Normart LLC. v. Vinny Carfora
Claim Number: FA0804001177243
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com 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
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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
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.
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
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