Complainant is Harbor Freight Tools USA, Inc. of Calabasas, California, United States of America represented by Tarter Krinsky & Drogin LLP, New York, New York, United States of America.
Respondent is Franchise Analyzer of Winter Park, Florida, United States of America.
The disputed domain name <harborfreightfranchise.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 18, 2013, the Registrar transmitted its verification response to the Center by email confirming Respondent as the registrant and provided the registrant’s contact details. On July 26, 2013, Complainant filed an amendment to the Complaint to correct a typographical error in the Complaint.
The Center verified that the Complaint together with the amendment to the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 31, 2013. The due date for Response was August 20, 2013 per paragraph 5(a) of the Rules. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2013.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 23, 2013. 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 paragraph 7 of the Rules.
Complainant states that it “is the owner of the trademarks HARBOR FREIGHT and HARBOR FREIGHT TOOLS which are used by Complainant in connection with retail store services, mail order catalog services and online retail store services featuring tools, machinery, automotive equipment, lawn and garden equipment, safety equipment, furniture and clothing.” Complainant further states that it, and its predecessors-in-interest, have continuously used the HARBOR FREIGHT mark in connection with such services since at least 1988, and that it has promoted and offered for sale such services in more than 350 retail stores in the United States, online at “www.harborfreight.com” and via mail order catalogs “to millions of consumers throughout the United States generating billions of dollars in sales.”
Complainant states, and provides evidence to support, that it is the registrant of the following trademark registrations in the United States:
- U.S. Registration Number. 1,530,291 for HARBOR FREIGHT and Design for use in connection with “mail order services in the field of hand and power tools and tool accessories” (registered on March 14, 1989);
- U.S. Registration Number 2,403,471 for HARBOR FREIGHT and Design for use in connection with “retail stores, mail order services and catalog services featuring machinery, clothing, furniture, safety equipment and automotive equipment” (registered on November 14, 2000); and
- U.S. Registration Number 4,300,776 for HARBOR FREIGHT TOOLS for use in connection with “retail store services, mail order catalog services and online retail store services featuring tools, machinery, automotive equipment, lawn and garden equipment, safety equipment, furniture and clothing” (registered on March 12, 2013).
These registrations are hereafter referred to as the “HARBOR FREIGHT Trademark.”
Complainant states, and provides evidence to support, that Respondent is using the Disputed Domain Name “in order to promote and sell its franchising advisory services” on a website that “does not offer or sell [Complainant’s] franchises” given that “[a]ll of [the Habor Freight] stores are owned by Complainant” and, therefore, “there is no such thing as a Harbor Freight franchise.”
The Disputed Domain Name was created on September 4, 2011.
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because (to cite Complainant’s argument in its entirety) “[t]he Disputed Domain Name consists of the Complainant’s HARBOR FREIGHT mark and the word ‘franchise’ and is confusingly similar to the Complainant’s HARBOR FREIGHT mark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent’s Website purports to offer consumers advice on franchising opportunities” but “[a]dvertising that purports to provide advice on or services related to obtaining a ‘Harbor Freight franchise’ is completely false as there is no such thing as a Harbor Freight franchise”; upon information and belief, Respondent is “owned and controlled by” Paydues, Inc., which itself is owned and controlled by Mr. J. Rager, each of which are “serial cybersquatters who frequently register and use, without authorization, domain names which consist of a third party’s trademark combined with the word ‘franchise’ as with the Disputed Domain Name”; and “Respondent registered and is using the Disputed Domain Name with the intent to cause consumer confusion and to improperly divert consumers away from Complainant’s Website to Respondent’s Website where consumers will click on the links… and thus generate revenue for Respondent.”
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[u]pon information and belief, Respondent’s use of Complainant’s [HARBOR FREIGHT Trademark] in the Disputed Domain Name and on Respondent’s Website is intended to cause Internet search engines to prominently list Respondent’s Website when Internet users conduct Internet searches for goods and services offered and sold under Complainant’s [HARBOR FREIGHT Trademark] and to otherwise mislead consumers into believing that Respondent’s Website is somehow related to or authorized by Complainant.”
The Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the HARBOR FREIGHT Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the HARBOR FREIGHT Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “harborfreightfranchise”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Although Complainant has essentially cited no authority or made any legal arguments as to how the Disputed Domain Name is confusingly similar to the HARBOR FREIGHT Trademark, Complainant has elsewhere referred to a number of decisions under the Policy involving domain names that contained a complainant’s trademark plus the word “franchise.” In those decisions, the panels have found confusing similarity. See, e.g., HBH Limited Partnership v. Paydues Inc., WIPO Case No. D2012-0446 (transfer of <honeybakedhamfranchise.com>); Buffalo Wings & Rings v. Paydues Inc., WIPO Case No. D2012-1462 (transfer of <buffalowingsandringsfranchise.com>); and Radiator Express Warehouse v. Paydues Inc., WIPO Case No. D2012-1252 (transfer of <1800radiatorfranchise.net>). The same conclusion is applicable here.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent’s Website purports to offer consumers advice on franchising opportunities” but “[a]dvertising that purports to provide advice on or services related to obtaining a ‘Harbor Freight franchise’ is completely false as there is no such thing as a Harbor Freight franchise”; upon information and belief, Respondent is “owned and controlled by” Paydues, Inc., which itself is owned and controlled by Mr. J.n Rager, each of which are “serial cybersquatters who frequently register and use, without authorization, domain names which consist of a third party’s trademark combined with the word ‘franchise’ as with the Disputed Domain Name”; and “Respondent registered and is using the Disputed Domain Name with the intent to cause consumer confusion and to improperly divert consumers away from Complainant’s Website to Respondent’s Website where consumers will click on the links… and thus generate revenue for Respondent.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant has not specifically alleged which, if any, of the foregoing factors exists. However, Complainant appears to argue that paragraph 4(b)(iv) of the Policy applies, and numerous previous panels have found bad faith under facts analogous to those here. See, e.g., the Paydues decisions listed above, each of which involved a complainant’s trademark plus the word “franchise” in the disputed domain name, and a website similar to the one here.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <harborfreightfranchise.com> be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: September 9, 2013