Cook Tire and Service Center, Inc. v. Jeremy
Wolf
Claim Number: FA0906001265798
PARTIES
Complainant is Cook Tire and Service Center, Inc. (“Complainant”), represented by Loren G. Helmreich,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lazyloader.com>,
registered with Godaddy.com, Inc.
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.
R.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
On June 30, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Cook Tire and Service Center, Inc. (“Complainant”) asserts
that it holds a trademark in the name “Lazy Loader.” It has provided evidence that the name is a
federally registered trademark. The
registration date is January 20, 2009.
Exhibit “A” attached to the Complaint shows that the alleged first use
in commerce is January 17, 2008.
However, Complainant also asserts that it reserved the corporate name “Lazy
Loader” on August 16, 2006. Complainant
alleges that it contacted Respondent and that “Respondent acknowledged having
seen the name ‘lazyloader’ in Complainant’s materials filed with the
Complainant asserts that it “used the name and made demonstrable
preparations to use the domain name before any notice of any dispute. Complainant also alleges that Respondent
“indicated” that Respondent liked the name but had not yet used it.
Complainant alleges that Respondent is not commonly known by the name
and has acquired no trademark or other rights in the name.
Complainant states that the domain name has been registered in bad
faith. Complainant says that it made
several offers of purchase of the name and Respondent indicated that he would
sell the name. The offers to sell, says
Complainant, were “far in excess of Respondent’s costs . . . .”
No specifics, including amounts, are alleged.
Complainant concludes by asserting that the registration was “primarily
for the purpose of disrupting the business of Complainant,” so as “to extract a
higher price for the transfer of the domain name . . . .”
B. Respondent
Respondent Jeremy Wolf (“Respondent”) asserts that the domain name, <lazyloader.com>, was registered
on January 27, 2006. Respondent says
that this registration was in connection with an idea for an easy way of
loading music onto iPods and other personal electronic devices. Respondent points out that Complainant’s line
of business is the manufacture of trailers for transportation of tires and
other materials which are easy to load.
Respondent accuses the Complainant of misrepresentation. Respondent first points out that he
registered the domain name, <lazyloader.com>,
on January 27, 2006. The name which
became a mark, “Lazy Loader, Inc.,” was not filed or reserved until August of
that year.
Respondent also asserts that Respondent’s alleged “indication” that
Respondent liked Complainant’s name and that Respondent had not used the domain
name are denied as “blatant falsifications.”
Respondent asserts his intent to proceed with his business plan.
Respondent also accuses Complainant of attempting to hijack the domain
name. Respondent admits that some
discussions were had concerning a sale, but states Complainant never made an
offer at any price and that Respondent never stated a price.
FINDINGS
Complainant has shown that the domain name
and the trademark are identical. Whether
or not there is any confusion between a domain name
that exists to promote iPod downloads and a mark that exists to indicate a
loading system for freight on trucks is a significant problem for
Complainant.
More importantly, the Panelist finds that the
Complainant has grossly exaggerated or misstated the chain of events. Registration of the mark, as indicated by
Complainant’s own Exhibit “A,” occurred on January 20, 2009. The application for the mark was not filed
until August of 2006. Complainant also
asserts that it registered the name in August of 2006 with the Secretary of State
of Texas. On the other hand, the
evidence is uncontroverted that Respondent’s domain name was registered in
January of 2006, at least seven months before Complainant took any action in
regards to the name.
There is absolutely no evidence that is not
completely rebutted of any attempt to use the name in any manner that would
constitute bad faith.
Still, Complainant has also demonstrated that
Respondent has no rights in the name.
While that evidence is weak, Respondent has not bothered to rebut the
issues of rights in the name, probably because Respondent has not made any significant
attempt to use the name.
Complainant’s allegations of bad faith,
however, have been completely rebutted by Respondent. Basically, Complainant’s description of the
facts does not support Complainant’s case.
First, the domain name was registered in January 2006. Seven or eight months later, Complainant
asserts that it filed a corporate name reservation on August 16, 2006. Then Complainant’s Exhibit “A” indicates that
on August 25, 2006, it filed to register the “Lazy Loader” mark. In its representations of fact, Complainant says
that it “contacted Respondent” about the <lazyloader.com>
domain name. Complainant states that Respondent
acknowledged having seen the name “Lazy Loader” and that Respondent
acknowledged that he had “registered the domain name after seeing those
materials.”
That is simply not true and cannot be
true. Complainant asserts registration
and use in bad faith. Yet, Respondent
registered the domain name long before Complainant came along. Respondent is not even in the same business
as Complainant and could not possibly disrupt Complainant’s business.
Complainant also states the “Complainant made
several offers to purchase . . . .”
Respondent refused to sell unless offered “a higher price.” Complainant says “[e]ach of the offers was
for in excess of Respondent’s costs . .
. .” The Panel fails to see how this was
bad faith. Respondent did not offer to
sell; Complainant offered to buy.
This Panel is of the opinion that Complainant
is engaged in an attempt to hijack this domain name. Complainant’s factual position is completely
untenable.
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 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 established that the domain
name and its mark are identical or confusingly similar. However, while the effective date of
trademark rights may date back to filing, filing was apparently in August of
2006. Respondent had registered the
domain name almost seven months prior to that date. Complainant has not established any common
law rights in the period prior to its filing for registration of the name. Therefore, there are no trademark rights
which predate the registration of the disputed domain name. See
Advanced Educ. Sys. LLC v. Bean,
FA 948593 (Nat. Arb. Forum
The Complainant has made a prima facie case that Respondent lacks
rights and legitimate interest in the domain name under policy paragraph 4(a)(ii). The burden
shifted to Respondent and Respondent made no attempt to establish that it had
rights in the name. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum
Complainant’s assertions of bad faith have
been rejected in the findings of fact.
The Panel finds that the representations concerning sale and other
evidence of bad faith cited by Complainant do not bear even minimal
scrutiny. Clearly, Complainant has
misrepresented to the Panel the chain of events or timeframe. Registration of the domain name was clearly
followed months later by registration with the Secretary of State of the State
of
Complainant has completely failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent certainly has not
registered or used the <lazyloader.com> domain name
in bad faith. Respondent has not
violated any of the factors listed in Policy ¶ 4(b) or engaged in any other
conduct that would constitute bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See
Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916
(WIPO
Respondent could not
have registered the <lazyloader.com> domain name in bad faith under Policy ¶ 4(a)(iii) because its registration of the disputed domain name
predates Complainant’s rights in the LAZY LOADER mark. Respondent’s registration predates any rights
Complainant has established in the LAZY LOADER mark, therefore Respondent did
not engage in bad faith registration under Policy ¶ 4(a)(iii). See
Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum
Respondent asserts that
it spoke with Complainant on one occasion wherein Complainant brought up the
topic of buying the <lazyloader.com> domain name.
Respondent asserts that Respondent, while not wanting to sell the
disputed domain name, asked Complainant to make an offer, which Complainant
failed to do. This exchange does not
amount to evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb.
Forum
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
R. GLEN AYERS, Panelist
Dated: July 14, 2009
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