Discount Tire Co., Inc. v. Jeff Tezer Enterprises
Claim Number: FA0204000112510
Complainant is Travis Unwin d/b/a Discount Tire Co., Inc., Scottsdale, AZ (“Complainant”) represented by Craig Cardon, of Squire Sanders & Dempsey LLP. Respondent is Jeff Tezer d/b/a Jeff Tezer Enterprises, Oceanside, CA (“Respondent”).
The domain name at issue is <tires.biz>, registered with Blueberry Hill Communications, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.
Rudolph J. Gerber as Panelist.
Complainant submitted a timely Complaint to the National Arbitration Forum (“the Forum”) electronically on April 27, 2002.
The parties have agreed to resolve domain name disputes pursuant to Paragraph 2(a) of the Rules for the Start Up Trademark Opposition Policy (the “STOP” policy).
A notification of Complaint and Commencement of Administration Proceeding 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, by e-mail.
A timely Response was received from Respondent on May 20, 2002.
On June 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member panel, the Forum appointed the above Rudolph J. Gerber as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant. Respondent urges that this request be denied and the case dismissed.
Complainant bases his contentions on the following grounds pursuant to STOP Rule 3(c)(ix): The domain name, <tires.biz>, is identical in sight, sound and spelling to the name in which Complainant has rights. Complainant claims to be the owner of the name TIRES.COM used for automobile tires, wheels and tire accessories. Complainant has been using TIRES.COM in the tire goods and services business in the United States since at least as early as 1995. Complainant urges that its name has become distinctive for identifying its goods and services over the course of the past seven years, and that its customers associate its reputation and goodwill with its tire products and other tire-related services. Complainant also alleges that TIRES.COM has been associated publicly with Complainant.
In Complainant’s view, Respondent is not the proper owner or beneficiary of the name <tires.biz>. Respondent has not made any use or preparation for using that name in connection with the offering of any goods or services, nor in connection with advertising any goods or services over the Internet or otherwise, Complainant further alleges that Respondent is not commonly known by the name <tires.biz>.
Complainant also asserts that the name <tires.biz> has been registered and/or used in bad faith by Respondent, insofar as Respondent has registered that name primarily in order to sell, rent, or otherwise transfer that name to Complainant or a competitor for valuable consideration, and thus is not using the name <tires.biz> in connection with any offering or advertising of any goods or services attributable to Respondent.
Complainant also alleges that Respondent has intended to attract Internet users to Respondent’s website or other on-line locations by creating confusion between TIRES.COM and <tires.biz>.
B. RESPONDENT’S CONTENTIONS:
Respondent generally denies the allegations above and asserts bona fide acquisition and use of <tires.biz> name. In particular, Respondent asserts that <tires.biz> is not identical in sight, sound or spelling to Complainant’s name and that the similarity exists in only the first five (5) letters. Respondent also asserts that there are also at least 857 registered trademarks containing the words “tire” in use throughout the world, thereby being a generic term.
Respondent has not yet registered the trademark TIRES.BIZ because Respondent has been aware of this dispute regarding the name. He claims to be waiting for the outcome of this STOP process before registering that name.
Respondent admits to not actively using <tires.biz> because that name has been prevented from use until such time as the dispute is resolved.
Respondent claims that since January, 2002, he has been in negotiations to start an automobile racing team and that the name in question will be utilized in a series of websites to present use and availability of certain racing-related automotive products.
Respondent alleges that <tires.biz> was not registered and/or used in bad faith and that Respondent does not intend to sell, rent, or otherwise transfer that name. Respondent claims to have not registered the name in order to prevent the Complainant from reflecting the mark as a corresponding domain name.
Respondent admits to being aware of the intellectual property claim at the time of registration but asserts ignorance that Complainant was using the name TIRES.COM. Respondent denies any intention to register this name in order to disrupt the business of any competitor, but instead claims to intend to provide a benefit to Complainant.
For the reasons set forth below, the Panelist above finds the Complainant has not proven the required elements to have the name <tires.biz> transferred.
Paragraph 15(a) of the STOP Policy instructs this Panel to “decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and rules and principles of law that it deems applicable.” The Complainant must prove each of the following three elements to obtain an order canceling or transferring a domain name:
(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 regarding the domain name; and
(3) The domain name has been registered or is being used in bad faith.
FINDINGS SUPPORTING DECISION:
(1) Complainant’s Rights to the Name
The Panel finds that TIRES standing alone is a generic term and that in order to show an exclusive right to use the name, Complainant must produce sufficient evidence to show that term is so established in the mind of the public with its goods, products or services that the term has acquired unique or secondary meaning independent of Complainant. Complainant did not make this showing and did not show that the name itself is sufficiently well known to have acquired national or international status. See computer.biz v. Manski, FA 114300 (Nat. Arb. Forum Aug. 1, 2002) (finding that “Complainant is using the word <computer.biz> generically to describe its computer business, and it has failed to demonstrate sufficiently strong identification of its mark to establish secondary meaning”); see also A.O. Smith Corp. v. Rheem Solar Centre, FA 114389 (Nat. Arb. Forum July 31, 2002) (finding that Complainant, a water heater manufacturer, did not have rights in HOTWATER even though it operated a website at <hotwater.com> for six years because it failed to provide evidence of secondary meaning); see also Exxon Mobil Corp. v. Marco Publ’g Corp., FA 112534 (Nat. Arb. Forum July 10, 2002) (denying Complainant’s claim because Complainant failed to provide either proof of registration of its alleged ENERGY mark or evidence of secondary meaning in the mark).
Complainant has failed to show trademark rights at common law. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding Complainant failed to prove common law trademark rights because it did not prove CYBERIMPRINTS.COM was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning the Complainant must show that the public identifies the source of the product rather than the product itself).
Where a name or mark arises from a generic word as it does here, and secondary meaning has not been established, as the Complainant has failed to show here, the burden does not shift to Respondent to prove exclusive right or interest but remains with Complainant to establish that Respondent has no interests. See FreedomCard, Inc. v. Kim, D2001-1320 (WIPO Jan. 20, 2002) (“Were the trademark a well-known invented word having no descriptive character, these circumstances would shift the onus to Respondent to demonstrate its rights or legitimate interest in the disputed domain name... [b]ut the mark FREEDOM CARD is a common generic expression in which the Complainant cannot have exclusive rights”); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”) and Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (“given the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark”).
The Panel finds, therefore, that Complainant has failed to show that Respondent has no rights in the disputed domain name. See London Special Risks Ltd. v. Wooho T&C d/b/a RGnames, FA 112505 (Nat. Arb. Forum July 31, 2002) (finding that, although Complainant held rights in the ANGEL mark and Respondent had not proven its rights in the <angel.biz> domain name, Complainant failed to affirmatively prove Respondent’s lack of rights in the domain name); see also New Cargo Furniture, Inc. v. BDG Mktg., FA 114606 (Nat. Arb. Forum July 31, 2002) (finding that the Respondent demonstrated rights or legitimate interests in the domain name <cargo.biz> by providing evidence of future website content to be hosted at the domain related to its transportation services business); see also Financial Aid.com LLC v. Schaffhausen, FA 109368 (Nat. Arb. Forum July 31, 2002) (finding that Respondent had rights in the domain name <financialaid.biz> where Complainant held a service mark in FINANCIALAID, because Respondent demonstrated preparation to use the domain name in relation to its service of providing financial aid information); see also HempWorld, Inc. v. Payne, FA 112513 (Nat. Arb. Forum July 9, 2002) (finding that Respondent demonstrated rights in <hemp.biz> by proving the existence of its company, “Canada Hemp Company”).
Accordingly, the Panel finds that Complainant has not established an exclusive right to TIRES.COM and, further, that Complainant has failed to show that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel declines to find that Respondent has such rights under STOP Policy ¶ 4(a)(ii) but finds that STOP Policy ¶ 4(a)(ii) has not been satisfied.
Complainant has not proven its exclusive right to TIRES.COM. The other elements of proof need not be addressed. Therefore it is ordered that the domain name <tires.biz> not be transferred to Complainant. The Complaint is dismissed, with leave to Complainant to file further challenges.
Hon. Rudolph J. Gerber
Dated: August 26, 2002
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