Normart LLC. v. Vinny
Carfora
Claim Number: FA0804001177243
PARTIES
Complainant is Normart LLC. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carwashforsale.biz>, registered with
Godaddy.com,
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.
P.
as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On April 22, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 12, 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@carwashforsale.biz by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission from Complainant was received on
Additional Submissions from Respondent were received on
On
P.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a brokerage that specialises in selling car washes. It
sells used car washes on behalf of its customers, provides financing options to
buyers and conducts training for users by means of videos and audio media.
Complainant also offers services to real estate brokers who communicate with
clients via e-mail Complainant submits that the domain name is identical or
confusingly similar to the trademark CARWASHFORSALE in which it claims rights.
Complainant submits that the only difference between the domain name and
said trademark is the gTLD designation “.biz.” Citing inter alia cases Univision v.
Norte, FA 1000079, (Nat. Arb. Forum Aug. 16, 2007), World Wrestling Fed’n Entm’t Inc. v. Rapuano, DTV2001-0010 (WIPO
May 23, 2001). Complainant submits that this Panel should ignore the gTLD
extension element as being irrelevant when comparing the domain name and mark.
Complainant claims to have acquired through use, common law rights in
the trademark CARWASHFORSALE and relies on its use of said mark in the
promotion of its business at trade shows, workshops, web sites and in other
publications since 2003.
Complainant submits it was at the Mid West Carwash Convention in 2007
that Complainant first became aware that Respondent was promoting the domain
name in dispute. Due to confusion created by Respondent’s use of the domain
name at issue, the organisers of the convention did not put Complainant’s
<carwashforsale.net> domain name on the promotional material or the booth
space. Similar confusion arose with the organisers of the Southwest Carwash
Association.
Complainant submits that the disputed domain name is inherently similar
to Complainant’s trademark and likely to be confusing to the public on its
face.
Complainant submits that Respondent has no rights or legitimate interest
in the domain name at issue. Since registration of the domain name nothing more
than a single page with an e-mail line seeking “comments” has appeared at the
address. There is no indication that Respondent has ever been commonly known by
the mark CARWASHFORSALE or has made any demonstrable preparations to
commercially use the domain name or acquired any intellectual rights in the
mark. Complainant submits that Respondent’s current use does not amount to a
“fair use” (sic).
Complainant submits that from all appearances Respondent registered the
domain name for the purpose of selling, renting, or otherwise transferring the
domain name registration to an owner of the trademark or to a competitor of the
owner of the trademark or service mark for valuable consideration in excess of
out of pocket costs directly related to the domain name.
Complainant submits that in the circumstances, it has made out a prima facie case in support of its claim
that Respondent has no rights or legitimate interest in the domain name in
dispute and in the circumstances the burden of proof shifts to the Respondent
to establish the second element of the test in the Policy.
Complainant submits that Respondent has registered and is using the
domain name in bad faith. Respondent is profiting from click-through fees from
hyper-links to various third party websites on the website established by
Respondent to which the domain name in dispute resolves. Citing the panel
decisions in Univision v. Norte, FA 1000079, (Nat.
Arb. Forum, Aug. 16, 2007), TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002), Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30,
2003). Complainant submits that such activities by Respondent do not constitute
a bona fide use of the domain name at
issue for the purposes of the Policy.
Complainant
submits that Respondent’s lack of legitimate use of the domain name at issue
indicates that the domain name was registered or acquired primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the owner of the CARWASHFORSALE mark for valuable consideration
in excess of Respondent’s out-or-pocket costs directly related to the domain
name. Respondent acted in bad faith by registering a domain name containing
Complainant’s trademark in its entirety and is using it to benefit from the
likely confusion as to Complainant’s affiliation with the domain name.
Complainant
submits that the domain name is effectively parked and is not offering goods
and services related to the mark and therefore Respondent is making no bona fide use of the domain name.
Respondent had constructive knowledge of Complainant’s CARWASHFORSALE
mark at the time of registration using the <carwashforsale.net> address.
B. Respondent
Respondent denies the allegations made by
Complainant.
Respondent submits that Complainant’s case must
fail because Complainant has failed to prove that it has rights in the
trademark CARWASHFORSALE as claimed. Respondent submits that the mark is a
generic or descriptive mark that has not acquired any secondary meaning
sufficient to establish protectable rights for Complainant.
Respondent submits that the term
“carwashforsale” is generic, being merely a term that refers to the genus of which a particular product is a
species. Generic words and trademarks are mutually exclusive because generic
words can never function as an identifier to distinguish the goods and services
of one supplier over another. In support of this argument Respondent cites a
number of cases under the Policy where complaints were rejected due to failure
by complainants to establish sufficient rights in a mark viz. Vortal Group,
Inc. v. Digital Transport, FA 222968, (Nat. Arb. Forum Mar.
9, 2004) (re <policeauction.com>); Houston Ins. v. Blacker Media,
FA 117329 (Nat. Arb.
Forum Sept. 20, 2002) (re <insurance.biz>); computer.biz. v. Manski FA 114300 (Nat. Arb. Forum Aug. 1, 2002) (re <computer.biz>); Philatelic.Com v. Jeong, FA
112547 (Nat. Arb. Forum July 24, 2002) (re
<sex.biz>); Gen. Machine Prods. Co., Inc. v. Prime
Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (re <craftwork.com>); Dana Chase Publ’ns Inc. RGnames, FA 112441 (Nat.Arb. Forum July 9, 2002) (re <appliance.biz>).
Respondent submits that Complainant is a
competitor of Respondent in an industry where the term “carwashforsale” is
commonly used by companies in commerce to describe their services. Respondent
refers to the print-out of the results of a Google search submitted in an annex
to the Response in support of this assertion.
Additionally Respondent submits that the USPTO
has on numerous occasions required the term “FORSALE” to be disclaimed.
Respondent gives a number of examples of such disclaimers viz. WWW.CARSFORSALE.COM, HOUSES FOR SALE, BED
& BREAKFAST FOR SALE, AUTOS FOR SALE BY OWNERSAND LOCALHOMESFORSALE.COM.
Respondent submits that Complainant has failed
to show that any secondary meaning has accrued to the term “carwashforsale” in
the course of any use by Complainant.
Respondent submits that because of Complainant’s
failure to prove rights in the mark, this Panel should make its decision and
reject the Complaint based on the first element of the test in paragraph 4(a)
of the Policy and that it is unnecessary for this Panel to consider the
questions of the rights or legitimate interest of Respondent in the domain name
or whether the domain name was registered and is being used in bad faith.
Respondent has been making a bona fide offering of goods and
services, namely the sale of car washes, prior to commencement of this dispute
and since approximately one week after the domain name was purchased.
Respondent refers to his declaration annexed to the Complaint, website pages,
and invoices showing monies spent on the development and maintenance of its
website provided in an annex to the Response. Respondent cites the decision in Houston
Ins. v. Blacker Media, FA 117329 (Nat. Arb. Forum Sept. 20,
2002) in support of his
assertion that he has acquired a legitimate interest in the domain name because
he has used the domain name in connection with a bona fide offering of goods or services before notice of the
dispute.
Respondent submits that its website is far more
substantial than alleged by Complainant.
Addressing the question of alleged bad faith,
Respondent submits that there are no circumstances indicating that the domain
name was registered for the purpose of resale to Complainant as the trademark’s
owner or competitor for profit. Respondent has itself been actively using the
domain name as the address of its active website since shortly after
registration of the domain name. Respondent has never offered to sell, rent or
transfer the domain name and Complainant has not provided any evidence to
support its allegation in this regard.
There is no pattern of conduct showing any
attempt to prevent others from obtaining a domain name corresponding to their
trademark. Neither has Respondent been engaged in any attempt to disrupt the
business of Complainant. Respondent has a friendly relationship with
Complainant; has offered advice over the phone to Complainant and has conducted
business deals with Complainant in a manner benefiting both parties.
Respondent selected the domain name <carwashforsale.biz> as a generic
term to describe his services in good faith and has used it in good faith to
sell car washes through his active website at the domain address. There is no
evidence that Respondent registered the domain name at issue in bad faith with
intent to sell it to Complainant or competitors or has used the domain name in
a manner to disrupt Complainant’s business, prevent Complainant from registering
its trademark, or to confuse consumers.
Respondent requests this Panel to make a
determination that Complainant is engaged in reverse domain name hi-jacking.
Complainant was aware of Respondent’s bona
fide use of the domain name <carwashforsale.biz>
in association with carwash sale services. Complainant had numerous business
dealings and contacts with Respondent regarding carwash listings in
C. Complainant’s Additional Submissions
In Additional Submissions, Complainant
re-asserts its claim that is has accrued trademark rights at common law in the
unregistered trademark CARWASHFORSALE and that the domain name is identical or
confusingly similar to its trademark. Complainant challenges Respondent’s claim
to have a legitimate interest in the domain name and in particular denies that
Respondent has made any actual use of the domain name until recently when
Complainant alleges Respondent copied content from Complainant’s website and
posted it onto his website with only minor changes.
Complainant submits that the cases cited by
Respondent regarding <insurance.biz>, <sex.biz>,
<computer.biz> and <appliance.biz> should be distinguished as they
each relate to single generic words that never acquired any secondary meaning.
The Google searches submitted by Respondent
were carried out incorrectly. Respondent searched against “car wash for sale”
instead of one word “carwashforsale.” A Google search properly done against the
single word “carwashforsale” results in about 2,680 entries: approximately 80%
of the results link to Complainant’s website <carwashforsale.net> and
about 15% are linked to the domain name in dispute.
Complainant commenced use of the mark long
before Respondent registered the domain name. Respondent has no rights or
legitimate interest in the domain name: Respondent’s evidence only shows that
the domain name in dispute was registered in 2006; an inactive website
consisting of a single page seeking comments was developed; most of
Respondent’s website content was added much later; there is no indication that
Respondent has ever been commonly known by the domain name.
Respondent cannot acquire a legitimate interest
in the domain name because the domain name was registered by unlawful means.
Respondent registered the domain name with the knowledge that Complainant “has
superior trademark rights over” the mark.
“Complainant requested Respondent to transfer
over the domain names (sic). When they could not agree a price, he began adding
content to the web site-mostly with Complainant’s copyright material.”
Addressing the allegation of bad faith,
Complainant submits that Respondent initially registered the domain name for
the purpose of resale to Complainant as the trademark owner or competitor. When
the resale negotiations fell apart Respondent started to make the site look
legitimate.
D.
Respondent’s Additional Submissions
In an Additional Submission, Respondent submits
that the allegations relating to Respondent seeking to sell the domain name and
failure in the negotiations to agree a price is a completely new allegation,
not present in any way in the Complaint and this Panel should be strike it off
the record as being both untrue and an attempt by Complainant to amend the
Complaint.
If the Panel were to consider this allegation,
it should note that the allegation is made without any supporting evidence and
is denied by Respondent.
FINDINGS
Claimant has carried on a brokerage business in the field of car wash
sales and financing since 2003.
Complainant is the owner of the domain name <carwashforsale.net>
and has established a website at that address. Said domain name
<carwashforsale.net> was registered by Complainant on
Respondent registered the domain name in dispute <carwashforsale.biz> on
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.
Complainant claims rights at common law in the unregistered trademark
CARWASHFORSALE. This claim is based on the use by Claimant of the trademark
since 2003 in the course of its brokerage business. Claimant
claims that since 2003 it has built up a reputation and goodwill in the
use of the mark through promotion on Claimant’s website at its <carwashforsale.net>
domain address, at trade shows, workshops, web sites and in other publications
since 2003.
Respondent has argued that Complainant has no rights in the mark
CARWASHFORSALE mark because of its descriptive character and asserts that Claimant
has not established that CARWASHFORSALE has acquired any secondary meaning
sufficient to establish rights for Claimant.
This Panel is conscious that Complainant has neither registered the mark
nor indicated that it has any intention of applying for registration of the
mark even on the Supplemental Register. However, given that Complainant has
been using the words CARWASHFORSALE as a trademark since 2003,
this Panel accepts that it is a mark in which Complainant has acquired rights.
It is not necessary for this Panel to determine the exact extent of such rights
and in any event such a determination falls outside the scope the jurisdiction
of this Panel. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark); 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).
Nonetheless this Panel is also satisfied that such rights as Claimant
has acquired, fall short of exclusive rights to use the mark.
The domain name <carwashforsale.biz>
is identical to the trademark CARWASHFORSALE. The “.biz” extension may be
ignored for the purposes of comparison.
This Panel accepts Complainant’s submission that once a complainant
makes out a prima facie case that a
respondent has no rights or legitimate interest in a domain name, the burden of
proof shifts to the respondent under the second element of the test under the
Policy. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
In the present case however, Complainant has failed to make out such a prima facie case. While in most circumstances the act of merely
establishing a portal site earning click-through revenue is not in itself
sufficient to establish rights in a domain name, a portal site enterprise can,
and often will, be legitimate and bona
fide business. In cases where a Complainant has established exclusive
rights the establishment of a revenue generating portal site by a respondent
obviously cannot legitimise such use and is in fact the contrary.
In the present case however the descriptive character of the trademark
on which the Complainant is based, the failure on the part of Complainant to satisfy
this Panel that the mark has acquired sufficient secondary meaning to establish
exclusive rights and the generic character of the domain name <carwashforsale.biz>, leads this
Panel to conclude that Complainant has not made out a prima facie case sufficient to shift the onus of proof onto Respondent and therefore has not satisfied the
second element of the test under the Policy.
Since Complainant has failed to satisfy the second element of the test,
it is not necessary to consider whether the domain name was established and is
being used on bad faith.
Reverse Domain Name
Hi-jacking
Complainant has been legitimately using CARWASHFORSALE as an identifier since
2003, prior to the registration and first use of the domain name by Respondent
in 2006. In the circumstances Respondent has failed to prove that Complainant
has engaged in reverse domain name hijacking.
DECISION
The Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
P.
Dated:
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