NATIONAL ARBITRATION FORUM
DECISION
Arizona State
Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV
Claim Number: FA1003001315658
PARTIES
Complainant is Arizona State Trailer Sales, Inc. d/b/a
Little Dealer Little Prices RV ("Complainant"), represented by
Joseph J. Weissman, of Johnson, Pope, Bokor, Ruppel & Burns,
LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue
is <littledealerrv.com>, registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he
has acted independently and impartially and to the best of his knowledge has no
known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum electronically on March 25, 2010.
On March
29, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the <littledealerrv.com> domain name is registered with
Godaddy.com, Inc. and that the Respondent is the current registrant of the
name. 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 March 31, 2010, the Forum served the Complaint and
all Annexes, including a Written Notice of the Complaint, setting a deadline of
April 20, 2010 by which Respondent could file a Response to the Complaint, via
e-mail to all entities and persons listed on Respondent's registration as
technical, administrative, and billing contacts, and to
postmaster@littledealerrv.com. Also on March 31, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a
Response, was transmitted to Respondent via post and fax, to
all entities and persons listed on Respondent's registration as technical,
administrative and billing contacts.
A
timely Response was received and determined to be complete on April 19, 2010.
An Additional Submission from Complainant was received
and determined to be complete on April 23, 2010.
An
Additional Submission from Respondent was received and determined to be
complete on April 28, 2010.
On April
23, 2010, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed David A. Einhom
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant's Contentions
(1)
Respondent's
domain name <littledealerrv.com> is confusingly similar to
Complainant's LITTLE DEALER LITTLE PRICES registered mark, and Complainant's
LITTLE DEARLER LITTLE PRICES RV and LITTLE DEALER common law marks.
(2)
Respondent
does not have any rights or legitimate interests in this domain name
(3)
The
domain name was reissued and is being used in bad faith.
B. Respondent's Contentions
Respondent registered the domain name before
Complainant registered the LITTLE DEALER LITTLE PRICES mark.
C. Additional Submissions
The additional submissions of Complainant and
Respondent do not address any additional issues relevant to the decision
rendered herein.
DISCUSSION AND FINDINGS
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 to
a Mark in Which Complainant Has Rights
Paragraph 4(a)(i) of the Policy
requires Complainant to show that Respondent's domain name is identical or
confusingly similar to Complainant's marks. This provision necessarily implies
that Complainant's rights must predate the registration of Registrant's domain
name. Expert Computer Inc. v. Name Delegation c/o Domain
Administrator, FA 787937 (Nat. Arb. Forum Oct. 24, 2006). Respondent
registered the domain name <littledealerrv.com> on April 19, 2006,
which is prior to both Complainant's filing and registration dates of its
trademark LITTLE DEALER LITTLE PRICES. As Complainant has not shown that its
rights pre-date the registration of Registrant's domain name, Complainant has
not satisfied paragraph 4(a)(i) of the Policy. (It
should further be noted that even if Complainant's registration could be
considered, it is doubtful that Respondent's use of only two of the four words
in Complainant's mark as a portion of its domain name would create confusing
similarity, particularly since the term LITTLE PRICES constitutes a significant
portion of the mark).
To the extent that Complainant's Complaint alleges common
law rights to the mark LITTLE DEALER, it should be noted that Complainant has
not provided evidence that said mark has acquired secondary meaning.
Complainant has only made the bare allegation that it is known as "little
dealer". Neither does Complainant's mere use of this term as a domain
name, i.e., <littledealer.com>, confer upon it any protectable rights
under the Policy. Absent proof of secondary meaning, this Panel cannot conclude
that Complainant has any protectable common law rights to the mark LITTLE
DEALER. DotNetNuke Corporation v. Namebubble, LLC, FA
1180949 (Nat. Arb. Forum June 18, 2008)(holding
in favor of Respondent because Complainant had not provided evidence to
establish secondary meaning). See also, United States Fire Arms
Manufacturing Company v. Salvia Corporation, FA 612350 (Nat. Arb. Forum
Feb. 1, 2006)("The type of evidence generally required to support a
finding of common law rights in a mark includes business sales figures,
revenue, advertising expenditures, number of consumers served, and evidence
that there is a strong identification of the mark with Complainant's goods or
services").
Because
the Panel has determined that Complainant has not satisfied this requirement of
Policy 4(a)(1), there is no need to determine whether Respondent has rights or legitimate
interests in the domain name, or whether Respondent registered or used the
domain name in bad faith.
DECISION
Having
failed to establish the first element required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Accordingly,
it is Ordered that the <littledealerrv.com> domain name remain
registered to Respondent.
David A. Einhorn,
Panelist
Dated: May 7, 2010
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