Ken Batchelor Cadillac Company, Inc. v. Tucows.com Co c/o Admin Domain
Claim Number: FA0801001126742
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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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