Jack Hanania v. Tony
Giardina
Claim Number: FA0804001176643
PARTIES
Complainant is Jack Hanania (“Complainant”), represented by Alan
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <volkswagenoforangepark.com>, <volkswagenoforangepark.net>,
<vwoforangepark.com>, <vwoforangepark.net>, <vworangepark.com>, <orangeparkvolkswagen.com>, and <orangeparkvw.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 7, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 8, 2008.
On April 8, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <volkswagenoforangepark.com>, <volkswagenoforangepark.net>,
<vwoforangepark.com>, <vwoforangepark.net>,
<vworangepark.com>, <orangeparkvolkswagen.com> and <orangeparkvw.com> domain
names are registered with Enom, Inc. and
that the Respondent is the current registrant of the names. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 April 16, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 6, 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@volkswagenoforangepark.com, postmaster@volkswagenoforangepark.net,
postmaster@vwoforangepark.com, postmaster@vwoforangepark.net,
postmaster@vworangepark.com, postmaster@orangeparkvolkswagen.com and
postmaster@orangeparkvw.com by e-mail.
A timely Response was received and determined to be complete on May 5, 2008.
On May 13, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant’s
Contentions
Complainant has established common law trademarks in the names “Volkswagen” and “Volkswagen of Orange Park” because of Complainant’s use of those names in connection with the sale of automobiles.
Complainant began using the name “Volkswagen” and “Volkswagen of Orange Park” around the beginning of April 2006. To initiate the process of using the names “Volkswagen” and “Volkswagen of Orange Park” to sell automobiles, Complainant filed an application to register-the fictitious name “Volkswagen of Orange Park” with the Florida Department of State on April 18, 2006.
Complainant is the lawful and exclusive owner of its fictitious name, “Volkswagen of Orange Park.” In compliance with applicable law, the Florida Department of State published notice on the Internet at <sunbiz.org> of Complainant’s registering of the fictitious name “Volkswagen of Orange Park” on or about April 18, 2006.
Also in Compliance with applicable law, Complainant registered his business “Volkswagen of Orange Park” with the Florida Department of Revenue on May 9, 2006.
Subsequently, Complainant began advertising under the names “Volkswagen” and “Volkswagen of Orange Park” by running ads in the local newspapers.
“VW” is a common abbreviation of Volkswagen which is itself a federally registered Trademark.
Complainant is a Volkswagen dealer lawfully entitled to use the trade names of Volkswagen (including “VW”) in connection with Complainant’s business.
Complainant is the only Volkswagen
dealer in
Respondent has unlawfully registered seven domain names – <volkswagenoforangepark.com>, <volkswagenoforangepark.net>, <vwoforangepark.com>, <vwoforangepark.net>, <vworangepark.com>, <orangeparkvolkswagen.com> and <orangeparkvw.com> – which are identical or confusingly similar to the trademarks “Volkswagen” and “Volkswagen of Orange Park.”
The first two domain names, <volkswagenoforangepark.net> and <volkswagenoforangepark.com> are identical to Complainant’s established common law trademarks “Volkswagen” and “Volkswagen of Orange Park.”
The domain name <orangeparkvolkswagen.com> is identical to Complainant’s established common law trademark “Volkswagen” and is confusingly similar to Complainant’s common law trademark “Volkswagen of Orange Park.” The domain name <orangeparkvolkswagen.com> is confusingly similar to “Volkswagen of Orange Park” because of the transposition of the terms contained within Complainant’s trademark. Because of the striking similarity between the domain name <orangeparkvo1kswagen.com> and Complainant’s mark, consumers intending to reach a website-advertising Complainant’s product will be misled and directed to Respondent’s domain name (which has no website linked to the domain name at the time of filing this Complaint).
The domain names <vwoforangepark.com>, <vwoforangepark.net>, <vworangepark.com> and <orangeparlcvw.com> are confusingly similar to Complainant’s established common law trademarks “Volkswagen” and “Volkswagen of Orange Park.” These domain names are confusingly similar to Complainant’s mark because “vw” is a common and logical abbreviation for “Volkswagen.” As a result of Respondent’s registering of these domain names, consumers intending to reach a website advertising Complainant’s product will be misled and directed to Respondent’s domain name (which has no website(s) linked to any of these domain names at the time of the filing of this Complaint).
Respondent has never used the disputed domain names that are the subject of this Complaint in connection with a bona fide offering of goods or services nor has Respondent made a legitimate noncommercial or fair use of any of the domain names at issue in this complaint. Indeed, Respondent is incapable of providing evidence that he has used any of the seven domain names in this way because all the domain names remain dormant and are not to any website(s).
Respondent has not been commonly known by any of the seven domain names and Respondent is incapable of providing evidence that he has been known by the names which are the subject of this Complaint. Indeed, Respondent could not lawfully use the name, Volkswagen of Orange Park because Complainant has the exclusive name both as a trademark and as a registered fictitious name. Moreover, Respondent is not a dealer of Volkswagen automobiles, Volkswagen products or Volkswagen services.
Respondent’s sole purpose in registering these domain names was to extort money from Complainant in violation of Federal cyberpiracy prevention laws. When Complainant approached Respondent in an attempt to amicably resolve this dispute, Respondent demanded exorbitant amounts of money as compensation for the domain names which amounts were far in excess of the amounts Respondent expended in registering and maintaining these seven domain names.
Respondent has used all seven of the disputed domain names that are the subject of this Complaint in a bad faith attempt to illegally extort money from Complainant.
On January 25, 2008, Complainant, by and through his attorney Alan Wachs, sent Respondent correspondence advising Respondent that his act of registering domain names identical or confusingly similar to the name of Complainant's business was illegal according to the Federal Cyberpiracy prevention law. In the January 25, 2008 correspondence, Complainant made a good faith offer to compensate Respondent for his out-of-pocket expenses related to registering and maintaining the disputed domain names in exchange for Respondent's transfer to Complainant of the disputed domain names.
In response to the January 25, 2008 demand letter, Tony Giardina sent Alan Wachs correspondence via email indicating that Tony Giardina refused to transfer the domain names, that Tony Giardina purported to be the owner of the disputed domain names, that Tony Giardina intended to have no further communication with Complainant unless the communication involved negotiations to purchase the domain names and that Tony Giardina could attempt to sell the domain names for "whatever I feel they are worth." Complainant has also had oral communications with Respondent where Respondent demanded exorbitant amounts of money to compensate Respondent for the disputed domain names at issue in this Complaint.
II. Respondent’s
Contentions
There is no registered trademark for “Volkswagen of Orange Park” and therefore it is an available name to use so long as it does operate as a competing person selling automobiles. Common law trademark rights do not apply to domain names in this circumstance.
The disputed domain names have been lawfully registered.
It is agreed that some confusion may come from the similarity of the names.
The domain names that contain “vw” should not be part of this Complaint because they are not unique to Volkswagen and can be used as initials for other names or organizations.
Respondent contends that evidence is not needed to establish his rights and legitimate interests, that his intended use of the domain names is for a public forum. The domain names are hosted but not currently serving an active website. The website is under development.
There is no trademark for “Volkswagen of Orange Park,” and a registered fictitious name does not serve the same purpose. The name is available for use so long as it is not used to sell automobiles. There is no intent of using the domain names to sell automobiles.
There is no bad faith because the intent of the domain names is for operating a public forum.
Volkswagen of Orange Park asked if they could purchase the domain names, and an offer was made. The classification of exorbitant is a matter of opinion. Oral communications cannot be confirmed and should not be included in this complaint.
The disputed domain names should not be transferred and should be left in the possession of Tony Giardina or he should be compensated for the domain names at the dollar amount of $1,200 each for a total of $8,400.00.
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.
FINDINGS
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
I find the issues on this element in favor of
Complainant.
While “Volkswagen” is a registered trademark,
Complainant does not hold this trademark registration. However, Complainant is not required to hold
a trademark registration to establish rights in the VOLKSWAGEN OF ORANGE PARK
mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr.
13, 2000) (finding that the Rules do not require that the complainant's
trademark or service mark be registered by a government authority or agency for
such rights to exist).
Complainant alleges that it has established common law rights in the VOLKSWAGEN OF ORANGE PARK mark based on its use of the mark in commerce since April 2006 for sale of automobiles, and Complainant’s application to register the mark with the Florida Department of State on April 18, 2006. Complainant also contends that it has registered its business “Volkswagen of Orange Park” with the Florida Department of Revenue on May 9, 2006. Complainant has provided evidence of advertisements in local newspapers, showing Complainant’s use of the mark in commerce. The Panel finds that Complainant’s use of the mark in commerce has been continuous and extensive, the Panel finds that Complainant has established common law rights in the VOLKSWAGEN OF ORANGE PARK mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant contends that the <volkswagenoforangepark.com> and <volkswagenoforangepark.net>
domain names are identical to its VOLKSWAGEN OF ORANGE PARK mark because the
disputed domain names fully incorporate the terms of the common law mark
without the spaces, and with the additions of the generic top-level domains
(“gTLDs”) “.com” and “.net.” The Panel
finds that the <volkswagenoforangepark.com> and <volkswagenoforangepark.net> domain names are identical to
Complainant’s VOLKSWAGEN OF ORANGE PARK mark under Policy ¶ 4(a)(i). See Shirmax Retail
Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar.
20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather
than disjunctive sense in holding that “mere identicality of a domain name with
a registered trademark is sufficient to meet the first element [of the Policy],
even if there is no likelihood of confusion whatsoever”); see also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level
of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar).
Complainant asserts that the <vwoforangepark.com>, <vwoforangepark.net>,
<vworangepark.com>, <orangeparkvolkswagen.com> and <orangeparkvw.com> domain names
are confusingly similar to its VOLKSWAGEN OF ORANGE PARK mark because the disputed
domain names are a transposition of the terms contained within Complainant’s
trademark. Complainant maintains that
“vw” is a common abbreviation for “Volkswagen,” and therefore, does not
sufficiently distinguish the disputed domain names from Complainant’s
mark. The Panel finds that the <vwoforangepark.com>, <vwoforangepark.net>,
<vworangepark.com>, <orangeparkvolkswagen.com> and <orangeparkvw.com> domain names
are confusingly similar to its VOLKSWAGEN OF ORANGE PARK mark under Policy ¶
4(a)(i).
While
Respondent contends that the <vwoforangepark.com>, <vwoforangepark.net>, <vworangepark.com>
and <orangeparkvw.com> domain names are comprised of the common letters “vw”
and as such cannot be found to be confusingly similar to Complainant’s mark,
the Panel finds that such a determination is not necessary under Policy ¶
4(a)(i) as this portion of the Policy considers
only whether Complainant has rights in the mark and whether the disputed domain
names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii).
I find the issues on this element in favor of Complainant.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show
it does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Complainant contends that Respondent has not been commonly known by any of the seven disputed domain names. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Moreover, Complainant contends that it has not authorized Respondent to use the VOLKSWAGEN OF ORANGE PARK mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant maintains that none of the disputed domain names currently
resolve to active websites. The Panel
finds that Respondent’s inactive use is evidence that Respondent is not using
the disputed domain names for a bona fide offering
of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or
fair use under Policy ¶ (c)(iii). See
TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's [inactive use] of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant
also contends that Respondent has attempted to sell the disputed domain
names. The Panel finds this offer as
evidence that Respondent lacks rights and legitimate interests under Policy ¶
4(a)(ii). See also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11,
2000) (finding the respondent’s conduct purporting to sell the domain name
suggests it has no legitimate use).
Registration and Use
in Bad Faith: Policy ¶ 4(a)(iii).
I find the issues on this element in favor of Complainant.
Complainant maintains that Respondent’s failure to actively use the disputed domain names is evidence of registration and use in bad faith. The Panel finds that Respondent’s inactive use of the disputed domain names demonstrates registration and use in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant also contends that
Respondent attempted to sell the disputed domain names for value far in excess
of out-of-pocket costs when Respondent was initially approached to amicably
resolve the dispute. The Panel finds
such behavior as further evidence of registration and use in bad faith under
Policy ¶ 4(a)(i). See
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <volkswagenoforangepark.com>, <volkswagenoforangepark.net>,
<vwoforangepark.com>, <vwoforangepark.net>,
<vworangepark.com>, <orangeparkvolkswagen.com> and <orangeparkvw.com> domain
names be TRANSFERRED from Respondent to Complainant.
Hon. Timothy D. O’Leary, Panelist
Dated: May 22, 2008
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