national arbitration forum

 

DECISION

 

James L. Throneburg v. TerraLycos Mexico SA de CV

Claim Number:  FA0509000562772

 

PARTIES

Complainant is James L. Throneburg (“Complainant”), represented by Brian M. Davis, of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC 28280-4000.  Respondent is TerraLycos Mexico SA de CV  (“Respondent”), Blvd, Diaz Ordaz 123, Santa Maria, Monterra, Nuero Leon 64650, Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thorloperformance.com>, registered with Tucows 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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 20, 2005.

 

On September 16, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <thorloperformance.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 September 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 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@thorloperformance.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 17, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 and the THORLO Mark

 

Complainant James L. Throneburg is an individual residing in North Carolina, and is the owner of the trademark THORLO, used in connection with socks. Complainant has entered into an exclusive license agreement with THOR·LO, Inc. (“THOR·LO”) regarding the sale of merchandise under the THORLO mark.  THOR·LO is one of the largest and most well known manufacturers of socks in the United States, and sells its products internationally.  Complainant is also the Chairman of the Board and Chief Executive Officer of THOR·LO.  (Declaration of James L. Throneburg.

 

Operating under an exclusive license granted by Complainant, THOR·LO has sold socks in the United States and various parts of the world under the THORLO mark since at least as early as June 17, 1963.  Complainant has obtained several registrations of his THORLO mark throughout the world, including U.S. Trademark Registration No. 1,119,696, issued June 5, 1979, that covers men’s, women’s and children’s socks, and Mexican Registration No. 418,455.  The U.S. registration is incontestable and, as such, is conclusive evidence of Complainant's exclusive right to use, and to license THOR·LO to use, the THORLO mark in commerce in the United States.

 

            The goods of Complainant’s licensee have been and are being advertised and promoted extensively under the THORLO mark internationally in various forms of media, including the Internet.  Complainant’s licensee also registered the domain name thorlo.com, which domain name is used to direct Internet users to THOR·LO’s website having the URL www.thorlo.com.  That website is an important part of THOR·LO’s marketing program and is used to promote goods sold under Complainant’s mark.

 

            By reason of the adoption and longstanding continuous use of Complainant’s THORLO mark, that designation has a distinctive quality and has acquired special and particular significance and very valuable goodwill as identifying Complainant, his licensee and their goods, so that when members of the public in this country and elsewhere see or hear such mark and trade name, they automatically think of Complainant or his licensee.  Consequently, through such usage and recognition, Complainant has acquired (in addition to his statutory rights in numerous countries) common-law rights in the THORLO mark as a proprietary trade name and trademark, which rights extend, without limitation, to the exclusive right to use THORLO in the United States, Mexico and numerous other countries, and the right to prevent others from using any marks, domain names, or other designations that are confusingly similar thereto.

 

B.        Respondent’s Unlawful Activities

 

            Respondent, an entity which has identified itself to the registrar as “TerraLycos Mexico SA de CV,” has provided the registrar, Tucows, Inc., with the mailing address Blvd. Diaz Ordaz 123, Santa Maria, Monterra, Nuero Leon 64650, Mexico.  The WHOIS database provides the following additional information regarding the Administrative Contact for the domain name: telephone 52013336600163, E-Mail thorloperformance@hotmail.com.  It appears from the WHOIS database that Respondent requested this domain name on March 25, 2003.

 

            Respondent is using the subject domain name to direct Internet users to a website having the URL http://www.thorloperformance.com, on which website Respondent sells socks bearing the TEKA mark. Respondent is conducting these activities notwithstanding the fact that it has no rights or legitimate interests in respect of said domain name, and the subject domain name is confusingly similar to Complainant’s registered THORLO mark.  (Davis Decl., ¶ 3 and Exhibit 2)

 

            On August 11, 2005, Complainant’s counsel, Brian M. Davis, sent a letter to Respondent’s administrative contact requesting that it discontinue use of the domain name thorloperformance.com and transfer the domain name to James L. Throneburg.  On August 22, 2005, Complainant’s counsel sent a message to Respondant’s administrative contact seeking a response to the August 11, 2005 letter.  No response was ever received from Respondant.

 

 

ARGUMENT

 

            Pursuant to the UDRP, Complainant must establish the following to obtain the relief he requests in this action:  (i) the accused domain name (thorloperformance.com) is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the accused domain name; and (iii) the accused domain name has been registered and is being used in bad faith.  (UDRP § 4(a))  As reflected in the accompanying evidence made of record in this proceeding and for the reasons set forth below, Complainant readily satisfies each of these requirements.

 

A.        The Accused Domain Name Is Confusingly Similar to Complainant’s Mark

 

            Complainant owns valid and enforceable common law rights in the THORLO mark in the United States, and elsewhere by virtue of his licensee’s continuous use of such mark for several years.  Further, Complainant owns valid statutory rights in the THORLO mark in the United States and Mexico by virtue of his licensee’s longstanding use and his registration of that mark in the United States Patent and Trademark Office (U.S. Trademark Reg. No. 1,119,696) (15 U.S.C. § 1065) and the Department of Inventions and Trademarks of the Mexican Republic (Mexican Trademark Reg. No. 418,455). 

 

            The accused domain name is strikingly similar to Complainant’s THORLO mark.  In fact, it is identical to Complainant’s mark except that it includes the laudatory term “performance.”  It is well established that such domain names are confusingly similar to the underlying third-party mark despite the inclusion of additional terms.   See Thomas Cook Holdings Limited v. Vacation Travel (WIPO Case No. D2000-1716) (gmcflight.com similar to GMC mark used in airline industry); TWC Business Trust v. Mukesh Patel and Comxsys Consulting (WIPO Case No. D2000-1666) (twc-consulting.com similar to TWC mark).  Because Respondent registered and began using the accused domain name long after Complainant acquired rights in his mark, Complainant satisfies the first element of proof required under the UDRP.

 

 

B.        Respondent Has No Rights Or Legitimate Interests In The Accused Domain Names

 

Respondent has no preexisting rights in “Thorlo” or “Thorloperformance” as a trademark, service mark or trade name.  Hence, it may be presumed that Respondent has no rights or legitimate interests in “thorloperformance.com” as a domain name. See Arthur Guiness Son & Co. (Dublin) Limited  v. Feeney O’Donnell and John O’Donnell (WIPO Case No. D2000-1710) (holding that the respondents had no legitimate interests in the domain name guinessdraught.org, as members of the public would assume an association between respondents’ proposed website and complainant).

 

 

C.        Respondent Has Registered And Is Using The Domain Name In Bad Faith

 

The subject domain name is being “used” inasmuch as an active commercial website offering competing products is accessible via the domain name.  The evidence also indicates that Respondent did not register or begin using the subject domain name until no earlier than March 25, 2003 – long after Complainant’s THORLO mark had acquired its fame.  Without any preexisting rights in either “Thorlo” or “Thorloperformance” as a trademark, service mark, or trade name, it may be assumed that Respondent adopted, registered, and is using the subject domain name because of the fame and goodwill associated with Complainant’s THORLO mark.

 

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant James L. Throneburg owns the trademark THORLO, used in connection with socks.  Complainant has entered into an exclusive licensing agreement with THOR·LO, Inc. (“THOR·LO”), regarding the sale of merchandise under the THORLO mark.  THOR·LO is one of the largest and most well-known manufacturers of socks in the United States, and sells its products internationally.  Complainant is also the Chairman of the Board and Chief Executive Officer of THOR·LO.

 

Operating under an exclusive license, Complainant has sold socks in the United States and various parts of the world under the THORLO mark since at least as early as 1963.

 

Complainant has registered its THOR·LO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,119,696 issued June 5, 1979). 

Respondent registered the <thorloperformance.com> domain name on March 25, 2003.  Respondent’s domain name resolves to a website featuring products that directly compete with those offered by Complainant.

 

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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 proved its rights in the THORLO mark through registration of the mark with the USPTO.  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

Respondent’s <thorloperformance.com> domain name is confusingly similar to Complainant’s mark, as the domain name fully incorporates Complainant’s THORLO mark in its entirety and adds the generic term “performance.”  Such a change is not enough to overcome a finding of confusing similarity pursuant to Policy 4(a)(i).  See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).

 

Furthermore, the addition of the top-level domain “.com” is irrelevant in determining whether the <thorloperformance.com> domain name is confusingly similar to Complainant’s mark.  See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

 

The Panel finds that Policy ¶4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have rights or legitimate interests in the <thorloperformance.com> domain name.  When a complainant establishes a prima facie case pursuant to Policy ¶4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests.  Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

Respondent is not commonly known by the <thorloperformance.com> domain name.  Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Respondent is using the <thorloperformance.com> domain name to operate a commercial website featuring goods that compete with Complainant’s goods.  The Panel finds Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users to its website for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

The Panel finds that Policy ¶4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds Respondent has registered and used the <thorloperformance.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by using the domain name, which contains a confusingly similar version of Complainant's THORLO mark, to sell socks in direct competition with Complainant.  Such use constitutes disruption and is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith by attracting Internet users to a website that competes with complainant's business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from complainant's marks suggests that respondent, complainant's competitor, registered the names primarily for the purpose of disrupting complainant's business).

 

Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv), as Respondent is using the  <thorloperformance.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.  See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant's mark to sell the complainant's products); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds that Policy ¶4(a)(iii) has been satisfied.

 

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 <thorloperformance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  Monday, October 31, 2005