Car Sound Exhaust System Inc. v. Faster Than Them Corp
Claim Number: FA0909001286520
Complainant is Car Sound Exhaust System, Inc. (“Complainant”), represented by J.
Mark Holland, of J. Mark Holland & Associates,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allmagnaflow.com>, <magnaflowcatalyticconverter.com>, <magnaflowcatback.com>, <magnaflowdieselexhaust.com>, <magnaflowexhausts.com>, <magnaflowparts.com>, <magnaflowexhaustsystems.com>, and <magnaflowplanet.com>, hereinafter referred to as the “Domain Names,” registered with Godaddy.com, 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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2009.
On September 28, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. 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 October 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on October 27, 2009.
The Complainant submitted an Additional Submission in a timely manner on November 2, 2009, in compliance with Supplemental Rule 7.
On November 3, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Complainant, Car Sound Exhaust System, Inc., states that it is the owner of numerous common law trademarks and various registered marks of which two are especially relevant to this case:
§ US Trademark Reg. No. 2,052,171 for the mark MAGNAFLOW for catalytic converters, mufflers and exhaust pipes all for motors and engines; and
§ US Trademark Reg. No. 3,022,108 for the mark MAGNAFLOW PERFORMANCE EXHAUST for catalytic converters, mufflers, exhaust pipes; exhaust systems comprised of a combination of exhaust products consisting of mufflers, catalytic converters, exhaust and muffler tips, hangers and tubing, all configured to fit specific automobile and truck applications; exhaust and muffler tips and exhaust pipes, all for automobile and truck and motors and engines.
Since 1985, Complainant has manufactured, advertised and sold millions of MAGNAFLOW catalytic converters, performance exhaust systems and muffler products, and spends in excess of $1 million per year promoting its MAGNAFLOW mark.
Complainant contends that Respondent has without authorization co-opted numerous trademarks corresponding to Complainant’s well-established MAGNAFLOW mark, and has copied virtually all of the content and links from Complainant’s genuine Magnaflow.com website. Respondent is using Complainant’s exact trademark in conjunction with 8 Domain Names. Respondent is selling products that are similar or even identical to Complainant’s catalytic converters, performance exhaust systems and/or mufflers.
Upon learning of Respondent’s unauthorized use, Complainant states that it sent Respondent a cease and desist letter demanding that Respondent stop using the Domain Names.
Complainant states that Respondent has a history (in another UDRP proceeding that is virtually identical to this case), which underscores the Respondent’s bad faith. Specifically, in Borla Performance Industries, Inc. v. Faster Than Them Corp., NAF Case No. 0705000977479 (June 20, 2007) (“Borla Performance”), the Respondent here was found in that case to have registered and used the domain name <borladirect.com> in bad faith. Respondent allegedly used similar tactics to those occurring in this case with respect to a third-party’s automobile parts trademarks, and was ordered to transfer those domain names back to the third-party trademark owner.
Complainant emphasizes that even though respondent in Borla Performance had used a disclaimer, the Panelist there found it to be insufficient. The Panelist there was concerned, in particular, that the respondent had
“used the actual name of the trademark owner in the website, which raises an initial inference that the website is the website of the trademark owner and this impression was strengthened by using the word “direct” [as part of the disputed domain name], implying that the domain name is a means of dealing directly with the [trademark owner].”
Moreover, the disclaimer was placed “well after all of the substantive information” had been presented to the user and after interactive features of the website may have been activated and used. Compared to the instant case, in Borla Performance the respondent had only registered one domain name whereas here Respondent here has registered 8 Domain Names, each of which does not give the user any hint that the sites associated with them are not authorized by Complainant.
Complainant provides explanations for how Respondent’s actions have violated Complainant’s rights under the Lanham Act, 15 U.S.C. §§ 1125(d) (Anticybersquatting Consumer Protection Act) and 1125(a) (unfair competition). In addition, Respondent’s actions allegedly constitute common law trademark infringement through the unlawful appropriation of Complainant’s valuable goodwill. Complainant also alleges that Respondent activities constitute unfair competition and false advertising under California Business and Professions Code § 17200 et seq. and § 17500 et seq.
Respondent appears to represent itself in this case. Respondent maintains that it is an Authorized Dealer of the Complainant’s products. Respondent requests that each of the Domain Names should be considered on a domain-by-domain basis. Respondent claims that none of its sites (associated with the Domain Names) diverts customers to other products; all of the sites only sell the Complainant’s MAGNAFLOW products. Respondent claims that it helps the Complainant market its products and represents the Complainant through great customer service. The Complainant’s employees have sent emails to Respondent encouraging Respondent and stating that they are glad Respondent has so many MAGNAFLOW sites.
Respondent claims that its position as an Authorized Dealer is confirmed by searching Complainant’s <magnaflow.com> website for local dealers, where Respondent is listed and endorsed as an Authorized Dealer. Respondent further claims that Complainant allows many of its dealers to use the word “magnaflow” as part of their respective domain names and even advertises these dealers on Complainant’s own site.
In response to the claim that Respondent’s websites sites are similar and confusing to the Complainant’s site, Respondent states this is wrong. Respondent has provided a screen shot of the Complainant’s site to compare it with six of the Respondent’s sites associated with the following Domain Names – <magnaflowplanet.com>, <magnaflowparts.com>, <allmagnaflow.com>, <magnaflowexhausts.com>, <magnaflowexhaustsystems.com> and <magnaflowcatalyticconverter.com> – to show the differences in presentation and format. On the other hand, as to the remaining two Domain Names (<magnaflowdieselexhaust.com> and <magnaflowcatback.com>), Respondent appears to acknowledge that the sites connected to them look similar to the Complainant’s website and Respondent states that it is “more than happy to give [Complainant] the sites below or change them.” Respondent claims it has even offered “to transfer magnaflow ownership for free over a year ago and I have the emails to prove this.”
Respondent states that the first piece of text on all of its websites provides a disclaimer to distinguish the Respondent from the Complainant. The Panelist has included four representative examples here:
[magnaflowplanet.com]: “Magnaflow Planet is not Magnaflow the manufacturer of the Magnaflow exhaust products we sell. We are owned by ALL EXHAUST and we are a dealer of their fine exhaust products.”
[allmagnaflow.com]: “All Magnaflow is not magnaflow nor are we affiliated with the manufacturer of magnaflow muffler.”
[magnaflowparts.com]: “Magnaflow Parts is an Authorized Magnaflow parts warehouse distributor. Magnaflow Parts is not Magnaflow the manufacturer of the Magnaflow exhaust products we sell. We are owned and operated by an authorized magnaflow dealer.”
[magnaflowexhuasts.com]: “MagnaflowExhausts.com “is a member of an
AUTHORIZED distributor nework of all Magnaflow Exhausts, Magnaflow Headers
& Magnaflow Mufflers. This means you
not only get award winning customer service but also a valid WARRANTY. Give us a call and talk to a real person in
Respondent claims that the Borla Performance case is inapplicable because the choice of the word “direct” in that case raises inferences not present in the Respondent’s use of the Domain Names and sites. Respondent indicates there are literally hundreds of emails and phone calls where the Respondent has been told “good job” by the Complainant.
Respondent claims that Complainant does not MARKET MAGNAFLOW catalytic converters; instead, the Complainant’s catalytic converters are marked as CAR SOUND CATALYTIC CONVERTERS.
Respondent suggests there is no bad faith because Respondent is an authorized seller and sells the Complainant’s products exclusively.
Respondent concludes that
“I spent two years dedicating my life to selling magnaflow products exclusively with their implied consent by ongoing correspondence for me to use these domains from them in email over those two years [sic].”
Respondent suggests that the Complainant may feel that the Respondent has “gotten too big.” However, Respondent asks that it be permitted to keep at least the <magnaflowplanet.com> Domain Name because it is an Authorized Dealer and sells Complainant’s products with Complainant’s consent.
C. Additional Submissions
Complainant has submitted a Reply, which attaches an affidavit from a lawyer (Mr. Gigliotti) who has represented the Complainant on various matters related to domain names. This affidavit explains that (i) 19 companies other than Complainant use the Complainant’s MAGNAFLOW or MAGNAFLOW PERFORMANCE EXHAUST trademarks within their respective URLs, of which Respondent is responsible for 8 of them; and (ii) Mr. Gigliotti has addressed these situations of use by third-parties either by formalizing that use by the Authorized Distributor through a license or by stopping use by unauthorized users. Of the 11 Authorized Distributors who use the Complainant’s marks, some already have a license agreement while others are in the process of obtaining a license agreement with the Complainant. For companies that are not Authorized Distributors, Complainant has not licensed them to use the Complainant’s marks and does not intend to do so in the future. Complainant has hundreds of Authorized Distributors and has permitted only a few to use its trademarks in URLs, and the Respondent is not one of them. Mr. Gigliotti also states that Complainant has approximately 12,000 businesses listed on Complainant’s Dealer Locator tool. However, a “Dealer” is not an “Authorized Distributor” and often does not buy direct from Complainant and carries a wide range of competing products. The qualification process to become a “dealer” requires only an application. Mr. Gigliotti states he is aware of the employee of Complainant who was responsible for maintaining contacts with Respondent and suggests that while he “may have expressed appreciation to Respondent,” he is “not aware of anyone on behalf of [Complainant] ever communicating to Respondent any authorization for Respondent to use any Car Sound trademark within any domain name of Respondent.” Mr. Gigliotti sent a cease and desist letter to Respondent on May 11, 2009, to which the Respondent initially responded that it would refuse to address the matter and then subsequently offered to return three URLs if Complainant would agree to permit Respondent to retain ownership of the others.
Complainant’s Reply also states that Respondent’s main desire is to be allowed to continue to use one of the Domain Names: <magnaflowplanet.com>. Complainant argues that this must be the case because of the “misdirected business Respondent unfairly derives from that site because of its similarity to an AUTHORIZED Car Sound Distributor’s domain name. In view of Respondent’s offer to transfer two of the Domain Names to Complainant, the Panel should confirm the transfer of these Domain Names: <magnaflowcatback.com> and <magnaflowdieselexhaust.com>.
Complainant observes that although Respondent
“is an Authorized Dealer, … only selected Authorized Distributors (who buy direct from Car Sound and have been approved for that special Distributor designation by Car Sound) are permitted by Car Sound to use Car Sound trademarks in any domain names.”
Finally, Complainant seeks to refute Respondent’s assertions about how many third-party sites use the word MAGNAFLOW as part of their domain names, and re-emphasizes several other points already submitted n the Complaint..
Complainant is a
Complainant’s main website is located at <magnaflow.com>.
Respondent is an Authorized Dealer of Complainant’s products.
Of the eight Domain Names in dispute, Respondent registered six of them in January or April 2008, while registering <magnaflowexhaustsystems> in February 2009 and <magnaflowplanet.com> in August 2007.
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.
Respondent does not deny that it registered the Domain Names with actual or constructive notice of the Complainant’s MAGNAFLOW and MAGNAFLOW PERFORMANCE EXHAUST trademarks. Indeed, it is obvious from the circumstances of this case that Respondent intentionally registered the Domain Names with Complainant’s trademarks in mind. Nor does the Panel have any hesitation in finding that the Domain Names are confusingly similar to the Complainant’s trademarks. The Domain Names differ from these marks only in that a generic or descriptive term has been added, along with the generic top-level domain “.com”. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
The thrust of the Complainant’s Complaint is to alleged the Respondent violated certain sections of the Lanham Act, (15 U.S.C. §§ 1125(d) and 1125(a)) and the California Business and Professions Code (§§ 17200 et seq. and § 17500 et seq.). These laws are not pertinent for determining whether the Respondent has registered and used the Domain Names in bad faith under the criteria of the Policy, and the Panelist makes no finding or comment on whether or not Respondent’s registration or use of the Domain Names constitutes a violation of these laws. On the other hand, Complainant does little to address the elements that it must prove under Paragraph 4(a) of the Policy, other than refer to Borla Performance, a case in which the Respondent here was also involved and found to have registered the disputed domain name in bad faith. Complainant urges that this case is very similar to that case.
The decision in Borla Performance contained a detailed analysis of factors to be considered in circumstances where an authorized “reseller” makes use of the principal’s trademark in a domain name to advertise its own services. For purposes of determining whether the respondent in Borla Performance had established rights or legitimate interests in the disputed domain name, the panelist there applied principles first enunciated in Oki Data Americas, Inc. v. ASD, Inc., WIPO D2001-0903. Although the Panelist here determines that it is unnecessary, for reasons given below, to make findings on whether the Respondent’s registration and use of the Domain Names would qualify as legitimate or in bad faith in accordance with the Oki Data principles, it is worth mentioning three potential differences between this case and the circumstances in Borla Performance:
(i) unlike in Borla Performance where the respondent’s website (connected to the disputed domain name) was selling products other than the complainant’s products, here the Respondent’s websites connected to the Domain Names sell Complainant’s MAGNAFLOW products exclusively;
(ii) while the respondent’s disclaimer in Borla Performance was apparently ineffective because it was less than clear in its language to disassociate the respondent from the complainant and was located at the bottom of the relevant webpage after all of the substantive information had been presented, the Respondent’s disclaimers in this case are the “1st piece of text” on each of the Respondent’s web pages connected to the Domain Names and Complainant has not argued that the language of Respondent’s disclaimers is unclear or otherwise insufficient; and
(iii) unlike in the immediate case, there appears to have been no factual controversy about whether or not the respondent in Borla Performance had the express or implied consent of the trademark owner to use the trademark in the disputed domain name. Here, by contrast, Respondent maintains that as an Authorized Dealer of the Complainant who sells the Complainant’s products with Complainant’s consent, and who has had regular contacts and encouragement from the Complainant’s representative with no objections raised as to use of the Domain Names (prior to the cease and desist letter in May 2009 after the Domain Names had been in use for some time), there is a potential pattern indicating express or implied consent or acquiescence to their use.
In response to Respondent’s contentions noted in point (iii) above, Complainant now asserts that Respondent has never been authorized to use its MAGNAFLOW marks in the Domain Names. At the same time, Complainant also makes much of the technical distinction between an “Authorized Dealer” and “Authorized Distributor,” noting that some third-parties (other than Respondent) who use the Complainant’s trademarks in their domain names have obtained licenses from Complainant as Authorized Distributors while others, although apparently in the process of obtaining such a license, have not done so yet are permitted to use the trademarks. These and the Respondent’s allegations raise disputed factual issues about the business relationship between the Complainant and Respondent that go beyond the criteria of the Policy.
The Panel therefore determines that these questions fall outside the scope of traditional analysis conducted under the Policy. This case is analogus to the decision in Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, D2000-0006 (WIPO Feb. 28, 2000). There, the respondent was an authorized "stocking distributor" of the complainant’s product and put up a web site for the sole purpose of promoting the complainant’s product, choosing a domain name that, to the informed consuming public, would clearly identify the site with the product. The web site was devoted entirely to the sale of complainant’s product. Respondent in that case claimed to have immediately told the complainant’s sales manager what it was doing and the news purportedly was greeted well. There was no suggestion that the product sold on the respondent’s web site was not a genuine product. The panelist in Adaptive Molecular Technologies observed that, on the limited record before it, the panelist did not know the full extent of the relationship between the parties and concluded that it could not determine whether the respondent had no "rights or legitimate interests" in the domain name because questions remained as to whether the complainant legally acquiesced in the respondent’s registration and use of the domain, at least initially, or whether respondent’s use was a nominative fair use. As the panelist there found, “[a]cquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts.” See also Everingham Bros. Bait Co. v. Contigo Visual, NAF 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Love v. Barnett, NAF Case No. 944826 (Nat. Arb. Forum May 14, 2007), (“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties…). Similarly here, where the business relationship between the Complainant and Respondent and its bearing on the Domain Names is contested, and Complainant has made reference to alleged violations of federal and state trademark and unfair competition laws, these matters are for the courts to decide.
Although the Panel determine that key questions in this dispute fall outside the scope of the Policy, this decision is nevertheless consistent with the “majority view” stated in WIPO’s “Overview of WIPO Panel Views on Selected UDRP Questions,” which addresses the question “[c]an a reseller have a right or a legitimate interest in the disputed domain name?” The WIPO Overview states that:
“A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner.”
Finally, although Complainant refers to a statement by Respondent in regards to two of the Domain Names that Respondent is “more than happy to give [Complainant] the sites or change them,” the Panelist cannot take this vague reference as the clear consent necessary to authorize transfer of the two Domain Names. As of the time of this dispute, as reflected in the submissions of both parties, they have not reached agreement on the voluntary transfer of any of the Domain Names from Respondent to Complainant.
For all of the foregoing reasons, the Panel decides that Complainant has not met its burden of proof under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy and key questions in this dispute fall outside the scope of the Policy. The Panel’s decision should not be read as a substantive decision on the merits of any trademark infringement or unfair competition claims which Complainant may ultimately choose to bring in court under applicable federal or state law. The decision is limited to the fact that, on this record, the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy.
Accordingly, the Panel concludes that the Domain Names <allmagnaflow.com>, <magnaflowcatalyticconverter.com>, <magnaflowcatback.com>, <magnaflowdieselexhaust.com>, <magnaflowexhausts.com>, <magnaflowparts.com>, <magnaflowexhaustsystems.com>, and <magnaflowplanet.com> should not be transferred to the Complainant.
Dated: November 23, 2009
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