Steven R. Walker v. Scott
Robertson
Claim Number: FA0805001195739
PARTIES
Complainant is Steven R.
Walker (“Complainant”), represented
by Noah
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kawasakisuperstore.com>,
registered with Dotregistrar.
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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on May
29, 2008; the National Arbitration Forum received a hard copy of the
Complaint on May 30, 2008.
On May 29,
2008, Dotregistrar confirmed by
e-mail to the National Arbitration Forum that the <kawasakisuperstore.com>
domain name is registered with Dotregistrar
and that the Respondent is the current registrant of the name. Dotregistrar
has verified that Respondent is bound by the Dotregistrar
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 June 5,
2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 25,
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@kawasakisuperstore.com
by e-mail.
A timely Response was received and determined
to be complete on June 23, 2008.
On July 1, 2008,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has a Kawasaki dealership that he
operates at three sites in the State of Arizona. He contends that Respondent registered the
disputed domain name <kawasakisuperstore.com> without being a Kawasaki dealer and with no legal
rights in the name KAWASAKI SUPERSTORE.
He contends he has rights in the KAWASAKI SUPERSTORE mark because he
registered the mark in Arizona as part of a trade name. He seeks transfer to him of the disputed
domain name.
B. Respondent
Respondent, a resident of Alabama, contends
that Complainant’s mere registration of his three trade names in Arizona does
not establish rights in the KAWASAKI SUPERSTORE mark. Moreover, Respondent contends he registered
the disputed domain name on September 4, 2002, long before Complainant’s
November 21, 2007 registration of his trade names.
FINDINGS
Respondent registered the disputed domain name <kawasakisuperstore.com> on September 4, 2002. At that time he had no knowledge of any use of the KAWASAKI SUPERSTORE mark by Complainant. The record shows that Complainant asserts first use of the mark on November 1, 2006. When Respondent registered the disputed domain name on September 4, 2002, he also registered domain names <yamahasuperstore.com> and <polarissuperstore.com>, with the purpose of reserving use of all three names in his business. Since then he acquired Yamaha and Polaris lines and carries them in his business. He has not yet acquired a Kawasaki dealership.
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 has not established rights in the disputed domain name based on its trade name registration. A trade name registration does not prove rights in the mark. It is merely some evidence of use of the name. See Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003). Moreover, Complainant has not offered evidence from which common law rights could be inferred through proof of secondary meaning. Finally, the record does not show Complainant either used or had any claim of right in the KAWASAKI SUPERSTORE mark prior to Respondent’s 2002 registration of the disputed domain name. This is sufficient in itself to defeat Complainant’s assertion of superior rights in the mark. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001).
Complainant
has not satisfied the requirements of Policy ¶4(a)(i).
Complainant’s assertion of rights in the KAWASAKI SUPERSTORE mark does not make a prima facie case against Respondent on the issue of rights and legitimate interests because of Respondent’s earlier good faith registration of the disputed domain name. Respondent’s earlier registration with an intention to use the domain name in connection with the planned growth of his business is sufficient to show he has a legitimate interest in the disputed domain name. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000).
Complaint
has not satisfied the requirements of Policy ¶4(a)(ii).
Complainant has wholly failed to adduce any proof that Respondent registered the disputed domain name in bad faith. It is not clear that Complainant even accuses Respondent of bad faith registration. He seems merely to rely on the fact that Respondent does not have a Kawasaki dealership. This fact does not prove bad faith registration. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003). Moreover, the fact that Respondent registered the disputed domain name more than four years before Complainant’s first claimed use of the mark is in itself sufficient to defeat any claim of bad faith registration. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).
Complainant
has not satisfied the requirements of Policy ¶4(a)(iii).
DECISION
Having established all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Mark McCormick, Panelist
Dated: July 15, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum