Off Lease Only Inc v. Respondent Ford
Claim Number: FA0706001023150
Complainant is Off Lease Only Inc (“Complainant”), represented by Ejola Christlieb Cook, of Ticktin & Rodriguez, P.A., 3700 Coconut Creek Parkway, Suite 160, Coconut Creek, FL 33066. Respondent is Wayne Akers Ford (“Respondent”), represented by Matthew S. Nelles, of Ruden, McClosky, et. al., 200 East Broward Boulevard, Suite 1500, Fort Lauderdale, FL 33301.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newoffleaseonly.com> and <newofflease.com>, both of which were registered with Go Daddy Software, Inc. ("Go Daddy") on May 25, 2007.
The undersigned, David H Tatham, Hon. John J Upchurch and Dawn Osborne certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 27, 2007; the Forum received a hard copy of the Complaint on June 28, 2007.
On June 28, 2007, Go Daddy confirmed by e-mail to the Forum that the domain names <newoffleaseonly.com> and <newofflease.com> ("the disputed domain names") were registered with it and that the Respondent is the current registrant of the names. Go Daddy has verified that Respondent is bound by its 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 July 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of July 25, 2007 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 email@example.com and firstname.lastname@example.org by e-mail.
On July 18, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of time to respond to the Complaint. On July 19, 2007, the Forum, over Complainant’s objections, granted Respondent an extension and set a new deadline of August 1, 2007 for the filing of a Response.
On July 20, 2007, Respondent requested, pursuant to Supplemental Rule 6, a second extension of time to respond to the Complaint. On July 23, 2007, the Forum, over Complainant’s objections, granted Respondent an extension and set a new deadline of August 10, 2007 for the filing of a Response.
A timely Response was received and determined to be complete on August 10, 2007.
An Additional Submission from Complainant was received on August 17, 2007. The Additional Submission was deemed deficient under the National Arbitration Forum’s Supplemental Rule 7, as it was not timely.
A timely and complete Additional Submission was received from Respondent on August 21, 2007.
On August 22, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed David H Tatham, Hon. John J Upchurch and Dawn Osborne as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant began its business in March 2004. It exclusively purchases formerly leased vehicles at auction and resells them to the public. Although Complainant operates out of its dealer lot in Lake Worth, Florida, the bread and butter of its business consists of online sales through its website at <offleaseonly.com>, where it displays all of its cars for sale. In the past 3 years Complainant has spent over a million US dollars in advertising to become a well known and trusted site for low priced, formerly leased, Ford, Lincoln, Mercury, and Jaguar vehicles. Complainant allocates the majority of its monthly advertising budget to online advertisements in sites such as <autotrader.com>, and in online search engines. Annexed to the Complaint was a copy of Complainant’s website and copies of its online advertising.
Complainant is the owner of two trademark applications. S.N. 77/201361 is for a composite logo containing the words OffLeaseOnly in bold type over the words WWW.OFFLEASEONLY.COM on one line, and FORDS-LINCOLNS-MERCURYS-JAGUARS on another. The whole is flanked by two squares boxes containing the words DON’T PAY MORE. The other application, S.N. 77/210650 is for just the words “OffLeaseOnly.” Complainant maintains that the marks have been in continuous, commercial, use since March 2004.
Complainant alleges that Respondent is a Ford Dealership, that is located within a 2 mile radius of Complainant in Lake Worth, Florida and that it has been in business since 1955, selling new and used vehicles, including those purchased at auctions for formally leased vehicles. Its service department services those of Complainant’s clientele who purchase the extended warranty contracts which Complainant offers with any Ford vehicles it sells. Complainant alleges that its corporate truck, with its logo prominently painted on all sides of the vehicle, was in Respondent’s service department for a number of weeks in early 2007 for body work repair and anyone walking by the service department could clearly see it.
In May 2007, according to Complainant, Respondent began an advertising campaign including full page print ads, radio spots, and mass mailings claiming a “Grand Opening” just a click away at the first of the disputed domain names <newoffleaseonly.com>. Furthermore, Respondent has advertised its new website utilizing road-front signs and a giant balloon which carried the catch phrase “Why Pay More,” which is strikingly similar to Complainant’s logo “Don’t Pay More.” Photographs of these were annexed to the Complaint.
Complainant contends that Respondent has taken its trade name and simply added the word “New” as a preface. In addition, both of the disputed domain names enter to the same opening page which lists a selection of its available vehicles and which is a simplified yet similar version of that of Complainant.
As soon as Complainant became aware of the above it sent a cease-and-desist letter, a copy of which was annexed to the Complaint. Complainant contends that Respondent’s reaction was to remove the word “only” off some of its commercial signs and Internet home page and to send out a mass mailing a week later which prominently included the disputed domain name <newoffleaseonly.com>.
Complainant maintains that Respondent has been in business for over 50 years selling both new and used cars including formerly leased vehicles. It markets its dealership under the names <wayneakersford.com> and <wayneakers.dealerconnection.com>, but now, with complete knowledge of its direct competitor, Complainant, it has purchased two domain names that have nothing to do it its own trade name or primary marketing strategy. There is nothing “New” about Respondent’s service, they have been selling formerly leased cars for years; nor is it “only” selling formerly leased cars and the terminology employed by Respondent is contradictory, as a formerly leased, used vehicle, cannot possibly be described as “new.” Complainant contends that Respondent has no rights or legitimate interests in either of the disputed domain names.
Complainant further contends that this is clearly a case of bad faith. Ever since Respondent began its “duplicitous campaign,” Complainant’s sales have plummeted. There is no acceptable explanation that Respondent can give as to why they can reasonably use the disputed domain names. It is clear to Complainant that Respondent registered its direct competitor’s trade name, and mimicked its website to direct unsuspecting consumers away from Complainant and divert them to itself.
Respondent states that it has been selling Ford automobiles since 1955 and claims now to be one of the largest Ford dealers in the US. Like most such dealers, it both leases vehicles and sells pre-owned ones. It permits its customers to trade in their leased vehicles for a new one, after which they will sell the off-lease vehicle to another customer. The term “off lease” is the common generic term used throughout the automobile industry for referring to a vehicle coming off-lease and on to the pre-owned market. Respondent contends that it therefore has a perfectly legitimate business interest in the two disputed domain names both of which incorporate this term.
Respondent notes that Complainant does not yet have a registered trademark incorporating its trade name “Off Lease” and that its trademark applications have not yet even been reviewed by an Examiner in the USPTO. Respondent believes it likely that they will be refused registration as the term “Off Lease” is generic and deceptive when applied to Complainant’s business as they sell many, many vehicles that have not come off lease.
Respondent maintains that it did not act in bad faith when registering the disputed domain names and that they have always been used in connection with a bona fide offering of goods, namely the sale of off lease vehicles.
Lack of Evidence
Respondent contends that the Complaint consists largely of a number of allegations and statements which are unsupported by documentary evidence. For example –
· The statement that Complainant has spent over a million dollars in advertising to become a well-known and trusted site for low priced vehicles.
· The statement that Complainant allocates the majority of its monthly advertising budget to online advertisements and search engines, which steer the public to its dealer lot and website.
· The statement concerning Respondent’s service department and the appearance thereon of Complainant’s truck.
· The allegations that Respondent’s website is a “simplified yet similar version of” its own site.
· The allegations concerning Respondent’s marketing strategy.
· The allegations that Respondent has acted in bad faith and had a “duplicitous campaign” that caused Complainant’s sales to plummet.
Under this general heading, Respondent alleged that Complainant has no rights in the terms “Off Lease,” “Off Lease Only” or “offleaseonly.com” because they are either generic, deceptive, or weak. Respondent adduced a number of arguments in support thereof , including – quotations from Decisions in the US courts, a Declaration from its General Sales Manager, an extract from Wikipedia, a reference in one of Complainant’s exhibits which used the term generically, quotations from the well-known book “McCarthy on Trademarks,” and references to the Lanham Act.
Respondent points out that only the first of the disputed domain names - <newoffleaseonly.com> - incorporates Complainant’s mark as a whole and that as the common portion is generic, descriptive and weak, the addition of the prefix “new” avoids any likelihood of confusion. The second of the disputed domain names does not even incorporate Complainant’s weak mark.
Respondent maintains that it has legitimate business interests in both of the disputed domain names because it has been in the business of selling Ford automobiles since 1955 and as a result of the increasing popularity of trading in leased vehicles, its inventory of off-lease vehicles has steadily increased.
For many years Respondent has advertised its vehicles in The AutoTrader, which is a well-recognized, national, Internet and print publication specializing in sales of pre-owned vehicles. Respondent has also marketed vehicles through newspaper, television, radio, mailers and the Internet. In March 2007, Respondent’s pre-owned vehicle division implemented a business strategy to increase its Internet advertising exposure particularly to capitalize on the increasing number of off-lease vehicles. As part of this plan, Respondent registered the dispute domain names in order to attract consumers looking for off-lease vehicles. The names were chosen primarily because “off lease” is a commonly recognized term, and the word “new” was added because Respondent wanted to preserve the right to expand its use of the site later to include new car sales and to permit it to decide to use one website for both new and off lease vehicles. Respondent also wanted to connote that its vehicles had just become newly available and believed that the word “new” would increase the number of “hits” because that term is frequently used by consumers searching the Internet for new vehicles. Although off lease vehicles are pre-owned, they are new to the consumers who purchase them.
Respondent concluded from this that they had many legitimate business purposes with regard to the disputed domain names.
Respondent contends that its website is not similar in appearance to Complainant’s site and annexed copies of both sites as proof thereof.
Shortly after receiving Complainant’ cease-and-desist letter, in a gesture of good faith, to avoid controversy, and until the dispute was resolved, Respondent voluntarily “parked” the domain name <newoffleaseonly.com> but without admitting any liability or that there could be any confusion.
Respondent denies that it ever intended to direct unsuspecting consumers away from Complainant and divert them to itself, as Complainant contends. Respondent is not aware of a single consumer who has ever been confused into thinking that they are affiliated with, or endorsed by Complainant, or who has mistakenly clicked on their website while attempting to access Complainant’s site.
Respondent maintains that its registration of the disputed domain names was done in good faith and not with the intention of harming Complainant or in bad faith, and that they acted at all times purely in furtherance of their own well-established, reputable and legitimate business purposes.
C. Additional Submissions
As noted above, both parties filed an Additional Submission and these are summarized as follows –
Complainant contends that this is a case of a brazen taking of the Complainant’s name for the purpose of gaining an economic advantage by confusing the marketplace.
Identical and/or Confusingly Similar
Complainant has been in business since March 2004, with its primary market target focusing on online used car purchasers. A traffic search on August 14 and 15, 2007, on the website at <alexa.com> (a copy of which was annexed to the Additional Submission) shows that Complainant’s website at <offleaseonly.com> has 8,000 results and that this site is ranked at 515,667 in the United States and 3,788,372 globally. Respondent’s website however is only ranked at 8,081,490 globally. Complainant maintains that it is clear from this that its own advertising is far reaching across the varied spectrum of search engines and used car websites. A composite of some, but not all, of the invoices and payments paid by Complainant in July 2007 for online marketing was annexed to the Complaint.
Consumers visiting the various sites where it advertises, including <autotrader.com>, who are interested in a particular car from Complainant will subsequently be directed to visit Complainant’s website at <offleaseonly.com> for additional information.
Complainant contends that Respondent has failed to establish that “Off Lease Only” is generic as a whole but merely argues that the elements within Complainant’s corporate name have common usage.
A Complainant need not hold a trademark registration in order to establish rights in the mark under the Policy, if it can establish common law rights in the mark due to sufficient secondary meaning or can establish common law rights in its mark, and Complainant cited Mortgage Research Center LLC v. Russell Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007). In the present case, Complainant has been in business for over three years, and has extensively advertised on a wide array of auto forums to market its inventory. Complainant contends that as a result it undoubtedly has a common law right to protect its business name and corresponding goodwill.
The fact remains that the disputed domain names are confusingly similar to Complainant’s domain name <offleaseonly.com>. Respondent states that “the addition of the phrase “New” to the mark avoids any likelihood of confusion.” However Complainant contends that the very nature of the term “New” connotes the image that it is an updated, revised, and replacement version of the original.
The issue in the analyses of the first factor of the Policy is not whether there is confusion in the trademark infringement sense, but whether there is sufficient similarity between the domain name and trademark to advance to the consideration of the second and third factor of legitimate interest and bad faith. The first of the disputed domain names <newoffleaseonly.com> incorporates Complainant’s entire mark, only adding the descriptive element of the term “new” and therefore meets the threshold of sufficient similarity.
Rights or Legitimate Interest
Complainant notes that Respondent does not deny the fact that it has never been, or been known as, Off Lease or Off Lease Only. In actuality when consumers type in <newofflease.com> they are directed to Respondent’s home page.
Complainant contends that Respondent’s argument that its legitimate interest in placing the term “new” in front of “Off Lease” and “Off Lease Only” was to “preserve the right to later expand its use of the website to include new care sales,” simply does not make sense. To incorporate new cars would change the purpose of the domain name. It would no longer be new off lease but, for example, NewandNewOffLeaseOnly.com.
Moreover, nothing in the disputed domain names refers to vehicles. When typing the term “Off Lease” into a well respected search engine such as Google everything ranging from office furniture, and computers to cars appear. Even more injurious to Complainant is that when the term “New Off Lease” is searched Respondent appears fourth from the top, still identified as “New Off Lease Only.” Copies of these searches were annexed to the Additional Submission. Had Respondent truly intended to fulfill its marketing strategy as they alleged, it would have made more sense to obtain a domain name such as NewOffLeasecars.com, or NewOffLeaseautos.com, or some other descriptive domain name. It is evident that Respondent’s purpose was to utilize the phrase “Off Lease Only” as a springboard and to purchase a domain name similar to it to catch any consumers who may have forgotten to input the term “only.”
Complainant contends that Respondent’s Declaration from one of its own employees is biased and one sided, allowing no possibility of cross examination, and should have no merit to the facts of this case. Respondent states that it used the websites in commerce before being noticed, but when looking at that actual timeline, Respondent purchased the domain names on May 24, 2007 and if, for argument’s sake, they were able to run their websites immediately it was only two weeks (including a holiday weekend) before the cease-and-desist letter was served on its corporate representative on June 8, 2007. Complainant therefore took immediate action to protect its interests.
Registration and Use in Bad Faith
Complainant contends that it is a pivotal issue of this case as to why Complainant added the term “only” to the term “New Off Lease,” or why Respondent’s slogan “Why Pay More” is so incredibly similar to Complainant’s “Don’t Pay More” but at no time does Respondent give its reason for doing so. Respondent admits that they do not only sell off-lease cars, and then states that a few of the vehicles in Complainant’s inventory are pre-owned and not necessarily off-lease. Complainant does not deny the fact it has a limited amount of pre-owned vehicles, and on its website has always unambiguously stated that it has “the used Ford trucks, or cars, jaguars, and Mazda’s you want at the lowest prices.”
Complainant is unique in that it is the largest independent Off Lease Car Dealer of Palm Beach County, hence the name “Off Lease Only.”
Neither Respondent nor anyone else, should be allowed to place the word “new” in front of the name of another business for the purpose of confusing the marketplace, and be permitted to appropriate the customers of that business. Respondent has thrown money into online advertising, it has purchased deceptive domain names, it has blanketed the local market with bold roadside signs, large inflated hot air balloons, and newspaper advertisements directing both passing motorists and local consumers to itself under the pretext that it is the “New” one.
In response to Complainant’s Additional Submission, Respondent’s Additional Submission includes the following observations –
1. Complainant’s reference to a traffic search is irrelevant. However if Complainant has achieved as much success as it claims then it should not now been complaining about Respondent’s disputed domain names.
2. The term “off lease” is generic throughout the automobile industry. It is also used in the computer industry, as was demonstrated by the Google search attached to Complainant’s reply.
3. Complainant’s argument concerning third parties is misplaced since the Google search shows that there are many, many companies use the term “off lease” in connection with automobiles and there is no evidence to support Complainant’s claim that it alone has used the term “off lease only” in connection with off-lease automobiles in its domain name.
4. Even if secondary meaning was relevant to a generic term, Complainant has still not submitted a single document reflecting that it has achieved a secondary meaning. Complainant has not submitted any figures for its advertising expenditure, sales, or market share, other than a few miscellaneous invoices.
5. It is not true, as Complainant asserts, that when consumers type in <newofflease.com> it directs them to Respondent’s home page, and Respondent annexed copies of the two pages as proof thereof.
6. Respondent does trade under the disputed domain names and so it does have a legitimate interest in them.
7. It is true that the disputed domain names do not refer to vehicles, but then Complainant’s domain name does not either.
8. Complainant has not submitted any evidence that Respondent is not using the disputed domain names for a legitimate purpose or for a bona fide offering of goods.
9. Complainant has not submitted any evidence concerning the advertising slogans, but then this case is about domain names not advertising slogans.
10. Whether or not Respondent sells only off-lease vehicles via its website is irrelevant because Respondent is not the one attempting to assert trademark rights as a means to transfer the domain names. On the other hand, as argued in the Response, Complainant’s use of the term “off lease only” as a trade name precludes trademark protection.
11. The quote from Complainant’s website does not dispel the notion that Complainant sells only off-lease vehicles and regardless of any disclaimer the term is clearly deceptive. In addition, visitors to the site will not see the disclaimer until they have entered the site expecting it to lead to a website offering only off lease vehicles.
12. There is no evidence to support the allegations regarding Respondent’s promotional activities. In any case, if true, they would support the contention that Respondent is using the disputed domain names in connection with a legitimate business.
The Panel finds that Complainant has not produced sufficient evidence that it has acquired a secondary meaning for the term OFF LEASE ONLY. Therefore, regardless of any similarity between this phrase and the disputed domain names, the Complaint fails and the relief requested is therefore denied.
The Panel must first consider whether or not to accept Complainant’s Additional Submission which, according to the Forum, was not timely filed and so was not in accordance with Rule 7(a) of the Forum’s UDRP Supplemental Rules. It was received two days late.
Rule 10(d) of the Rules for the Uniform Dispute Resolution Policy (“the Rules”) makes it quite clear that a Panel has absolute discretion to determine the admissibility of the evidence and there have been many UDRP decisions supporting this Rule.
The Panel believes that it would be inequitable to refuse to take the Additional Submission into account. It does so mindful, firstly, of the fact that Respondent has itself ignored the late filing and filed its own Additional Submission and, secondly, of Rule 10(b) of the Rules which states that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to state its case.” It was said, for example, in Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 21, 2007) that procedural deficiencies were inconsequential and the Panel decided to consider the Response, which was only received in hard copy.
Therefore, in full utilization of its discretion, the Panel has decided to admit Complainant’s Reply. The basis of the Panel’s decision is in its onus to prevent a default judgement; to decide the matter on its merits; and upon its belief that the parties have not been prejudiced by a late filing as was held in Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002).
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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant cites two trademarks, one of which consists solely of the words “OffLeaseOnly” and, whilst the same words dominate the other, it also contains a lot of additional matter. However neither of these trademarks is yet registered. Indeed they were only filed less than a month before the Complaint was filed. As Respondent says, the filing of the trademarks may well have been as a precursor to the filing of the Complaint. Respondent also alleges that the marks will never be registered because they are so descriptive. We shall never know, and in any case this is not a matter for the Panel to decide. But the fact remains that the trademarks are dated after the registration of the disputed domain names on May 25, 2007 which, again, is not long before the trademarks were filed. However this is not fatal to a claim under the Policy which only requires a Complainant to have “rights” in a trademark or service mark. It is sufficient if a Complainant can prove common law rights in his name, as was held in SeekAmerica Networks, Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); and also in Great Plains Metromall, LLC v. Gene Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”). It is worth quoting from the WIPO Overview on Selected UDRP Questions on the matter –
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
In this case Complainant claims to have rights in the name OffLeaseOnly dating back to March 2004 but there was scant evidence provided with the Complaint to support this claim, just copies of pages from the Autotrader website, and a copy of its own website. Otherwise there is not an advertisement, not an invoice, no indication of market share, no copy of a company registration, and no figures for sales or turnover. Not unnaturally Respondent commented on this lack of evidence and in its Additional Submission, Complainant has provided copies of traffic searches from a Web Information Company. This shows that Complainant’s website is ranked 515,667 in the US but there is nothing in this evidence to show the number of hits the site received. In any case, a “hit” simply means that someone looked at the site.
The Panel considers that showing secondary meaning for a name like “offleaseonly” would be very difficult. The extensive use of a generic term (e.g. “soap” for “soap”) can never give it distinctive or non-descriptive secondary meaning indicating origin. The addition of the word “only” to the descriptive “offlease” means it may be possible but there would have to be good evidence that the public regard the term as distinctive of the Complainant and the Complainant only. A multitude of hits to a web site does not demonstrate this per se any more than lots of hits to a <soap.com> site selling soap.
Complainant also provided copies of 3 invoices, dated variously in June, July and August 2007. However far from being invoices from Complainant showing use of its name or trademark, these were invoices from third parties addressed to Complainant and, presumably, paid by him. Thus they are of no use in proving Complainant’s alleged common law rights, especially as they are all dated after the Complaint was filed.
In similar circumstances, a Panel will probably call for further and better particulars of the claimed common law use, but in this case Respondent already did that in the Response. Yet Complainant has not risen to the challenge, merely repeating that it has used its name and trade mark since 1994.
In the circumstances the Panel cannot accept an unsupported claim as evidence of common law rights. It was held in Weatherford International, Inc. v. Paul Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) that “Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.” Also, the Decision in Molecular Nutrition, Inc. v. Network News and Publications, FA 156715 (Nat. Arb. Forum June 24, 2003) approved of and applied the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services.”
As a result, the Panel concludes that Complainant has fallen at the first hurdle set by paragraph 4(a) of the Policy, and failed to satisfy the Panel that it has any rights in the name or trademark OFF LEASE ONLY.
In the circumstances, the Panel will not proceed to consider whether Respondent has any Rights or Legitimate Interests in the disputed domain names or whether he has acted in Bad Faith. Thus following the Decisions in Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sep. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary), and Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of paragraph 4(a)(i)) of the Policy).
However the Panel will say that it believes the Complainant’s case on both these points is strong. Respondent’s explanation for choosing the disputed domain names, both of them very reminiscent of Complainant’s name, is somewhat suspect. Why add the word “only” when it must have known that this was used by its competitor down the road, and “new off lease” is clearly a contradiction in terms.
This dispute is between two competing local corporations and involves several issues which the UDRP was never intended to resolve. Paragraph 4(k) of the Policy states – “The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court or competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded…”
In TABCORP Holdings Limited and TABCORP Assets Pty Ltd v. Steven Hertzberg, D2001-1052 (WIPO Dec. 3, 2001) it was said “The UDRP is clearly not the appropriate mechanism for the resolution of this dispute. In the circumstances, the Complainant is free to make use of the provisions of paragraph 4(k).” See also Thread.com v. Poploff D2000-1470 (WIPO Jan. 5, 2001) in which the Panel refused to transfer the domain name stating that the Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.” In Commercial Publishing Co. v. EarthComm, Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) it was stated that the Policy is intended to resolve only a narrow class of cases of “abusive registrations” and does not extend to cases where a registered domain name is subject to legitimate disputes, which are relegated to the courts; while in Weber-Stephen Products Co v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) one of the Panelists, in arguing for a stay of the proceedings commented as follows: “In addition, the District Court proceedings permit the exchange of discovery, examination of witnesses, presentation of reply arguments, and examination and cross-examination of live witnesses, all of which are unavailable in proceedings under the UDRP.”
As Complainant has failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David H Tatham,
Hon. John J Upchurch, Dawn Osborne,
Dated: September 5, 2007
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