Discount Tire Co., Inc. v. Jeff Tezer
Enterprises
Claim Number: FA0204000112510
PARTIES
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.
PANEL:
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.
PROCEDURAL HISTORY:
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.
RELIEF SOUGHT:
Complainant requests that the domain
names be transferred from Respondent to Complainant. Respondent urges that this request be denied and the case
dismissed.
PARTIES’ CONTENTIONS:
A. COMPLAINANT:
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.
FINDINGS:
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.
DISCUSSION:
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.
DECISION:
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
Arbitrator/Panelist
Dated: August 26, 2002
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