O'Reilly Automotive, Inc. v. Bjarne Lorenzen
Claim Number: FA0808001220459
Complainant is O'Reilly Automotive, Inc. (“Complainant”), represented by Caroline
Stefaniak, of Husch Blackwell Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <partscity.com>, 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.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2008.
On August 14, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <partscity.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 8, 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 September 2, 2008.
An Additional Submission was received from Complainant on September 8, 2008, and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on September 9, 2008, and determined to be timely and complete pursuant to Supplemental Rule 7.
On September 10, 2008 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has present rights in the mark
Respondent contends that the assertion that the name has been passively held by Respondent for more than five (5) years is incorrect and that there is absolutely no circumstance indicating any trace suitable to lead to the impression that evidence of registration and use in bad faith is present. Respondent further contends that Complainant is misjudging the whole situation and that its “…business can not be forbidden just because of a company is selling parts for cars, and want to have the good short domain [<partscity.com>].”
C. Additional Submissions
Complainant’s Additional Submission notes that Respondent does not
dispute that <partscity.com>
is confusingly similar to the mark
Respondent’s Additional Submission disputes that they were trying to sell the domain name and asserts that the email responses were an attempt to help Complainant. Respondent states that Respondent has not ignored a single one of the ICANN rules.
Complainant is a corporation engaged in the
retail sales of automotive parts that asserts rights to the mark
Respondent is an individual whose address is
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 adequately established this element.
While the disputed domain name is for all
practical purposes identical to Complainant’s registered mark, the Respondent’s
August 23, 2003, registration of the disputed domain <partscity.com> predates Complainant’s current July 15, 2008
US registration for the PARTS CITY mark. While Complainant offers the registrations
of its predecessors-in-interest as proof that its rights pre-date Respondent’s,
those registrations were allowed to lapse as was Complainant’s prior
registration of the disputed domain name. Nor is any evidence provided
regarding the transition times between Complainant in its current form and its
predecessor-in-interest. The documents provided indicate that during the years
2003-2006 for reasons un-shown Complainant and/or its predecessor gave up their
rights to the PARTS CITY mark and the <partscity.com>
domain name. Once rights to a mark or domain name are abandoned the first
party to acquire them becomes the valid owner of the same and all rights associated
therewith. In 2007 Complainant began what ultimately became a successful
endeavor to revive their
Respondent, albeit poorly, but pointedly raises the issue of genericness as well. While it is not normally required that the issue of genericness be resolved in the UDRP proceeding, especially when Complainant is the owner of a valid registration, it is important to address the issue when the mark and the domain consist of one or more common terms. Complainant acknowledges that it competes with Respondent in the business of selling automotive parts. Despite Complainant’s reference to the alleged domestic fame of its mark (which is of limited relevance in a UDRP proceeding) or the supposed distinctiveness of “parts city” there has been no showing of secondary meaning in relation to these common descriptive terms. See Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”).
Complainant’s 2007 decisions to file for US registrations in the marks PARTS CITY AUTO PARTS and PARTS CITY AUTO PARTS AND DESIGN as well as secure registration in 2007 of the <partscityauto.com> domain name seem to undercut the purported breadth of recognition that they assert existed in the past or currently for the words “parts city.” This is especially true when all of Complainant’s current service mark applications disclaim the word “parts” just as the original application did for the cancelled mark.
Complainant has not adequately established this element.
Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights pursuant to Policy Section 4(a)(ii). See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
Complainant is correct in asserting that Respondent does not contend that it is commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s mark. However Complainant’s rights in its mark are junior to Respondent’s registration thus no such license is required. Complainant notes that Respondent is a competitor in selling automotive parts which supports Respondent’s contention that it is using the domain name to develop Internet portals for the sale of auto and truck equipment. These acts are sufficient to indicate rights or legitimate interests in the disputed domain name. See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (holding that the respondent’s submission of an invoice demonstrating that the respondent has been planning to trade under the name PURKHON KI YADEN since at least as early as January 28, 2000, was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Complainant would have the Panel find that it has protectable rights in the domain name despite letting it lapse and languish for months while Respondent has no such rights despite validly registering the unclaimed name and holding it in an undeveloped state for years. Holders of valid domain names are not required to develop them in any particular way within a fixed time or risk losing them, especially when they are not using the domains in a manner that is offensive to the rights of another. The implications of a contrary finding would throw the already questionable balance of the system into further disarray.
Complainant has not adequately established this element.
Because Respondent has demonstrated rights or legitimate interests in the disputed domain pursuant to Policy Section 4(a)(ii), Respondent did not register the domain name in bad faith pursuant to Policy Section 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Further Respondent has not violated any of the factors listed in Policy Section 4(b) or engaged in any other conduct constituting bad faith registration. Complainant’s assertion that merely holding a parked domain disrupts its business because it can not use that domain name for its own benefit does not satisfy this element. Fair competition should not be confused with bad faith use or registration. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
The same is true regarding Respondent’s attempts to bargain after being contacted by the Complainant over the disputed domain name. See Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where the respondent merely replied to the complainant’s offer to purchase the domain name registration); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding no bad faith where “the Complainant offers the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum”).
What’s in a name? That which we call parts by any other name may be more distinctive. But while Complainant may think there is something rotten in the state of Denmark the Panel can not find it to be and in fact finds it not to be Respondent’s registration of the domain name <partscity.com>.
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: September 24, 2008
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