Discount Trophy & Co. Inc. v.
DefaultData.com a/k/a Brian Wick
Claim Number: FA0209000124853
PARTIES
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.
PANEL
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.
PROCEDURAL
HISTORY
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 postmaster@discounttrophy.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
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).
B. Respondent
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.
FINDINGS
Complainant has failed to prove all
elements required to entitle it to relief.
DISCUSSION
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.
DECISION
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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