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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TRS Quality, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd

Case No. D2009-0630

1. The Parties

The Complainant is TRS Quality, Inc. of Fort Worth Texas, United States of America.

The Respondents are Transure Enterprise Ltd of Wickhams Tortola, Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland and Above.com Domain Privacy of Beumaris Victoria, Australia.

2. The Domain Names and Registrar

The Disputed Domain Names <radioshackl.com> and <radioshackultimate.com> are registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2009. On May 12, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On May 13, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 15, 2009. The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 10, 2009.

The Center appointed Charné Le Roux as the sole panelist in this matter on June 19, 2009. 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 Complainant is TRS Quality, Inc., which is a subsidiary of Radioshack Corporation, a New York Stock Exchange company. The Complainant is the owner within the Radioshack Corporation corporate family that owns the RADIOSHACK trade mark. It asserts rights in its trade mark RADIOSHACK through registration and substantial use. Trade mark registrations for the mark RADIOSHACK include United States registrations dated June, 1959, November, 1960, September 1965, November 8, 1977, October, 1979, August, 1985, February, 1992 and November, 1996 covering various consumer electronics, various services in operating retail stores, educational services and retail services. The Complainant also provided evidence of substantial use of the RADIOSHACK trade mark since 1923. Printouts from the online store for RADIOSHACK goods and services at "www.radioshack.com" were provided as well as details of corporate information at "www.radioshackcorporation.com". There are approximately 4400 Radioshack Corporation stores, 1400 dealer outlets, about 700 wireless phone kiosks throughout the United States of America and approximately 200 company operated stores in Mexico that operate under the RADIOSHACK trade mark. The RADIOSHACK trade mark was promoted to businesses through advertising, publications and on the Internet.

The Disputed Domain Names were registered on March 2, 2009 and March 16, 2009 respectively and the WhoIs information at the time the Complaint was filed indicated the registrant in both instances as Above.com Domain Privacy. Upon a request from the Center, the registrar subsequently identified the registrant as Transure Enterprise Ltd. Correspondence following a letter of demand sent by the Complainant to the holding company of the registrar resulted in a response from a Mr. D. Smith (also named in the original Complaint) who answered that he will transfer the Disputed Domain Names against payment of his registration and administration fees of USD 250 and USD500 respectively. The Complainant did not react to this offer.

The Disputed Domain Names are connected to websites with sponsored links to the website of third parties offering goods and services in a very broad range, including goods and services in competition with the Complainant.

5. Parties` Contentions

A. Complainant

The Complainant contends that it is the owner of the trade mark RADIOSHACK and that it owns many registrations for this mark worldwide, some of which were filed as long ago as 1956. It provided details of a selection of its United States registered trade marks as set out in paragraph 4 above. The Complainant also indicates that it has conducted business using the trade mark RADIOSHACK since 1923 and that a substantial reputation vests in it. It contends that the trade mark RADIOSHACK is famous through considerable use that has been made of it around the world. The Complainant also indicates that it conducts the websites at "www.radioshack.com", an on-line store and "www.radioshackcorporation.com", which include information about the structure of the Complainant and its long standing use.

The Complainant contends that Above.com Domain Privacy, Transure Enterprise Ltd and Mr. D. Smith should be joined as the Respondents, since Above.com Domain Privacy is indicated as the registrant on the WhoIs record, Transure Enterprise Ltd was identified by the registrar as the registrant and Mr. D. Smith appeared to control the Disputed Domain Names in offering to sell them.

The Complainant contends that the Disputed Domain Names are confusingly similar to its RADIOSHACK trade mark and that they differ only marginally from the Complainant`s RADIOSHACK trade mark with the addition of the word "ultimate" in <radioshackultimate.com> and the letter "l" in <radioshackl.com>.

The Complainant also contends that the Respondents lack rights or legitimate interest in the Disputed Domain Names in that:

(a) the Respondents do not own or are known by the names "radioshackl" or "radioshackultimate" or "radioshack" and do not operate a business under these names;

(b) the Respondents have never been authorized by the Complainant to use the Complainant`s trade mark in any way including in the Disputed Domain Names;

(c) the Respondents have never used the Disputed Domain Name for any bona fide non-commercial use and that the use of the Disputed Domain Names in connection with a pay-per-click websites does not constitute bona fide use;

(d) the Respondents are using the Disputed Domain Names on a commercial basis to primarily benefit from the Complainant`s reputation in the trade mark RADIOSHACK.

The Complainant further contends that the Respondents have registered and are using the Disputed Domain Names in bad faith because the Respondents have adopted the Complainant`s trade mark in the Disputed Domain Names in order to divert potential Internet users searching for the Complainant to the websites associated to the Disputed Domain Names.

The Complainant also contends that the Respondents adopted the Disputed Domain Names incorporating the Complainant`s famous RADIOSHACK trade mark to divert Internet traffic, in order to generate advertising revenue and without authorization from the Complainant and that this type of conduct constitutes bad faith.

The Complainant states that the Respondent Transure Enterprise Ltd has a well documented pattern of registering domain names that are confusingly similar or identical to distinctive or famous trade marks and that it engages in a pattern of such conduct. The Complainant advises that in all the proceedings involving the Respondent Transure Enterprise Ltd, the respective panels found it to have acted in bad faith. It advised that a finding has been made by a previous panel that Transure Enterprise Ltd has engaged in a pattern of registering domain names containing third party trade marks.

The Complainant contends that the Respondent Mr. D. Smith demonstrates bad faith by his offer to sell the Disputed Domain Names for an amount in excess of the costs that he incurred.

The Complainant finally contends that the Respondents filed misrepresentations to the Registrar that the Disputed Domain Names did not infringe any rights of any third party and that this conduct constitutes bad faith.

The Complainant requests that the Disputed Domain Name be transferred to it.

B. Respondent

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

6. Discussion and Findings

(i) Procedural matters

Default of the Respondents.

The Respondents have not responded to the allegations made in the Complaint but this does not relieve the Complainant of the burden of proof. The Respondents failure to submit a Response does, however, in terms of the Rules, permit the Panel to draw appropriate inferences.

Joinder of the Respondents.

A Respondent is defined as "the holder of the domain name registration against which a complaint is initiated". Based on the WhoIs record at the time of filing the Complaint, the Complainant correctly cited Above.com Domain Privacy as Respondent. The beneficial owner of the Disputed Domain Names was subsequently identified by the registrar as Transure Enterprise Ltd and it received notice of the Complaint and the present administrative proceedings. It has consistently been held by panels that the beneficial owner may be named as respondent and in these circumstances Transure Enterprise Ltd is correctly cited as the Respondent. The Panel finds that one Mr. D. Smith is undoubtedly an alias used by an unknown representative or agent of Transure Enterprise Ltd and that while it may well be that he has offered the Disputed Domain Names for sale it may likely have been in his capacity as an agent or otherwise. In any event the Panel nonetheless is not persuaded that Mr. D. Smith should be cited independently as a respondent.

(ii) Substantive matters

Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Names to be transferred:

(a) that the Disputed Domain Names registered by the Respondents are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) that the Respondents have no rights or legitimate interests with respect to the Disputed Domain Name; and

(c) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

(i) The Complainant has rights in a trade mark.

The Panel finds that the Complainant has proven that it owns rights in the registered RADIOSHACK trade mark.

Furthermore, the Complainant`s evidence in support of its substantial and wide spread use of and reputation in the RADIOSHACK trade mark was not contested by the Respondents. The Panel notes that in addition to the registered rights, the Complainant has also established that a significant reputation attaches to the RADIOSHACK trade mark and that it is in fact well-known.

(ii) The Disputed Domain Names are identical or confusingly similar to the Complainant`s mark.

The only differences between the Disputed Domain Names and the Complainant`s trade mark are the generic word "ultimate" in <radioshackultimate.com> and the letter "l" in <radioshackl.com>. There are numerous panel decisions where findings were made that the mere addition of letters to trade marks or generic words, do not preclude a finding of confusing similarity. The Panel finds that the Disputed Domain Names are confusingly similar to the Complainant`s trade mark RADIOSHACK.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made out a prima face case in asserting that the Respondents have no rights or legitimate interests in the Disputed Domain Names, to which the Respondents have not rebutted. By failing to file a response, the Respondents have not demonstrated any rights or legitimate interests in the Disputed Domain Names.

Furthermore, on the record presented in this matter, the Respondents registered the Disputed Domain Names well after the RADIOSHACK trade mark had been registered and achieved its widely known status. In these circumstances, the Panel finds it difficult to believe that the Respondents were unaware of the Complainant`s trade mark when the Disputed Domain Names were registered.

The Panel also concurs with the Complainant`s assertion that the Respondents` choice of the Disputed Domain Names demonstrates an intention to derive a benefit from the substantial goodwill attached to the Complainant`s RADIOSHACK trade mark. Internet users will be attracted to the websites linked to the Disputed Domain Names by the RADIOSHACK trade mark and will likely access the websites because of interest in the Complainant`s goods and services.

The Panel finds that the Complainant has discharged its onus in proving that the Respondents do not have rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant relies on Paragraph 4(b)(ii) in that the Respondent Transure Enterprise Ltd has registered the Disputed Domain Names to prevent the Complainant from reflecting them in a corresponding domain name and that it has engaged in a pattern of such conduct. The Panel has found approximately 11 WIPO cases (see attached annexure A) where this Respondent was cited. Transfers were ordered in all instances. The Panel finds that on the record presented, a case has been made out that this Respondent is engaging in a pattern of conduct for the purposes of paragraph 4(b)(ii) of the Policy.

The Complainant also relies on Paragraph 4(b)(iv) and the Panel concurs that the Respondents are intentionally attempting to divert Internet users to the websites linked to the Disputed Domain Names by exploiting the confusing similarity between the Disputed Domain Names and the Complainant`s RADIOSHACK trade mark and that the Respondents are in all likelihood engaging in such conduct in order to reap commercial benefit.

Having found instances of bad faith registration and use on the part of the Respondents in light of the evidence described in the paragraphs indicated above, the Panel need not consider the further evidence of bad faith put forward by the Complainant.

7. Decision

For all the aforegoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <radioshackl.com> and <radioshackultimate.com> be transferred to the Complainant.

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Charné Le Roux
Sole Panelist

Dated: July 3, 2009