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
Lyon, Panelist:-
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)
TRUCKALLEY.COM, LLC
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.
A. Identity.
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.
7. Decision
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
Sole Panelist
Dated: May 26, 2000
Domain
Name Transferred
