining the mark with the owner’s core product to promote its own commercial services. The Panel treated the respondent’s truck-related business as compelling evidence of knowledge and relied on the misleading commercial website rather than needing to resolve the separate sale-offer theory.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mack Trucks, Inc. v. NWC Body Works, Inc. Case No. D2013-2237 1. The Parties Complainant is Mack Trucks, Inc. of Greensboro, North Carolina, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America. Respondent is NWC Body Works, Inc. of Elk Grove, Illinois, United States of America. 2. The Domain Name and Registrar The disputed domain name <macktruck.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2013. On the same day, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. Also on December 24, 2013, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 3, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 23, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 24, 2014. The Center appointed Robert A. Badgley as the sole panelist in this matter on January 31, 2014. 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 paragraph 7 of the Rules. 4. Factual Background Complainant is a major manufacturer of trucks and other vehicles. Since 1922, Complainant’s company name has been Mack Trucks, Inc. Since 1901, Complainant has used the trademark MACK to identify and distinguish its trucks. Complainant holds numerous trademark registrations, including Registration Number 1,146,847 with the United States Patent and Trademark Office, dated February 10, 1981, for the mark MACK in connection with vehicles and vehicle parts. Based on the undisputed evidence in the record, the Panel has little hesitancy finding the mark MACK to be a distinctive and famous mark. Complainant also holds other United States MACK-formative registered trademarks, including MACK TRUCKS & Design and BUILT LIKE A MACK TRUCK. In addition, Complainant’s MACK-formative marks are registered in numerous jurisdictions worldwide. As part of its extensive marketing efforts, Complainant operates a website accessible via the domain name <macktrucks.com>. The Domain Name was initially registered in October 1997. It is not entirely clear who was the initial registrant, but it appears that Respondent has been the registrant since 2001. (In any event, this is alleged in the Complaint and not denied by Respondent.) For an unknown period of time, but certainly in August 2013, the Domain Name resolved to a website featuring Respondent’s business, NWC Body Works, Inc. (also referred to at the site as “NWC Truck Center”). The website describes Respondent as a “full service, Truck, Trailer, and Equipment facility providing Sales, Service, Repairs, Fabrication and Parts.” The website at that time also promoted products offered by other companies. Complainant sent Respondent a cease-and-desist letter on August 20, 2013. In that letter, Complainant’s counsel noted: “Our client is concerned that your use of the MACKTRUCK.COM domain name is likely to cause Internet users and members of the public to believe mistakenly that NWC Body Works and the MACKTRUCK.COM web site are affiliated with or sponsored or endorsed by Mack Trucks, which is not the case.” Complainant asked that Respondent transfer the Domain Name to Complainant. Respondent did not immediately reply to the cease-and-desist letter. However, Respondent changed the content of the website accessible via the Domain Name. The new website content no longer referred to Respondent and its business. Instead, the website appears to be a Network Solutions parking page featuring various hyperlinks to third parties who happen to have the word “Mack” in their name. Some of these hyperlinks resolve to third-party websites featuring trucks, including at least one link which resolves to a site promoting Freightliner trucks, which compete directly with Complainant’s MACK trucks. On October 23, 2013, Respondent’s representative Mr. Osborn advised Complainant’s counsel that Respondent was unwilling to surrender the Domain Name but was willing to sell it to Complainant. When asked for a price, Mr. Osborn advised that “we have it on the market now” for USD8,000. 5. Parties’ Contentions A. Complainant Complainant alleges that the Domain Name is confusingly similar to its famous MACK mark, that Respondent lacks any legitimate interest in the Domain Name, and that Respondent registered and is using the Domain Name in bad faith. Complainant seeks an order transferring the Domain Name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar There is no doubt that Complainant holds rights in the famous and distinctive MACK trademark for its trucks and related products. The Domain Name incorporates the MACK mark and appends thereto the descriptive word “truck.” Because trucks are the product for which Complainant is best known under its MACK mark, the addition of this descriptive word to the mark does nothing to diminish the confusing similarity between the mark and the Domain Name. Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent has made no attempt to rebut the allegation that Respondent had no authority to register the Domain Name, and Respondent has not otherwise come forward to assert its bona fides . On this record, the Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent is in bad faith within the meaning of Policy paragraph 4(b)(iv). Given Respondent’s business – repairing and servicing trucks – there can be no doubt that Respondent had Complainant and its MACK family of marks in mind when registering the Domain Name. In addition, the Panel finds based on this record that the content provided at Respondent’s website prior to the August 20, 2013 cease-and-desist letter demonstrates that Respondent knowingly sought to create the unfounded impression among Internet users that Respondent was somehow affiliated with, or sponsored or endorsed by, Complainant. Accordingly, the Panel concludes that Respondent intentionally attempted to use the Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s famous mark. In view of this finding under paragraph 4(b)(iv), it is not necessary for the Panel to decide whether Respondent was also in bad faith under paragraph 4(b)(i). Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <macktruck.com> be transferred to Complainant. Robert A. Badgley Sole Panelist Date: February 13, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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