Tanner Gould d/b/a Rhythm Motor Sport (RMS
Claim Number: FA0806001198556
Complainant is Tanner Gould d/b/a Rhythm Motor Sport
(RMS USA) (“Complainant”),
represented by Jay Calhoun, of Law Offices of Donald W. Hudspeth, P.C.,
Arizona, USA. Respondent is Daniel
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rms-usa-fraud.com>, registered with Dotster.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2008; and the National Arbitration Forum received a hard copy of the Complaint on June 4, 2008. Pursuant to the request of the National Arbitration Forum, Complainant amended its Complaint so as to consistently list the Complainant’s name; so as to include Respondent’s complete mailing address; and so as to annex documentary evidence and a schedule index.
On June 3, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <rms-usa-fraud.com> domain name is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 3, 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.
Respondent’s Response was received in electronic form on July 3, 2008, but Respondent failed to submit the Response in hard copy form as required by the National Arbitration Forum’s Code of Procedure, Rule 5 (a) which states that:
“Within (20).days of the date of commencement of the administrative
proceeding, the Respondent shall submit a response to the Provider.”
Panel is under no obligation to accept and consider the late Response. However, so that the Complaint may be decided on its merits rather than on a procedural technicality, this Panel rules that Respondent’s failure to provide a hard copy of Response by the deadline, in accordance with NAF’s Rule 5(a) is not fatally defective to Panels’ acceptance of its electronic response. Therefore Respondent’s Response has been accepted by the Panel and has been considered in the rendering of this Award
On July 16, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
Complainant requests that the domain name <rms-usa-fraud.com>be transferred from Respondent to Complainant.
A. Complainant alleges as follows:
Rhythm Motor Sports (Complainant)
was founded in
Complainant has used the term “RMS
Complainant asserts common law
rights in its RMS
On information and belief, on April 06, 2008, Colin Frowell transferred ownership of the disputed domain name to Daniel Lundberg, who now has control and authority over the domain name. On information and belief, the infringing domain name <rms-usa-fraud.com> was caused to be registered by Respondent with Dotster on September 26, 2006. Said website was active with content from August 2007 to the present.
On April 1, 2008, Complainant sent a cease and desist letter to Respondent. Respondent replied that they would not transfer the domain name; that they were not subject to US laws; and that the domain name was for sale at $1500 US dollars. Complainant’s attorney on April 4, 2008, requested that Respondent remove Complainant’s personal information (home address) from website. Respondent replied on April 4, 2008 that website was about consumer awareness and that Complainant had scammed several people. Respondent requested money for shutting down website, and threatened to get another similar domain name, if shut down by ICANN. Complainant’s counsel responded in April 4 2008 e-mail that Respondent had not been a customer of Complainant and that Complainant offered to resolve any customer issues of anyone listed on site. On April 6, 2008, Respondent sent an e-mail to Complainant regarding what he believed that Complainant had done to him. Respondent added an additional person to the website, who merely had a shipping problem, which has been resolved in Complainants favor.
Respondent published Complainant’s attorney letter on the website for harassment purposes. The purpose of the registration of <rms-usa-fraud.com> was to interfere with Complainant’s business and to extort money. Respondent’s content on web site is likely to create the false impression that Complainant has defrauded customers and has been adjudicated guilty by a court of competent jurisdiction. Respondent’s infringing domain name threatened Complainant’s legitimate business and damaged its goodwill. Respondent’s actions are intentional, calculated and willful. Willfulness is proved by the act that Respondent has never ordered any product from Complainant; has never filed a complainant against Complainant; and has demanded ransom for the domain name, which is demonstrative of bad faith.
Complainant makes the following legal assertions: Respondent’s <rms-usa-fraud.com> domain name is identical to, or confusingly similar to, Complainant’s <rms-usa.com> mark. The only difference between the marks is that Respondent attached the word “fraud” to Complainant’s mark. Although most people will not assume that Complainant sponsors Respondent’s domain name <rms-usa-fraud.com>, most people will assume that Complainant is guilty of fraudulent action without being aware that Respondent is using the web site <rms-usa-fraud.com> to extort money from Complainant and that Respondent has actually never ordered any product from Complainant. Further, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name; and lastly that Respondent has registered and used the disputed domain name <rms-usa-fraud.com> in bad faith, for the purpose of harassing Complainant and extorting funds, in exchange for the domain name.
Respondent alleges as follows:
Rhythm Racing Motorsports and/or Tanner Gould do not have a trademark or trade name registered that <rms-usa-fraud.com> is confusingly similar to.
The right to express one’s opinion and to inform the public of wrongdoing make for legitimate interest in said domain name, especially since “rms” is merely a d/b/a name to the complainant. Freedom of speech should outweigh a commercial company’s interest in said domain name, since the word “fraud” added to the Complainant’s d/b/a name does not provide a platform for commercial business.
The Complainant has wronged the people utilizing the domain name; however the web site exists for the sake of public service only. As such, any relevant material received from Complainant and other victims is published on the web site.
Extortion is not the role of the website. Rather, Respondents merely presented to Complainant’s attorney a figure covering their expenses, which figure was subsequently rejected.
Respondent concludes that, “People disagreeing should not mean ‘bad faith.’”
(1) The Complainant has failed to establish that the domain name <rms-usa-fraud.com> registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(2) As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) the Panel declines to analyze the other two elements of the Policy.
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; and
(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.
Respondent disputes Complainant’s assertion of rights in the RMS USA mark. Complainant has no federal or state registrations for its trademarks or service marks. Complainant has also failed to establish common law rights in the RMS USA mark under Policy ¶ 4(a)(i). Said Policy states that the Complainant has the burden to prove that the domain name is identical to or confusingly similar to a trademark or service mark in which the complainant has rights. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (finding that in order to bring a claim under the Policy, the complainant must first establish a prima facie case; the complainant’s initial burden is to provide proof of valid rights in a mark that is similar to or identical to the domain name in question).
Complainant has not presented evidence to the Panel of a mark sufficient to satisfy Policy ¶ 4(a)(i). Although the Complainant has asserted common law rights in the RMS USA mark, it has failed to submit any credible evidence indicating extensive use such that its claimed mark has achieved secondary source identity. Complainant’s evidence is merely self serving. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . . Complainant’s claim that it is well known is a finding that must be supported by evidence and not self-serving assertions . . . . Precedent does not support merely protecting Complainant’s assertions in lieu of any supporting evidence or statements of proof (e.g. business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications, number of consumers served, trademark applications or intent-to use applications). Simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in the WELLSERV mark. Complainant’s burden requires proffering supportive evidence or information that indicates relevant consumers identify its alleged WELLSERV mark as representative of its services and identity.)
In the case at bar, the Complainant has proffered no proof, in exhibits, as to such matters as revenue, market share, and advertising dollars spent. Neither has it proffered the customary consumer surveys which evidence that customers associate goods and/or services with the manufacturer or servicer. Complainant has merely asserted such self serving statements in its Complaint as the following:
sold a significant amount of auto parts and supplies in the
advertises its auto parts and supplies via the Internet in connection with its
The analysis of confusing similarity should always follow a discussion of validity of rights in a mark. Based upon the following analysis, this Panel has ruled that Respondent’s disputed domain name of <rms-usa-fraud.com> is not identical to nor confusingly similar to any of Complainant’s purported service marks or trademarks.
The Complainant misses the mark in the Legal Background section of its Complaint, wherein it states:
“Respondent’s <rms-usa-fraud.com> domain name is identical to or confusingly similar to Complainant’s <rms-usa.com> mark. The only difference between the marks is that Respondent attached the word “fraud” to Complainant’s mark.
The issue is not whether the disputed domain name is identical or confusingly similar to Complainants domain name, but rather as posed by ICANN, whether “your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.”
used in its Internet advertising that is, RMS
apples-with-apples analysis shows that Respondent’s domain name of <rms-usa-fraud.com> has three
word elements, whereas the mark used in Complainant’s Internet advertising has
five elements, including an initial design element of a wheel in motion, the
words RMS USA and the two additional inextricably intertwined words of “RHYTHM
MOTORSPORTS.” The elements of RMS
Further, Complainant’s purported service mark and/or trademark of RMS-USA neither functions as a service mark, because there is no service offered to the public, nor does the mark function as a trademark, because it does not identify branded products. Rather RHYTHM MOTORSPORTS imports separately branded merchandise.
Moreover, Complainant concedes a lack of consumer confusion (emanating from the standard sponsorship test) in its Complaint with the statement that “Although most people will not assume that Complainant sponsors Respondent’s domain name <rms-usa-fraud.com> most people will assume that Complainant is guilty of fraudulent action without being aware that Respondent <rms-usa-fraud.com> is using the web site to extort money from Complainant and Respondent has actually never ordered any product from Complainant.”
Because domain names are regularly dispensed by Registrars without reference to their possible infringing intersection with trade marks and service marks, ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) affords a hearing to trademark and service mark holders to air their grievances of a possible usurpation of their goodwill by domain name holders. ICANN’s UDRP is not a forum of general jurisdiction whereby all alleged civil wrongs, such as unfair competition and trademark tarnishment and such defenses as free speech, should be heard. Rather, ICANN’s UDRP is a narrow forum with high particularized walls.
In accordance with the above analysis, this Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark. Therefore, this 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) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Hugo Daniel Barbaca Bejinha v. WHOis Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006)(deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rms-usa-fraud.com> domain name shall not be TRANSFERRED from Respondent to Complainant.
Carol M Stoner, Esq.,
Dated: July 31, 2008
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