Discount Trophy & Co. Inc. v. DefaultData.com a/k/a Brian Wick
Claim Number: FA0209000124853
Complainant is Discount Trophy & Co. Inc., South Windsor, CT (“Complainant”) represented by Elizabeth A. Alquist, of Day Berry & Howard LLP. Respondent is DefaultData.com a/k/a Brian Wick, Denver, CO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discounttrophy.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 9, 2002; the Forum received a hard copy of the Complaint on September 11, 2002. At the request of the Forum, the Complaint was amended to comply with formal requirements.
On September 18, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <discounttrophy.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 2002 by which Respondent could file a Response to the amended 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.
A timely Response was received and determined to be complete on October 14, 2002.
On October 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is and since 1977 has been doing business as a wholesale trophy component distributor with nine U.S. distribution centers, as well as locations in both Canada and Puerto Rico. It is the largest company in this industry. It advertises and markets to relevant consumers, which include retail trophy businesses, under the name “Discount Trophy” (“the Mark”), and has done so consistently over the last 25 years. It has spent millions of dollars over the years marketing the Mark, which has had the effect that the primary significance of the Mark is to identify the source of its products.
Complainant does business on the Internet under the domain name
<discount-trophy.com>. Customers and prospective customers frequently look for Complainant on the Internet. Complainant has received at least one complaint (from its largest supplier) of actual confusion in the disputed domain name. This major supplier went to the <discounttrophy.com> website when looking for information concerning Complainant.
The disputed domain name is identical or confusingly similar to the Mark. Respondent has no rights or legitimate interests in respect of it. Complainant is the legitimate owner of the Mark, and Respondent is not its agent or licensee. Moreover, Respondent does not conduct any legitimate business with the site; but rather links it, along with hundreds of other domain names, to a site with anti-Semitic, anti-Irish, and other offensive material.
The domain name has been registered and is being used in bad faith. Respondent has a pattern of registering domain names primarily for the purpose of selling the domain name registrations to their rightful owners. Indeed, a United States District Court reported that Respondent had registered the domain name <NameIsForSale.com> for that very purpose. See Morrison & Foerster LLP v. Brian Wick and Am. Distributions Sys., Inc., 94 F. Supp.2d. 1125, 1132 (D.C. Colo. 2000).
Moreover, Respondent registered the disputed domain name for the purpose of preventing Complainant from reflecting the Mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct, as reflected in the at least 14 cases brought against Respondent either in Federal District Courts in the United States, before the World Intellectual Property Organization Arbitration and Mediation Center or before this Forum.
Respondent Brian Wick’s testimony under oath, as reported in Morrison & Foerster, 94 F. Supp.2d at 1133, demonstrates his bad faith. In that case he stated that his intention in obtaining domain names was “my way of messing with them. . . . I got to thinking, Well, who else in corporate America can I have fun with. . . .” (emphasis in original).
Respondent’s Submission makes the following arguments:
“Discount Trophy” is a generic term, in which Complainant cannot have exclusive rights. Complainant has no registered mark and has provided no evidence of secondary meaning.
Respondent is making a bona fide use of the generic <discounttrophy.com> domain name. Anyone has rights to generic and common use Internet addresses, as speculation is the foundation for small business and the American dream.
Any discussion of bad faith is irrelevant to this case as the first two elements cannot be satisfied. The Complaint addresses only the bad faith element, presumably to get a sympathetic favorable opinion from this Panel because of Respondent’s well-publicized desire to ensure the U.S. Constitution has a visible place on the Internet. This dispute has no relevance to Respondent’s U.S. Constitutional Internet Speech Project, which Respondent agrees is outside the scope of the Policy because the Anti-Cybersquatting Consumer Protection Act has specific wording that acknowledges U.S. Constitutional speech - whereas the Policy does not and cannot because it encompasses countries that do not acknowledge all the grants of the U.S. Constitution.
Complainant has failed to prove all elements required to entitle it to relief.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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.
The disputed domain name is clearly identical or confusingly similar to the name “Discount Trophy”. That name is not generic but rather descriptive of Complainant’s business and thus capable of becoming distinctive of Complainant’s goods or services. However, Complainant has provided no evidence that it has any trademark rights in that name, as distinct from rights in its corporate name. Complainant does not claim to have a registered trademark. It asserts use and advertising of the name Discount Trophy as a trademark but offers no evidence of such use, nor that any such use has rendered that name distinctive of its goods or services.
Complainant has failed to establish this element of its case.
In light of Complainant’s failure to establish the first element, it is unnecessary to consider these elements.
Pursuant to Rule 15(e), the Panel finds this dispute to be outside the scope of paragraph 4(a) of the Policy and the Complaint is therefore DISMISSED.
Alan L. Limbury, Panelist
Dated: November 12, 2002
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