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Trustway Homes, Inc. v. The PC Help Group, Inc. [2005] GENDND 32 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trustway Homes, Inc. v. The PC Help Group, Inc.

Case No. D2004-1010

1. The Parties

The Complainant is Trustway Homes, Inc., Pewaukee, Wisconsin, of United States of America, represented by Reinhart Boerner Van Deuren s.c., United States of America.

The Respondent is The PC Help Group, Inc., New Berlin, Wisconsin, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <trustway.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2004. On December 2, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 3, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2005.

The Center appointed Kevin C. Trock as the sole panelist in this matter on January 11, 2005. 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 the Rules, paragraph 7.

4. Factual Background

The domain name at issue is <trustway.com>. The domain name is registered to the PC Help Group, Inc. The Complainant is Trustway Homes. The Complainant does not own any relevant trademark registrations, but is the registrant for the domain name <trustwayhomes.com>.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has constructed residential homes since 1960, under the name Trustway Homes and has expended substantial sums to promote the name as a residential home builder. Complainant does not assert that it owns any trademark registrations for the mark TRUSTWAY HOMES, but instead contends that it has developed common law rights to the mark TRUSTWAY for use with residential home construction services. Complainant is the listed registrant for the domain name, <trustwayhomes.com>, which was registered on August 21, 1997.

Complainant contends that it hired Respondent to host Complainant’s website beginning in July 1, 2002. Complainant also contends that Respondent registered the domain name <trustway.com> on behalf of the Complainant for the sole purpose of maintaining a website on Complainant’s behalf. Complainant further contends that it authorized Respondent to renew the domain name <trustway.com> on behalf of Complaint on or around August 22, 2002. Complainant does not state to whom the domain name <trustway.com> was originally registered. Complainant does allege, however, that Respondent altered the registration information at some point to list Respondent as the registrant.

In the Spring of 2004, Complainant apparently terminated its business relationship with Respondent, and requested Respondent to transfer the registration of <trustway.com> to Complainant. Respondent has apparently refused. Complainant also alleges that Respondent has placed a “registrar-lock” on the domain name <trustway.com> and that Respondent has entered false information to the registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail, the Complainant must prove the following three elements: (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

The Respondent has not filed a response to the Complaint. Pursuant to the Rules, paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

Complainant claims that it has constructed residential homes since 1960, under the name Trustway Homes and expended substantial sums to promote this name as a provider of residential home building services. As a result, Complainant contends that the name Trustway Homes has become distinctive of Complainant’s services and has achieved a degree of consumer goodwill, recognition, and reputation. Based on this record, the Panel finds that the Complainant has established legitimate trademark rights in the name Trustway Homes.

The disputed domain name <trustway.com> is substantially identical to the Complainant’s protected name Trustway Homes. Accordingly, the Panel finds that the disputed domain name <trustway.com> is confusingly similar to the mark Trustway Homes in which the Complainant has rights. See, EH New Ventures Inc. v. WW Processing, WIPO Case No. D2003-0007 (ordering transfer of domain names <caribbeangold.com>, and <caribbeangold.org>, to complainant, the common law owner of the CARIBBEN GOLD CASINO trademark).

B. Rights or Legitimate Interests

Because Respondent has not filed a response, the Panel only has the Complaint by which to address the issue of Respondent’s rights or legitimate interest in the disputed domain name.

Complainant contends that it hired Respondent to host Complainant’s website beginning in July 1, 2002. Complainant also contends that Respondent registered the domain name <trustway.com> on behalf of the Complainant for the sole purpose of maintaining a website on Complainant’s behalf. Complainant further contends that it authorized Respondent to renew the domain name <trustway.com> on behalf of Complaint on or around August 22, 2002.

In the Spring of 2004, Complainant asserts that it terminated its business relationship with Respondent, and requested Respondent to transfer the registration of <trustway.com> to Complainant. Complainant asserts that Respondent is no longer authorized to act on Complainant’s behalf. Respondent has apparently refused to transfer the domain name.

Complainant contends that Respondent never conducted business under the Trustway name and that Respondent only obtained the domain name at the Complainant’s request and for the sole benefit of the Complainant. Complainant further contends that Respondent altered the ownership information for the disputed domain name to list Respondent as the registrant.

Based on this record, there is sufficient evidence to persuade the Panel that the Respondent does not have a right or a legitimate interest in the disputed domain name <trustway.com>.

C. Registered and Used in Bad Faith

In the Spring of 2004, Complainant apparently terminated its business relationship with Respondent, and requested Respondent to transfer the registration of <trustway.com> to Complainant. Respondent has refused. Complainant alleges that Respondent altered the registration information to list Respondent as the registrant. Complainant also alleges that Respondent has placed a “registrar-lock” on the disputed domain name and that Respondent has entered false information to the registration in an attempt to prevent Complainant from acquiring registration to and use of the domain name <trustway.com>.

This conduct suggests that the Respondent is attempting to prevent the Complainant from using the disputed domain name and that the Respondent registered and used the domain name in bad faith. See Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850 (December 23, 2003) (bad faith found where former employee of Complainant registered domain names on Complainant’s behalf while employed and subsequently modified registration records to interfere with Complainant’s use of the domain names).

Accordingly, the record contains sufficient evidence for this Panel to conclude that the Respondent has registered and is using the disputed domain name <trustway.com> in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <trustway.com> be transferred to the Complainant.

Kevin C. Trock
Sole Panelist

Dated: January 25, 2005