Buyatrek.com

The timeline behind buyatrek.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Trek Bicycle Corporation v. Thomas McMenimen Claim Number: FA0503000433924 PARTIES Complainant is Trek Bicycle Corporation (“Complainant”), represented by David C. Brezina of Barnes and Thornburg LLP, One North Wacker Drive, Suite 4400, Chicago, IL 60606-2809. Respondent is Thomas W. McMenimen (“Respondent”), 1101 Crossing Way, Wayne, NJ 07470. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <buyatrek.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com. 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. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2005. On March 3, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the domain name <buyatrek.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 March 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 2005 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@buyatrek.com by e-mail. A Response was submitted which will be considered by the Panel. Complainant submitted an Amended Complaint dated March 4, 2005. On March 31, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant has been using the TREK mark in connection with its bicycle business since the mid-1970s. Complainant obtained numerous federal trademarks from the United States Patent and Trademark Office and trademarks in foreign countries for its TREK marks and logo. The first registration for TREK was granted in 1981 and is now incontestable. Respondent is the registrant of the <buyatrek.com> website. The domain name clearly incorporates Complainant’s TREK trademark. The website has been deactivated since January 20, 2005, in response to Complainant contacting Respondent’s website host, Alex Korneyev of HostforWeb.com. Prior to deactivation, the website displayed Complainant’s trademarks and products, and used those trademarks and products to fraudulently induce consumers to send payment for goods via Western Union Transfer. Respondent never sent any goods in response to these payments. Complainant has reported this fraudulent activity to the FBI, the Wisconsin Department of Consumer Protection, and the Wisconsin Attorney General’s Office. The domain name is confusingly similar to Complainant’s TREK trademark. Respondent has no rights or legitimate interests in the <buyatrek.com> domain name which incorporates Complainant’s TREK trademark. Respondent registered and used the domain name in bad faith. B. Respondent The entire Response states as follows: “I did not register this domain name nor do I have any connection whatsoever with its use. I was totally unaware of the existence of this domain name prior to receiving this complaint.” C. Additional Submissions Complainant’s Amended Complaint contains no arguments or issues not already covered in the Complaint. FINDINGS 1. Complainant is a well-known seller of bicycles and associated equipment and accessories. 2. Respondent is an individual who does not disclose what business, if any, he pursues. 3. Complainant holds trademark registrations from the United States Patent and Trademark Office for the TREK trademark, for bicycle products, granted well prior to the registration of Respondent’s <buyatrek.com> domain name. 4. Though Respondent is shown as the registrant of the <buyatrek.com> domain name, he denies registering the domain name and further denies any knowledge of the domain name in any manner whatsoever. The evidence submitted in this case does not permit a finding that this assertion is true or untrue. 5. The domain name, <buyatrek.com>, is confusingly similar to Complainant’s TREK trademark. 6. Respondent’s failure to respond or contest the allegations of the Complaint, as required by the Rules and Policy, stands as an admission that the allegations are true. 7. Respondent has no rights or legitimate interests in the domain name. 8. The <buyatrek.com> domain name was registered and used in bad faith. 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 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; (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 In order to prevail in a domain name dispute, Complainant must prove that a trademark or service mark in which Complainant has rights is identical or confusingly similar to the domain name under consideration. See Policy ¶4(a)(i). Complainant has rights in the TREK trademark, as a result of the registrations with the United States Patent and Trademark Office for the TREK trademark dating back to September 8, 1981. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and that a respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept 16, 2002). The <buyatrek.com> domain name is confusingly similar to Complainant’s TREK mark because the domain name incorporates the mark and merely adds the generic or descriptive terms “buy” and “a” and the generic top-level domain (“gTLD”) “com.” The mere additions of generic or descriptive terms and a gTLD do not significantly distinguish the domain name from the trademark. See Arthur Guinness Son & Co. (Dublin) v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic term or word); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1309 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied.); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). Complainant prevails under the requirement of Policy ¶ 4(a)(i). Rights or Legitimate Interests When a complaint is properly served, the respondent, in order to prevail, is obliged to “Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent…to retain registration and use of the disputed domain name.” See Rules, ¶ 5(b)(i). “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirements under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” See Rules, ¶ 14(b). “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, there Rules and any rules and principles of law that it deems applicable.” See Rules, ¶ 15(a). Under general principles of law, averments in a pleading to which a responsive pleading is required, are admitted when not denied in the responsive pleading. See Federal Rules of Civil Procedure, Rule 8(d). This is similar to English Rules Under the Judicature Act and to the practice of the States. When a response is filed in any domain name dispute case, even when a respondent makes an attempt to answer a complainant’s case, a respondent must come forward with concrete evidence rebutting a complainant’s assertion that respondent has no rights or legitimate interests in the domain name. When a respondent presents no concrete evidence, the conclusion can be drawn that respondent has no rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). The finding is made that Respondent’s failure to contest any allegation contained in the Complaint, stands, both under the Rules and general principles of law, as an admission that Complainant’s allegations are true. See Lifetouch, Inc. v. Fox Photographics, FA13667 (Nat. Arb. Forum Mar. 21, 2005). Complainant prevails under the requirements of Policy ¶4(a)(ii). Registration and Use in Bad Faith Complainant avers that Respondent by using the domain name, has intentionally attracted, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website and products or services that fraudulently appear to be offered on Respondent’s website. In addition, Complainant avers that the <buyatrek.com> domain name is being used in connection with a classical fraud scheme in which Internet users pay online and receive nothing in return. Complainant further avers that Respondent registered the domain name with full knowledge of Complainant’s TREK trademark. The fact that Respondent fails to challenge or contest these averments constitutes an admission that the averments are true. See Lifetouch, Inc. v. Fox Photographics, FA14667 (Nat. Arb. Forum Mar. 21, 2005). The evidence presented by Complainant shows that the website at <buyatrek.com> offered to sell TREK bicycles to consumers by a transfer of sums of money from buyer to seller after which no merchandise was ever delivered nor could buyers contact any representative of seller or recover the sums paid. Complainant prevails under the requirements of Policy ¶ 4(a)(iii). 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 <buyatrek.com > domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: April 14, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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