National Arbitration Forum




Cook Tire and Service Center, Inc. v. Jeremy Wolf

Claim Number: FA0906001265798



Complainant is Cook Tire and Service Center, Inc. (“Complainant”), represented by Loren G. Helmreich, Texas, USA.  Respondent is Jeremy Wolf (“Respondent”), represented by Allen M. Wolf, of The Wolf Law Firm, Michigan, USA.



The domain name at issue is <>, registered with, 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.


R. Glen Ayers served as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 1, 2009.


On June 1, 2009,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, 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 June 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 29, 2009 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 by e-mail.


A timely Response was received and determined to be complete on June 26, 2009.


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. Glen Ayers as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



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 Texas corporations department, and acknowledged that he registered the domain name after seeing these materials.” 


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, <>, 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, <>, 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.    



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 <> 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. 



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.


Identical and/or Confusingly Similar


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 May 23, 2007) (“In order for Complainant to satisfy the requirements of Policy ¶ 4(a)(i), the Panel must find trademark rights that pre-date the registration of the disputed domain name.”); see also B&V Assocs., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant's rights must predate Respondent's domain name registration . . .”).


Rights or Legitimate Interests


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 Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).


Registration and Use in Bad Faith


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 Texas and application for a trademark with the USPTO.  The facts alleged by Complainant are false.  The rest of Complainant’s assertions could simply be ignored, including the strained description of the offer to purchase the domain name.  Respondent has also adequately repudiated the allegations of bad faith.  Certainly, the simple act of registration of a domain name by a non-competitor is not evidence of bad faith. 


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 <> 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 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)).


Respondent could not have registered the <> 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 May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).


Respondent asserts that it spoke with Complainant on one occasion wherein Complainant brought up the topic of buying the <> 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 Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion).



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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