Ken Batchelor Cadillac
Company, Inc. v. Tucows.com Co c/o Admin Domain
Claim Number: FA0801001126742
PARTIES
Complainant is Ken Batchelor Cadillac Company, Inc. (“Complainant”), represented by Jeffrey
S. Zehnder, of Zehnder Communications, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <batchelor.com>, registered with Tucows Inc.
PANEL
The undersigned 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.
Diane Cabell, Hon. R. Glen Ayers, and Joel M. Grossman, Chair, as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 8, 2008; the
National Arbitration Forum received a hard copy of the Complaint on January 9, 2008.
On January 9, 2008, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <batchelor.com> domain name is
registered with Tucows Inc. and that the
Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
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 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 4, 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 postmaster@batchelor.com by
e-mail.
A timely Response was received and determined to be complete on February 4, 2008.
On February 13, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Diane Cabell, Hon. R. Glen Ayers, and Joel M.
Grossman, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant admits that it has no registered trademark, but asserts
that it owns a common law trademark in the mark Ken Batchelor Cadillac Company.
Complainant states that it has operated Ken Batchelor Cadillac Company for 27
years, and that the word “batchelor” is a key component of the name.
Complainant asserts that Respondent’s use of the domain name “batchelor.com”
creates confusion for its potential and existing customers by diverting them to
Respondent’s website. Complainant also asserts that Respondent has no rights or
legitimate interests in the domain name, and that Respondent registered and is
using the name in bad faith.
B. Respondent
Respondent asserts that Complainant has not demonstrated its rights in
the mark. First, as Complainant concedes, Complainant has no registered
trademark in the mark. Second, Complainant has failed to produce evidence of
the existence of a common law mark. Respondent notes that other than
Complainant’s statement that it has been using the mark for 27
years, Complainant offers no evidence of any factors that could lead to a
finding of secondary meaning. Respondent further asserts that even if
Complainant has rights in the mark, there is no confusion between the domain
name “batchelor.com” and “Ken Batchelor Cadillac Company,” since the two
phrases have only one word in common. Respondent also asserts that it has
legitimate interests in the domain name, and that the name was not registered
and is not being used in bad faith.
FINDINGS
The Panel finds that Complainant has failed
to establish rights in the mark. Under these circumstances, the Panel does not
need to reach, and chooses not to reach, any other issues, and determines that
Respondent must prevail.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.
As a preliminary matter, a complainant must
establish rights in the mark. Generally, a complainant will provide evidence of
one or more registered trademarks. However, even in the absence of a registered
trademark, a complainant may establish a common law trademark if it can
demonstrate that its mark is well known and has attained a secondary meaning. See Weatherford Int’l Inc. v.
Wells, FA 153626 (Nat. Arb. Forum May 19, 2003). Mere assertions of
such common law trademark rights are insufficient; a complainant must produce
evidence indicating extensive use of the mark. See Weatherford, supra. See also Molecular Nutrition, Inc. v. Network
News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003). In this
case, Complainant states that it has used the mark for 27 years, but produces
no other evidence to support a common law trademark. The existence of a mark
for a long period of time is not enough; there must be evidence that a mark is
so well-known that it has acquired secondary meaning. No such evidence has been
submitted, compelling the Panel to determine that Complainant has not
established its rights in the mark. The Panel also notes that even if
Complainant were able to produce significant evidence of secondary meaning, it
would still be unable to show confusing similarity. The Panel notes that of the
mark “Ken Batchelor Cadillac Company,” only the one word “Batchelor” has been
incorporated into Respondent’s domain name. See
Barnesandnoble.com, LLC v. Rosenblum, FA 1089020 (Nat. Arb. Forum Nov. 15, 2007) (holding that the domain name “noble.com” was
not confusingly similar to the mark “barnesandnoble.com” as only a portion of
the complainant’s name had been used.) See also Falconeiri
Construction Inc. v. Grandis FA 741799 (Nat. Arb. Forum Sept. 6,
2006) (holding that domain names “Falconeiri.com” and “Falconeiri.net” were not
confusingly similar to the mark “Falconeiri Construction.”).
Because the Panel has determined that
Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to
establish rights in the mark, and failed to establish confusing similarity
between the domain name and its mark, 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).
As noted above, the Panel declines to analyze
this element of the Policy.
As noted above, the Panel declines to analyze
this element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Diane Cabell, Hon. R. Glen Ayers and Joel M.
Grossman, Chair, Panelists
Dated: February 26, 2008
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