Automobile Atlanta, Inc. v. Treadway
Solutions
Claim Number: FA0910001292305
PARTIES
Complainant is Automobile Atlanta, Inc. (“Complainant”), represented by David N. Baker, of Sapronov &
Associates, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <autoatlanta.com>,
<autoatlanta.net>, <automobileatlanta.com>, <automobileatlanta.net>, <dr914.com>, and <lifeinhighgear.com>, and they are
all registered with Godaddy.com, Inc.
(“Godaddy”).
PANEL
The undersigned, David H Tatham, Bruce E Meyerson and Linda M Byrne
certify that they have acted independently and impartially and to the best of their
knowledge have no known conflict in serving as Panelists in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on October 30, 2009; the Forum received a hard copy of
the Complaint on October 30, 2009.
On October 30, 2009, Godaddy confirmed by e-mail to the Forum that the
domain names <autoatlanta.com>,
<autoatlanta.net>, <automobileatlanta.com>, <automobileatlanta.net>, <dr914.com>, and <lifeinhighgear.com> (“the
disputed domain names”) are all registered with it and that Respondent is the
current registrant of the names. Godaddy
has verified that Respondent is bound by its 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 November 4, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding, setting a deadline of November 24, 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 postmaster@autoatlanta.com, postmaster@autoatlanta.net,
postmaster@automobileatlanta.com, postmaster@automobileatlanta.net,
postmaster@dr914.com, and postmaster@lifeinhighgear.com by e-mail.
A timely Response was received and determined to be complete on
November 23, 2009.
Additional Submissions were received from Complainant on November 30,
2009 and from Respondent on December 3, 2009. They were both determined to be
timely and complete pursuant to Supplemental Rule 7.
On December 4, 2009, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the Forum appointed
David H Tatham, Bruce E Meyerson and Linda M Byrne as Panelists.
RELIEF SOUGHT
Complainant requests that all of the disputed domain names be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Previous
History
Complainant points out that the present
Complaint is a re-filed Complaint involving the same Complainant, Respondent
and disputed domain names as a previous Complaint in which relief was denied to
Complainant due to the existence of some then-pending civil litigation between
Respondent, as plaintiff, against Complainant, as defendant. The civil complaint has since been dismissed
by Respondent, and Complainant submits that this constitutes a change in
material evidence which merits that this Complaint should properly be accepted
by the Forum and considered by the Panel. A copy of that Dismissal was attached
to the Complaint.
Complainant’s original Complaint, No. FA0905001264729, was filed in May and decided in July 2009. The
decision denied relief in view of the existence of pending litigation between
the parties. Complainant contends that
this decision was implicitly without prejudice because it was not a decision on
the merits of the case.
Complainant quoted from a case recognizing four
common-law grounds for the rehearing or reconsideration of a previously filed
decision: (1) serious misconduct on the part of a judge, juror, witness or
lawyer; (2) perjured evidence having been offered to the court; (3) the
discovery of credible and material evidence which could not have been
reasonably foreseen or known at trial; or (4) a breach of natural justice.
However Complainant contends that the above list of four factors is not
exhaustive.
Complainant also refers to Policy Rule 15(a)
which directs the panel to “decide a
complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable”; as well as to the WIPO publication ‘Overview of
Panel Views on Selected UDRP Questions’ which states the consensus view as
being that a re-filed case may only be accepted in limited circumstances e.g.
when the complainant establishes in the complaint that relevant new actions
have occurred since the original decision, or that a breach of natural justice
or of due process has occurred, or that there was other serious misconduct by
the panel or the parties in the original case (such as perjured evidence), or
that the re-filed case includes newly presented evidence that was unavailable
to the complainant during the original case.
Complainant notes that in several previous cases
under the Policy re-filed Complaints have been allowed and disputed domain
names have ultimately been transferred to complainants where, as here, there is
“credible and material evidence which
could not have been reasonably foreseen or known” when the first UDRP
complaint was decided. Complainant asserts that in the present case, such
material evidence is the dismissal by Respondent of the civil litigation on
which the Panel in the previous UDRP proceeding relied and submits that the
present Complaint should therefore be considered by the Panel.
The Parties
Complainant states: that it is an automotive sales, parts, restoration
and service business specializing in classic Porsche automobiles including the
356, 911, 912, 914, 924, 928, 944, 968 and Boxster; and that it has
continuously operated a “bricks and mortar” business since 1978 which has been
known, interchangeably, as Automobile Atlanta and AutoAtlanta. Complainant
submitted photographs of its place of business from 1978, 1981 and 1984 showing
the name Automobile Atlanta prominently displayed on the buildings. Complainant
began using the domain name <autoatlanta.com>
in 1996, and currently offers parts, accessories, automobiles, and catalogs
through the <autoatlanta.com> website. This website also has a message board, and Complainant
generates the majority of its business and revenue via the website. The domain names <autoatlanta.net>, <automobileatlanta.com> and <automobileatlanta.net> all
redirect to <autoatlanta.com>.
Complainant further contends that its President, George A. Hussey, IV,
is well known by the nickname “Dr. 914” and that for a long time his e-mail
address has been <dr914@autoatlanta.com>,
Complainant also contends that it has also published a catalog and direct mail
pieces under the title “Life In High Gear” since at
least 1999.
Complainant asserts that Respondent, Treadway Solutions, is just a
business name for Mr. Greg Treadway, an individual who was previously employed
by Complainant as a marketing employee from 1998 to 2000 and again from 2001 to
2005. Complainant asserts that, in his capacity as an employee for Complainant,
Respondent registered and/or renewed the registration of all of the disputed
domain names. After a disagreement between Complainant and Respondent, and
following Complainant’s termination of Respondent’s employment, Respondent
asserted rights to the disputed domain names and began to disrupt Complainant’s
business. However, pursuant to an agreement between Complainant and Respondent,
a copy of which was attached to the Complaint, Respondent agreed to discontinue
his disruption of Complainant’s business by not interfering with Complainant’s
use of the disputed domain names and to allow Complainant to use them pending
the outcome of this UDRP proceeding.
Identical
or Confusingly Similar
1. <autoatlanta.com>,
<autoatlanta.net>, <automobileatlanta.com> and <automobileatlanta.net>
Complainant contends that although its full
name is Automobile Atlanta, Inc., it is known as either Automobile Atlanta or
Auto Atlanta, and has been in continuous operation in
Complainant contends that, as a result of its
longtime and widespread use and recognition of the marks AUTO ATLANTA and
AUTOMOBILE ATLANTA it has obtained common law trademark rights in these marks
and that common law trademark rights are clearly recognized under the
Policy.
Complainant contends that it generates approximately $2 million a year
in revenue and spends approximately $200,000 a year in marketing, advertising
and business development activities related to the names AUTOMOBILE ATLANTA,
AUTO ATLANTA, DR. 914 and LIFE IN HIGH GEAR. This was confirmed in a
Declaration by Complainant’s President, George A. Hussey, IV.
Attached to Mr. Hussey’s Declaration were copies of several documents
as proof that Respondent was an employee of Complainant that he had paid for
the registration of all the disputed domain names with his corporate credit
card.
Complainant also refers to a previous decision under the Policy – Automobile Atlanta v. Wayne R. Dempsey, Case
No. AF-0173 – in which the domain name <automobileatlanta.com> was
transferred to Complainant and in which the panel found that “it is not disputed that for a significant
period of time, the trade name Automobile Atlanta has been used and has become
a source identifier for the Complainant [Automobile Atlanta, Inc.]” and “the trade name Automobile Atlanta is a
source identifier for Complainant’s business and that Complainant [Automobile
Atlanta, Inc.] has a common law right in that mark.”
It is Complainant’s contention that the
disputed domain names <autoatlanta.com> and <autoatlanta.net> are
identical or confusingly similar to Complainant’s trademark AUTO ATLANTA
because: (1) the domain names differ only by the addition of the top-level
domain names “.com” and “.net”, which should be disregarded; (2) the
elimination of the space between the words “auto” and “Atlanta” is immaterial
because spaces cannot be used in a domain name and do not distinguish the
domain names from the trademark; (3) “auto” is merely a commonly shortened form
of the word “automobile.”
2. <dr914.com>
Complainant contends that it has acquired common law trademark rights
in the mark DR. 914 as the result of use of this mark by Complainant’s
president, Mr. Hussey, on behalf of Complainant. Mr. Hussey is a national authority on the
restoration and maintenance of Porsche 914 automobiles, and he is known
throughout the industry by the nickname “Dr. 914” and his e-mail address has
long been <dr914@autoatlanta.com>.
Complainant contends that the disputed domain name <dr914.com> is
identical to the DR. 914 trademark because the addition of the top-level domain
name “.com” should be disregarded, because a second-level domain name cannot
contain a period as the trademark does, and such punctuation is
immaterial.
3. <lifeinhighgear.com>
Complainant has used, and has
therefore acquired rights in, the common law trademark LIFE IN HIGH GEAR since
at least 1999 in connection with the publication of an automotive parts and
accessories catalog called “Life In High Gear” and it has also used the domain
name <www.lifeinhighgear.com> in support of its e-commerce business.
The disputed domain name <lifeinhighgear.com> is identical to the
LIFE IN HIGH GEAR trademark because the addition of the top-level domain name
“.com” should be disregarded and because the elimination of the space between
the words “life”, “in”, “high” and “gear” is immaterial because spaces cannot
be used in a domain name.
Rights
or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate
interests in the disputed domain names, because Complainant has never assigned,
granted, licensed, sold, transferred or in any way authorized Respondent to
register or use the AUTO ATLANTA, AUTOMOBILE ATLANTA, DR. 914 or LIFE IN HIGH
GEAR trademarks in any manner, and quotes several Decisions under the Policy in
support of this contention.
Complainant believes that Respondent has never used, or made
preparations to use, any of the disputed domain names or any name corresponding
to any of them in connection with a bona fide offering of goods or
services. Rather, although Respondent has previously used them on behalf of
Complainant, and is continuing to do so as the result of the above mentioned
temporary agreement between the parties pending the outcome of this proceeding,
Respondent has at times rendered them inactive, disrupting Complainant’s
business and has even offered to sell at least one of the disputed domain names
to a competitor of Complainant.
Complainant contends as follows:
·
that
Respondent’s use of the disputed domain names in this manner does not confer
upon Respondent any rights or legitimate interests in them even when he
re-directs visitors to Complainant’s own website, and quotes a Decision under
the Policy in which it was said that “an
unconnected party has no right or legitimate interest to use an otherwise
deceptive trademark, name or indicia to redirect Internet traffic, even if it
is directed to the legitimate owner of the trademark, name or indicia and
provider of the services. Generally,
such an owner of rights should be able to control how such trademarks, names
and indicia are used in the course of trade and when so used to control who is
directed to its website and by whom.”
·
that
Respondent lacks rights or legitimate interests in the disputed domain names
because – despite the previous relationship that existed between Complainant
and Respondent, in which Respondent was employed by Complainant – Complainant
never intended to give the Respondent the domain names or to license the use of
a domain name confusingly similar to any of its names for Respondent’s own
purposes. Complainant submits that a domain name registrant lacks rights or
legitimate interests in a domain name where Complainant alleges (a) that
Respondent registered the Domain Names on Complainant’s behalf, (b) that
Respondent registered the Domain Names under his own name without Complainant’s
knowledge or permission, (c) that Respondent’s only association with Complainant’s
marks was his tenure as a partner and employee of Complainant, and (d) that
Respondent is not now making use of the Domain Name for any purpose other than
to prevent Complainant from using the Domain Name[s]. Further, given that
Complainant paid for registration and renewal of the disputed domain names, it
is apparent that only Complainant, not Respondent, acquired rights in them;
·
that a
trademark owner’s employee is certainly aware of the existence of Complainant’s
rights and therefore cannot acquire any rights or legitimate interests in
domain names that are identical or confusingly similar to the Complainant’s
trademarks;
·
that
Respondent has never been commonly known by any of the disputed domain names
and has never acquired any trademark or service mark rights in them;
·
that Respondent
is not making a legitimate non-commercial or fair use of the disputed domain
names, but is making an illegitimate, commercial, unfair use of the Disputed
Domain Names, with intent for commercial gain to divert consumers misleadingly. By using the disputed domain names in
connection with Complainant’s own auto parts and service business, Respondent
has used the disputed domain names for commercial purposes. Further, by periodically discontinuing use of
the names, Respondent has diverted customers from Complainant’s websites.
Bad Faith
Complainant contends that
circumstances indicate that Respondent has registered or has acquired the
domain names in question primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant or to a
competitor of that Complainant, for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to the domain name
and refers to copies of two e-mails which were attached to the Complaint.
The first of these, dated October
25, 2008 was sent from Greg Treadway (Respondent) to Fabian Roock, owner of
Roock AutoSport, a Porsche service company and competitor of Complainant, and
read: “would you like to buy www.automobileatlanta.com
or automobileatlanta.net or autoatlanta.net. i [sic] own them all
and am looking to sell cheap.” Mr.
Roock was good enough to forward this message to Automobile Atlanta.
This message clearly shows that
Respondent offered to transfer the domain names in question to a competitor of
the Complainant. Furthermore,
notwithstanding Respondent’s offer to sell them “cheap”, circumstances would
indicate that he was looking to do so for amounts in excess of his out-of-pocket
costs.
The second e-mail was from Greg
Treadway to George Hussey dated February 9, 2009 in which the former states, in
the relevant parts:
“I believe that iTreadway could get some strong writing done to
Automobile
“There could be a down payment of $15,000 and then iTreadway could
write one year for Automobile
“This agreement would represent a settlement of the lawsuit and we
would each close any legal stuff we have outstanding. I would also be willing
to forgo any claim I have made against the white 914. I would sign over to you the domain names we
discussed.”
In the Declaration of George
Hussey he states that Complainant paid for the registration of all of the disputed
domain names. Accordingly, Respondent’s
out-of-pocket costs are zero.
Complainant therefore contends that Respondent’s attempts to sell the
disputed domain names, as described above, is clearly “for valuable consideration in excess of your documented out-of-pocket
costs directly related to the domain name,” and constitutes bad faith
pursuant to paragraph 4(b)(iii) of the Policy.
Complainant contends that Respondent has
registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, and that
Respondent has engaged in a pattern of such conduct.
Complainant quotes extensively
from a Decision under the Policy to argue that, as an employee of Complainant,
Respondent “was expected to register the
Domain Name[s] in the name of Complainant” and failed to do so. “Accordingly,
Respondent’s refusal to follow his employer’s instruction and his registration
of the disputed domain names in his own name constitutes bad faith registration” and “As for bad faith use, Complainant has established
that Respondent is now using… the Domain Name[s] in order to prevent
Complainant from reflecting its trademark in a corresponding domain name. Although Complainant has not alleged that
Respondent has engaged in a pattern of such conduct, see Policy, paragraph
4(b)(ii), in the circumstances of this case, it appears that Respondent’s
refusal to return the Domain Name[s] to Complainant is being done out of malice
or spite. This is sufficient under the
present circumstances to demonstrate that Respondent is using the Domain
Name[s] in bad faith.”
Complainant points out that, in
the present case, a pattern of conduct does exist as evidenced by the fact that
there are six domain names in dispute.
On or about April 22, 2009,
Respondent severely disrupted the business of Complainant by disabling the
websites associated with <autoatlanta.com>, <autoatlanta.net>, <automobileatlanta.com>, and <automobileatlanta.net>.
Complainant relies on these sites for its e-commerce business. Subsequent discussions between the counsel for the parties led to a “truce” in which Respondent
temporarily restored the websites at <autoatlanta.com> and <automobileatlanta.com>. However, Complainant states that on May 21, 2009,
Respondent again disabled access to all of Complainant’s websites and has
threatened to do so again.
Complainant states that
Respondent’s website <lifeinhighgear.com> has, at the time of
filing of this Complaint, a banner photo at the top of its homepage of a
Porsche Carrera GT and content largely devoted to classic automobiles, and
contends that Respondent’s use of the domain name in this manner is likely to
cause confusion because the content published on the website is similar to the
services offered by Complainant under this trademark. Further, by using the
domain name <lifeinhighgear.com>,
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s website or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website or location or
of a product or service on Respondent’s web site or location.
Complainant concludes by stating that the four examples of bad faith set forth in paragraph 4(b) of the Policy are only illustrative, not exhaustive, and quotes from several Decisions to argue that, even if the Panel should for some reason find that the Complainant’s conduct does not fall easily within any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy, Respondent nevertheless has acted in bad faith. This is because the potential for harm to Complainant stems from Respondent’s abusive use of Complainant’s trade/service marks in devising the disputed domain names.
B. Respondent
Respondent, Treadway Solutions, is the business name of Mr. Greg
Treadway, who asserts that he was a 20% shareholder in Complainant from 2000 to
2005. [Hereinafter, the term ‘Respondent’ will be used, according to the
context, to refer either to Treadway Solutions or to Mr. Treadway himself.] Mr.
Treadway claims that Complainant’s President, Mr. George A Hussey IV, refused
to enter into a written contract with him in 2000 so Respondent asked for and
was given the domain name <autoatlanta.com> with the understanding that
it would be used for the benefit of Complainant and that it symbolized
Respondent’s contribution to Complainant.
In 2005 Mr. Treadway asked Mr. Hussey to execute a written certificate
confirming his 20% interest in the company, but Mr. Hussey denied that Mr.
Treadway had any interest in Complainant and the two fell out.
Respondent maintains that he personally
registered the domain names <automobileatlanta.com>,
<automobileatlanta.net>, <autoatlanta.com>, <autoatlanta.net>, <dr914.com>, and <lifeinhighgear.com> for use in
the marketing concepts he planned for Complainant.
Respondent objects to this Complaint being heard under the Policy
because the business dispute between the parties, referred to by Complainant,
is res judicata under the Doctrines
of Issue and Claim Preclusion. He contends that there have been more than three
years of litigation in a State court in Georgia which commenced before the
first UDRP proceeding and ended more than two months after the first UDRP
proceeding was dismissed. He asserts
that the Doctrine of Issue Preclusion firstly bars Complainant from raising the
very same claims against the very same Respondent in the same forum, secondly
bars actions that have previously been litigated and decided, and thirdly requires
a party to bring all claims arising out of a particular set of circumstances in
one action.
The Response then sets out details of the civil litigation between the
parties and confirms that it was concluded when they entered into a contract under
which, Respondent says, “Complainant can
continue to use the subject domains, particularly while Complainant still
believes it has either a civil or administrative forum open for claims
Complainant failed to raise in over three years of litigation”.
Identical or Confusingly
Similar
Respondent contends that <automobileatlanta.com>, <automobileatlanta.net>,
<autoatlanta.com>, and <autoatlanta.net> are not
identical or confusingly similar to any trademark of Complainant because it has
no registered trademarks, and only uses “Auto Atlanta” as a generic trade name
which does not even qualify as a common law mark.
Respondent further contends that all of the above
four names are generic terms allegedly associated with an Atlanta-based auto
business. They do not even describe the fact that Complainant deals only in
Porsche automobiles, and in fact more accurately describe a long-time
competitor of Complainant who uses the domain name <atlantaauto.com>.
Respondent then sets out in great detail why
a name such as AUTO ATLANTA could never be registered as a trademark under
current US trademark law as it consists of the highly descriptive term ‘auto’
and the name of the capital and largest city of Georgia.
Respondent registered the <lifeinhighgear.com> name because
he wanted to change the previous name of Complainant’s catalog. The newly
renamed catalog was printed in 1999 and Respondent contends that the name was never
used again by Complainant until right before the filing of the first UDRP
Complaint. In fact Respondent has himself been using the name for a blog
directed to auto enthusiasts
With regard to <dr914.com>, Respondent states that he is not interested in
using this name and intends to transfer it to Mr. Hussey but does not wish to
be forced to do so as a gift through these UDRP proceedings.
Rights
or Legitimate Interest
Respondent contends that he has rights or a legitimate interest in all
of the disputed domain names, claiming that Mr. Hussey offered to give him a
20% shareholder interest in Complainant along with a Porsche 914 and salary. In
exchange for this, Respondent agreed to work for Complainant for five years
during which time he would be responsible for all of Complainant’s internet
related activities, including marketing and sales. When Mr. Hussey refused to
execute a written Agreement, Respondent – by this time doing business as “Treadway
Solutions” at Mr. Hussey’s request – insisted that he be given the dame name <autoatlanta.com>. Mr. Hussey
agreed and approved the transfer of this name to Respondent in 2000.
Respondent had been unable to register names such as <atlantaauto.com> or <atlantaautomobile.com> as these
names had already been registered. The first has been used by one of
Complainant’s competitors since November 1998 and the second is currently
offered for sale.
When Mr. Treadway had completed his five years’ employment with
Complainant, Mr. Hussey fired him without cause and denied that he held a 20%
interest in Complainant. As a result, Mr. Treadway had no option but to bring
suit against Mr. Hussey and Complainant. Respondent maintains that this
litigation is still ongoing, but that in the meantime this UDRP Complaint has
been filed. Respondent alleges that Mr. Hussey is simply hoping to hide the
existence of a fully performed verbal contract which may eventually be found by
a competent court to be enforceable against Mr. Hussey, thus overruling any
decision in this Complaint.
Bad Faith
Respondent contends that all of the domain names were registered and
have been used in good faith. They were acquired primarily for the purpose of
increasing the value of Respondent’s claimed 20% shareholding in Complainant
which he alleges is rightly his.
Respondent states that since he was pushed out of the Complainant in
2005 and the civil litigation commenced in 2006, he has only once disrupted
Complainant’s use of the disputed domain names. This was during negotiations
for some level of compensation from Complainant. At that time, the names were
only parked. Respondent alleges that he made extensive efforts to convince Mr.
Hussey to agree to some reasonable resolution of the civil litigation e.g.
offers of settlement, and threats to sell the generic domains to others.
C.
Additional
Submissions
As noted above, both parties filed Additional Submissions
Complainant
Complainant contends that the Doctrine of Issue Preclusion, raised as
an issue by Respondent, is a state law doctrine and is therefore inapplicable
to any UDRP proceeding and cites several UDRP Decisions which have considered
it.
Complainant takes issue with Respondent’s allegation that the previous
UDRP Complaint was dismissed for lack of subject matter jurisdiction and points
out that in fact the Decision made clear that no decision could be reached
during the pendency of a related civil action. Since then, the related civil
action has been dismissed so Respondent’s claim that it is still pending is
false.
Complainant reiterates that all the UDRP elements needed to transfer
the disputed domain names are present. For example, the previous <automobileatlanta.com> case stated that the
name ‘Automobile Atlanta’ had become a source identifier for the Complainant.
Thus, Respondent’s argument is wrong concerning the generic nature of <automobileatlanta.com>, <automobileatlanta.net>, <autoatlanta.com>, and <autoatlanta.net>.
Complainant filed further examples of its use of the names AUTOMOBILE
ATLANTA, AUTO ATLANTA, DR 914 and LIFEINHIGHGEAR as proof that it possesses
rights in these names and that they have acquired secondary meaning so are
therefore entitled to protection under the Policy.
Complainant states that Respondent’s discussion of
Complainant also dismisses Respondent’s references to the use of
<atlantaauto.com> and <atlantaautomobile.com> as a red herring and
irrelevant. However Complainant appreciated the fact that Respondent has drawn
the existence of these domain names to Complainant’s attention.
Complainant dismisses as being untrue Mr. Treadway’s assertions that he
is somehow a partial owner of, or a shareholder in, Complainant. In the
Complaint it was clearly demonstrated that Mr. Treadway was only an employee of
Complainant not a shareholder. Also untrue are Mr. Treadway’s references to the
continuing litigation against Mr. Hussey. The Complaint clearly demonstrated that the
civil litigation between the parties has been dismissed.
Respondent
Respondent’s Additional Submission repeats many of the Response’s
arguments to the effect that the Complaint is inextricably bound up in the
civil litigation between the parties. He asserts that that litigation was
partially settled through court mediation in June 2006 but alleges that Mr.
Hussey has consistently refused to comply with the terms of that settlement.
Respondent claims that he dismissed his few remaining claims against
Complainant and Mr. Hussey “as they did
not justify further litigation in light of Complainant’s and Mr. Hussey’s
complete failure to assert any ownership or control rights over the subject
domain names in over three years of civil litigation.”
Respondent concludes by accusing Complainant of an attempt to forum
shop “by ignoring the civil litigation
where the facts could be properly reviewed in a court of law and equity.”
FINDINGS
Complainant, Automobile Atlanta, Inc., is an automotive sales, parts, restoration and service
business specializing in classic Porsche automobiles.
Respondent is Treadway Solutions, but this is
the business name of Mr. Greg Treadway who is, to all intents and purposes, the
Respondent. He was employed by Complainant from 1998 to 2000,
and from 2001 to 2005.
The parties have been engaged in litigation
since February 2006. Mr. Treadway, who was for several years employed by
Complainant, is nursing a grudge against Complainant and its founder and
President, Mr. George Hussey IV, believing that the latter has not only cheated
him out of a 20% interest in Complainant but is also retaining some of
Respondent’s possessions, including a Porsche 914 automobile.
This re-filed Complaint involves the same
Complainant, Respondent, and disputed domain names. It was originally filed in July
2009 but rejected in view of the ongoing civil litigation, making the dispute
beyond the scope of the Policy.
That civil litigation was voluntarily
dismissed by Mr. Treadway in August 2009 and this new Complaint was filed in
October, 2009.
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.
Preliminary Issues
Respondent has argued that this Complaint should be dismissed as it
barred by the Doctrine of Issue Preclusion because it simply raises the same
claims as were raised in the earlier Complaint between the parties involving
the same disputed domain names. Complainant dismisses this assertion as it is a
doctrine that applies only to State Law and quotes the following Decisions
under the Policy – Marcus R. Schatte
d/b/a Sex v. Pers. FA 124756 (Nat. Arb. Forum Nov. 4, 2002) in which the
Panel “declines to become involved with
the intricacies of issue preclusion and whether it can be used in a proceeding
such as this.”; High Speed Prod.,
Inc. v. Thrasher Magazine, Ltd FA 97008 (Nat. Arb. Forum June 20, 2001) in
which it was held that “strict
application of principles of claim and issue preclusion could work an injustice;
SAS Institute, Inc. v. ALU a/k/a J.
Barein FA 126631 (Nat. Arb. Forum Nov. 8, 2002) in which the Panel declined
to determine whether an issue preclusion argument was appropriate in such a
proceeding; and Digital-Logic AG v.
Jordano Daemonti FA 273488 (Nat. Arb. Forum July 9, 2004) in which it was
said “as to whether principles of claim
or issue preclusion apply in proceedings under the Policy … common law
principles should not be applied in this relatively new and developing area.”
The Panel agrees with all of these Decisions and dismisses Respondent’s
claim that it is precluded from rendering a Decision on the present Complaint.
However this is a re-filing of an earlier Complaint and, typically, complaints may not be resubmitted for relief subsequent to their denial due to res judicata principles unless the complainant meets its high burden of demonstrating the need for such additional review.
Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) set out four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice. The Panel could deny Complainant’s refiling under the principles of res judicata, following Koninklijke Philips Elecs. N.V. v. Relson Ltd., DWS2002-0001 (WIPO June 14, 2002) in which it was determined that it “should follow the consensus view that has emerged” with regard to refiled complaints and holding such refiling impermissible unless the subsequent proceeding would be appropriate under the Grove Broadcasting standards.
However Complainant contends that this Complaint is
justified under (3) above as new evidence has appeared since the original
decision dismissing the Complaint, namely the dismissal of the civil action
between Mr. Treadway and Complainant. Curiously, Respondent appears to labour under the delusion that this
dismissal is of no account, arguing
that due to the mediated settlement and the panel’s previous denial, the
principles of res judicata should be
enforced.
However
a copy of the Dismissal was
annexed to the Complaint. It clearly brings the civil proceedings to an end and
the Panel sees no reason why those proceedings should prevent it from rendering
a Decision on the present Complaint,
There are six separate domain names involved
in this Complaint.
We shall first consider <autoatlanta.com>, <autoatlanta.net>,
<automobileatlanta.com>, and
<automobileatlanta.net>.
Complainant admits that it has no trademark
registration of either AUTOMOBILE ATLANTA or AUTO ATLANTA, but it does claim common
law rights in both terms. If proved, there is no doubt that this would be
sufficient for a finding of identicality with all four disputed domain names,
as it is customary, when comparing a domain name and a trademark for similarity,
(1) to ignore any top level domain names such as <.com.> or <.net>,
see Abt Elec., Inc. v. Gregory Ricks, FA 904239 (Nat. Arb. Forum March
27, 2007) in which the Panel found that “Respondent’s
<abt.com> domain name is
identical to Complainant’s ABT mark since addition of a generic top-level
domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”);
see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) in which it was found that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar; and
(2) to disregard any
spaces, as these cannot be reproduced in a domain name, see Colgate-Palmolive
Co. v. Charles Kasinga FA 94203 (Nat. Arb. Forum Apr. 7, 2000) in which it
was said that “the absence of a space
between the words is not significant in determining similarity”; see also Di-El Industrie-Electronic GmbH and TR Elec. v. E-Orderdesk D2007-0961
(WIPO Nov. 2, 2007) in which it was said that “the use or absence of punctuation marks such as hyphens does not alter
the fact that the domain name at issue is identical or confusingly similar to
the trademark at issue”.
With regard to Complainant’s alleged common
law rights in AUTOMOBILE ATLANTA or AUTO ATLANTA, the former is obviously the
trading name of Complainant. It was incorporated under that name on January 18,
1979 and, in a sworn Declaration from Mr. George A Hussey IV the founder and
President of Complainant, the claim is made that the name has actually been
used since at least 1978. In addition, photographs were annexed to the
Complaint showing this name – absent the word “Inc.” – on various premises in
1978, April 1981 and January 1984. Annexed to Complainant’s Additional
Submission were copies of 11 advertisements, letters, and press extracts dated
variously between 1984 and 1994 in which the company is invariably referred to
as ‘Automobile Atlanta’. One
advertisement in particular was apparently run throughout 1992, 1993 and 1994.
Annexed to the Complaint were copies of extracts from Complainant’s website
most of which displayed the names ‘Automobile Atlanta’ or ‘AUTOMOBILE ATLANTA’ often
as well as the full name of the company ‘Automobile Atlants, Inc.’
Mr Hussey swears that the name AUTO ATLANTA
has been used since 1978, but the earliest use among the papers attached to the
Complaint is dated 2007. Another example is dated 2008 and there are several
undated examples which give the appearance of being fairly recent, including a
catalog in disc form, several other catalogs and lists of parts and accessories
for a Porsche 914. Of particular note is a picture of Mr. Hussey standing
outside a building on which the name AUTOATLANTA is very prominently displayed.
This evidence is not extensive and much is
dated after the disputed domain names were registered in 1996, 2000 and 2002.
There are, for example, no detailed sales or advertising figures, beyond a
statement in Mr. Hussey’s sworn Declaration that Complainant “generates annual revenues of approximately
$2 million and spends approximately $200,000 per year on advertising, marketing
and business development activities”.
Complainant has used the name AUTOMOBILE
ATLANTA for 30 years and its abbreviation AUTO ATLANTA for at least 3 years and
possibly longer. In Candy
Direct, Inc. v. itsalldirect”u.com FA 514784 (Nat. Arb. Forum Aug.
22, 2005) Complainant had used the name CANDY DIRECT as its business identifier
since 1997 (i.e. 8 years) and the Panel held itself “satisfied that Complainant has rights in that business identifier.”
Of more significance is the fact that Complainant
was involved in an earlier dispute concerning the domain name
<automobileatlanta.com> - Auto.
Atlanta v. Wayne R. Dempsey AF-0173 (eResolution May 28, 2000) and in this,
the Panel found that “it is not disputed
that for a significant period of time, the trade name Automobile Atlanta has
been used and has become a source identifier for the Complainant [Automobile
Atlanta, Inc.]” and “the trade name Automobile Atlanta is a source identifier
for Complainant’s business and that Complainant [Automobile Atlanta, Inc.] has
a common law right in that mark.”
Respondent has argued that Complainant cannot
claim any rights in AUTOMOBILE ATLANTA or AUTO ATLANTA because they are
composed of a descriptive term plus a geographical name. However, in Brisbane City Council v. Warren Bolton
Consulting, D2001-0047 (WIPO May 7, 2001) the Panel, after reviewing a
number of cases involving geographical names, held that the legal authority
of a geographical area does not, as a matter of principle, have an exclusive
right to the name of that area. This Administrative Panel agrees with that view
……the legal authority of a geographical area might, depending on the actual
facts, have a trademark right in the name of that area. Again, this
administrative Panel agrees with that view. Thus, the important issue in a case
such as this one, concerning an unregistered mark that is a geographical
location, is whether the facts of the case show that the unregistered mark is
indeed performing the function of a trademark – that is to say, whether the
unregistered mark is distinguishing the goods or services of the Complainant in
trade from the goods or services of any other person in trade”.
The above passage
was quoted with approval in BAA plc,
Aberdeen Airport Ltd. v. Hashimi, D2002-0717 (WIPO October 21, 2004) and
the Panel concluded that it “provides an
adequate statement of general principle - the rest depends on the facts of this
case.”
Applying the test in the above
<lifeinhighgear.com>
The name LIFE IN HIGH GEAR has been used by
Complainant since 1999 in connection with a publication and examples were
attached to the Complaint. Respondent alleges that it was he who invented “Life
in High Gear” as the new name of one of Complainant’s catalogs and that it is
he who uses the domain name for a blog directed towards other auto enthusiasts.
However given the circumstances under which this domain name and the others
were registered (see below) the Panel has concluded that the name is, and
always was, the property of Complainant and that the phrase and the domain name
are identical (disregarding the spaces and the gTLD). Therefore paragraph 4(a)(i) is proved against <lifeinhighgear.com>.
<dr914.com>
The only use of this name produced by
Complainant is a statement that Mr. Hussey, as a national authority on the
restoration and maintenance of Porsche 914 automobiles, is known throughout the
industry by the nickname ‘Dr. 914’. The phrase also forms part of his e-mail
address.
The Panel has concluded that this is not
sufficient for Complainant to have established common law rights or a secondary
meaning in this phrase. Whether Mr. Hussey could make such a claim is outside
the scope of this Complaint. However as a result of this finding, the Complaint
against this domain name fails and the following comments regarding the other
two parts of paragraph 4(a) refer only to the remaining five of the disputed
domain names.
Under this heading it is well established that a Panel must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 8, 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 paragraph 4(a)(ii) of the Policy 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 September 25, 2006) in which it was said that “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.”.
In the present case, Complainant
has made out a substantial prima facie case,
so the burden falls to Respondent to rebut it which, in the opinion of the
Panel, he has not done.
Respondent was formerly employed by Complainant as was proved by various employment records attached to Mr. Hussey’s Declaration. Also attached to this were copies of bills, corporate checks, and transaction records from an American Express credit card which clearly show that Respondent paid for the registration of the disputed domain names with his corporate credit card and that Complainant paid the resulting bills. Thus, it is clear that Respondent registered all of the disputed domain names on Complainant’s behalf. However rather than registering them in Complainant’s name, he registered them in his own name. Since then they have all been consistently used by Complainant to promote its own internet sales. Indeed this particular activity was initiated and conducted by Respondent, but entirely on Complainant’s behalf.
Respondent cannot therefore be said to have any legitimate rights or interest in any of them.
Furthermore, it was said in Comdata Network, Inc. v. Hugh Lewis FA 97380 (Nat. Arb. Forum July 23, 2001) that a trademark owner’s employee is “certainly aware of the existence of Complainant’s rights” and therefore cannot acquire any rights or legitimate interests in domain names that are identical or confusingly similar to Complainant’s trademarks; and in Savino del Bene inc. v. Hennari D2000-1133 (WIPO Dec. 20, 2000) it was said that a former employee does not acquire rights or legitimate interest in a domain name identical to the former employer’s trademark.
The only one of the disputed domain name which Respondent himself could be said to have used is <lifeinhighgear.com> for, at the site to which this name devolves, he has established a blog. However he has not himself made any use of the other names.
In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum April 25, 2007) it was found that the respondent had no rights or legitimate interests in a domain name under either paragraphs 4(c)(i) or 4(c)(iii) of the Policy where it failed to make any active use of the domain name; and in Nasaco Elec. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) it was found that the respondent had no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent.
In view if the above, the Panel has concluded that Respondent has not made a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy nor made a legitimate noncommercial or fair use of them in accordance with paragraph 4(c)(iii) of the Policy.
It is also apparent that Respondent – Treadway Solutions or Greg
Treadway –
is not commonly known by any of the disputed domain names. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sep. 25, 2003) it was found that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected. Additionally, in Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) it was found that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
The Panel therefore finds that
Respondent is not known by any of the disputed domain names in accordance with
paragraph 4(c)(ii) of the Policy.
The Panel therefore
finds that Respondent has no rights or legitimate interests in any of the
disputed domain names under paragraph 4(a)(ii) of the
Policy.
Respondent has offered to sell all
of the disputed domain names to either Complainant or one of Complainant’s
competitors, as evidenced by: 1) a copy of an e-mail offering to sell all of
the disputed domain names to Complainant for amounts in excess of Respondent’s
out-of-pocket costs to register the disputed domain names; 2) a copy of an
e-mail offering to sell the <autoatlanta.net>, <automobileatlanta.com>,
and <automobileatlanta.net>
domain names to one of Complainant’s competitors; and 3) a screenshot from the
website resolving from the domain name <dr914.com> stating that “this domain name may
be for sale.”
Such activity has been held to prove a lack
of rights or legitimate interest. For example, in Williams-Sonoma,
Inc. v. Fees, FA 937704
(Nat. Arb. Forum April 25, 2007) it was concluded that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
paragraph 4(a)(ii)) of the Policy; while in
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) it was
said that “An attempt by a respondent to
sell a domain name to a complainant who owns a trademark with which the domain
name is confusingly similar for an amount in excess of out-of-pocket costs has
been held to demonstrate a lack of legitimate rights or interests”.
However Respondent’s
attempts to sell the disputed domain names can also constitute evidence of bad faith. See George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat.
Arb. Forum April 25, 2007) which concluded that the respondent’s
registration and use of the <gwbakeries.mobi> domain name was in bad
faith according to paragraph 4(b)(i) of the Policy
where respondent offered the domain name for sale for far more than its
estimated out-of-pocket costs respondent incurred in initially registering the
disputed domain name; and in Bank of Am. Corp. v. Northwest
Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sep. 30,
2003) it was said that “Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
According to
paragraph 4(b)(iii) of the Policy, the registration of
a “domain name primarily for the purpose
of disrupting the business of a competitor” is evidence of bad faith. Respondent disrupted Complainant’s business on or
about April 22, 2009 by taking down all of the content from the website associated
with each of the disputed domain names. Complainant relies upon these websites for its
e-commerce business. The content was eventually restored, but Respondent
disabled them again on or about May 21, 2009 and, according to Complainant, he
has threatened to do so again. The Panel has concluded that these disruptions,
although the disputed domain names were not registered primarily for
this purpose, nevertheless they are an indication of bad faith.
Respondent
claims that his actions in attempting to sell the domain names and his actions
inactivating the domain names, were solely in
retaliation for perceived inordinate delays in his civil litigation against
Complainant and Mr. Hussey, and in retaliation for their failure to comply with
a court order. However whatever the motives, there is no excuse for either
action and both are clear evidence of bad faith. In the opinion of the Panel
they provide ample evidence for a finding of bad faith on the part of the
Respondent under paragraph 4(a)(iii) of the Policy,
and the Panel finds accordingly.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED in respect of the domain names <autoatlanta.com>, <autoatlanta.net>,
<automobileatlanta.com>, <automobileatlanta.net>, and <lifeinhighgear.com>. However
having failed to find that Complainant has any rights in respect of <dr914.com> relief is DENIED in the case of that domain name.
Accordingly, it is Ordered that the <autoatlanta.com>, <autoatlanta.net>, <automobileatlanta.com>, <automobileatlanta.net>, and <lifeinhighgear.com> domain names
be TRANSFERRED from Respondent to Complainant.
David H Tatham, Bruce
E Meyerson and Linda M Byrne
Panelists
Dated: December 18, 2009
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