Redding Imports v. Cessna Motors
Claim Number: FA0712001118840
Complainant is Redding Imports (“Complainant”), represented by Ted
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reddingimports.com>, registered with Domainpeople, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2007.
On December 12, 2007, Domainpeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <reddingimports.com> domain name is registered with Domainpeople, Inc. and that the Respondent is the current registrant of the name. Domainpeople, Inc. has verified that Respondent is bound by the Domainpeople, Inc. 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 January 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 29, 2008 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 firstname.lastname@example.org by e-mail.
A Response was received on January 30, 2008. The Response was deficient under ICANN Rule 5 as the hard copy was not timely received.
Notwithstanding the late filing, the Panelist has decided to fully consider the Response in determining this case. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
On February 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that REDDING IMPORTS is the name of Complainant’s corporation and has been used since 1972. Complainant submits its California Seller’s Permit and the Articles of Incorporation for Redding Imports with the California Secretary of State as evidence to this effect.
Complainant asserts that it has
trademark rights in REDDING IMPORTS.
However, Complainant does not provide evidence of a trademark
registration with any governmental authority for the REDDING IMPORTS mark. Regardless, under Policy ¶ 4(a)(i),
Complainant need not possess a trademark registration with a governmental
authority in order to establish rights in the REDDING IMPORTS mark under Policy
¶ 4(a)(i), provided it can show secondary meaning sufficient to establish
common law rights. See
The Panel finds that the REDDING IMPORTS.COM domain name is identical to Complainants REDDING IMPORTS name as the disputed domain name incorporates Complainants entire name and adds the generic top-level domain “.com.” The Panel finds that such a distinction does not render the disputed domain name sufficiently distinct for the purposes of the Policy, for one such distinction does not render the disputed domain name sufficiently distinct for the purposes of Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
Respondent asserts, and Complainant does not deny, that Complainant does not possess a trademark registration for the REDDING IMPORTS mark.
The Panel has analyzed the evidence presented by Complainant and finds that it has not presented sufficient evidence establishing its common law rights in its asserted mark. The Panel therefore declines to find that the REDDING IMPORTS mark has acquired a secondary meaning. Complainant has not satisfied this portion of Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“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.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
C. Additional Submissions
The Panel has concluded that Complainant’s evidence fails to establish a prima facie case that it has rights in the REDDING IMPORT mark under common law principles and according to Policy ¶ 4(a)(i). Therefore, the Panel declines to analyze the other two elements of the policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
The Panel having found that Complainant has failed to prove its assertions by a preponderance of the evidence and having failed to establish a prima facie case that it has established the mark REDDING IMPORTS under common law, the Panel concludes that the relief sought shall be DENIED.
Accordingly it is ORDERED that the Complaint be DISMISSED WITHOUT PREJUDICE.
Robert T. Pfeuffer, Senior District Judge, Panelist
Dated: February 20, 2008
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