Discount Tire Co., Inc. v. Jeff Tezer Enterprises
Claim Number: FA0204000112506
Complainant is Discount Tire Co. Inc., Scottsdale, AZ (“Complainant”) represented by Craig Cardon, of Squire Sanders & Dempsey LLP. Respondent is Jeff Tezer Enterprises, Oceanside, CA (“Respondent”).
The domain name at issue is <tire.biz>, registered with NameScout.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
David S. Safran as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 27, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On April 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 20, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed David S. Safran as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
The Complainant has alleged that the domain name at issue, <tire.biz>, is identical in sight, sound and spelling to the trademark and service mark in which Complainant has rights as the owner of the trademark and service mark TIRE.COM for automobile tires, wheels and tire accessories; retail store and distributor services in the field of automobile tires, wheels and tire accessories; advertising in the sale and promotion of tires, wheels and tire accessories. Complainant also alleges that it has been continuously using the trademark TIRE.COM on the above-identified goods and services in U.S. commerce since at least as early as 1995, and that, as a result of such use and due to nationwide advertising and marketing of Complainant’s products and services under the mark TIRE.COM, TIRE.COM has become distinctive as applied to Complainant’s goods and services.
Complainant alleges that Respondent has no rights or legitimate interest in respect of the domain name because the Respondent is not the owner or beneficiary of a trademark or service mark that is identical to the domain name <tire.biz>, that Respondent has not made any use or preparation to use the <tire.biz> domain name or a name corresponding to the domain name in connection with the offering of any goods or services, that Respondent is not using the <tire.biz> domain name in connection with the offering or advertising of any goods or services over the internet or otherwise and that the web site linked to the domain name <tire.biz> is not an active site nor is under construction. Furthermore, the Complainant alleges that the domain name <tire.biz> was registered and/or used in bad faith by Respondent, the Respondent having registered the domain name <tire.biz> primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, as evidenced by Respondent having registered at least as many as ten other domain names on behalf of itself. Complainant has also alleged that Respondent has registered the domain name <tire.biz> in order to prevent Complainant from reflecting the mark in a corresponding domain name.
The Respondent alleges that domain name at issue, <TIRE.BIZ>, is not identical in sight, sound or spelling to the trademark or service mark in which the Complainant has rights. The Respondent alleges further that that the Complainant has no rights to any trademark or service mark that contains the word tire, there being numerous registered trademarks that contain the word tire and the word tire is a common word in the English language as well as other languages, Webster's dictionary defining tire as: A covering for a wheel usually made of rubber reinforced with cords of nylon, fiberglass, or other material.
C. Additional Submissions
Neither party has provided additional submissions to support their allegations.
Although Complainant has provided no documented support for its position of use of the mark, TIRE.COM, in view of the being no claim to the contrary, it will be assumed that Complainant has used the mark and the associated domain in support of its business of selling automobile tires, wheels and tire accessories since 1995. Other than Complainants allegations based on “information and belief,” no evidence has been provided to show that Respondent has no rights in the mark or that the Respondent registered the domain name at issue in bad faith.
“Tire” is a generic when used with respect to automobile tires, wheels and tire accessories and the Complainant did not demonstrate an identification of its mark such that there would be recognition among Internet users that the TIRE.COM mark identified goods or services unique to the Complainant. As a result, it is held that Complainant has no protectable rights in the mark and it is unnecessary to determine whether Respondent has no rights in the mark or the Respondent registered the domain at issue in bad faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
As evidenced by the dictionary definition of the word “tire” and Complainant’s use of the term “tire” in its own description of the goods and services with which its purported mark is used, it is unquestionable that the term “tire” is descriptive when used in connection the sale of automobile tires, wheels and tire accessories and retail store and distributor services in the field of automobile tires, wheels and tire accessories. Furthermore, the Lanham Act, 15, U.S.C. § 1052(e) precludes registration of marks that are descriptive of the goods with which the mark is used and an application for the similar TIRES.COM was refused by the U.S. Patent and Trademark Office on that basis (see, U.S. Trademark Application 75784682, Filing Date August 25, 1999, Non-final action mailed December 10, 1999). Furthermore, Complainant has not demonstrated any association of the mark by Internet users with the Complainant, while the existence of third party web sites for the domains <tire.net> and <tires.net> suggest that such identification does not exist.
If the Complainant has no rights in the mark, the Complaint must be dismissed. Fabric.com v. Song, FA 109701 (Nat. Arb. Forum Oct. 26, 2002) (dismissing the Complaint because “fabric” is a generic term in which no protectable rights were demonstrated); Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the Complainant did not hold a registered trademark in VVG, and (2) the Complainant did not demonstrate sufficiently strong identification of its mark such that there would be recognition among Internet users that the VVG mark identified goods or services unique to the Complainant).
As noted above, because the mark is generic and Complainant has not established any protectable rights in the mark, the issue of Respondents legitimate interests in the registration of the domain name need not be reached. Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb. 24, 2002)
Since the Complainant has failed, as noted above, to establish protectable rights in a mark identical to the domain name at issue, it is not necessary to determine if the domain name <tire.biz> was registered in bad faith. Fabric.com v. Song, FA 109701 (Nat. Arb. Forum Oct. 26, 2002)
The Panel finds that the Complainant has not satisfied the requirements of Paragraph 4 of the STOP Policy, and accordingly, orders that the domain name at issue, <tire.biz> not be transferred to the Complainant. Pursuant to STOP Policy Paragraph 4(l)(ii)(3) subsequent challenges under this Policy shall be permitted.
David S. Safran Panelist
Dated: July 1, 2002
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