Holley Performance Products, Inc. v. Tucows.com Co.
Claim Number: FA1007001333239
Complainant is Holley Performance Products, Inc. (“Complainant”), represented by Stephen
L. Sapp, of Locke Lord Bissell & Liddell LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earls.com>, registered with TUCOWS, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010.
On July 2, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <earls.com> domain name is registered with TUCOWS, INC. and that the Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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 email@example.com by e-mail. Also on July 8, 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.
On July 16, 2010, Complainant made a supplemental submission.
On July 28, 2010, within the time to respond, Respondent filed a request to dismiss or suspend the proceedings.
On August 6, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Holley Performance products, Inc. and its related companies
(collectively “Holley”) is in the business of manufacturing and selling, among
other goods, an broad range of high performance automotive products. Holley has manufactured and sold high
performance automotive products in the
Holley’s ownership of the Earl’s marks is evidenced by U.S. Patent and Trademark Office Registrations, Community Trademark Registrations, Australia Trademark Registrations, United Kingdom Trademark Registrations, Japan Trademark Registrations and Hong Kong Trademark Registrations.
Holley’s Internet websites are interactive and customers and potential customers of Holley routinely use these sites to obtain information on the Earl’s products.
As a result of its extensive worldwide marketing efforts and its continuous use of the Earl’s marks for many decades, Holley has developed substantial rights and goodwill in the Earl’s marks and the public has come to associate such marks with Holley as the source of origin of its well regarded Earl’s products.
Respondent is the listed owner of the domain name “EARLS.COM” which is substantially identical to and confusingly similar to the Earl’s marks.
Customers and potential consumers of Holley are likely to be confused, mistaken or deceived to believe that Respondent is in some way sponsored by or affiliated with Holley, all to Holley’s irreparable damage through loss and/or dilution of that part of its good will which is symbolized by the Earl’s marks.
Respondent has not been using the Infringing Domain in connection with a bona fide offering of goods or services. Respondent has been using the Infringing Domain to mislead consumers and potential consumers of Holley to a commercial website which is not affiliated with, nor otherwise sponsored or approved by Holley. This commercial website has historically provided direct links to third-party websites, a number of which have offered aftermarket automotive products directly competitive with Holley’s Earl’s products. Neither Respondent nor the referenced website has any affiliation to Holley.
Respondent cannot demonstrate that it has been commonly known by the Infringing Domain.
Respondent cannot demonstrate a legitimate noncommercial or fair use of the Infringing Domain.
Holley has obtained eight (8) U.S. Federal Registrations and eight (8) foreign trademark registrations internationally for the “EARL’S” designation and variants thereof prior to the date Respondent registered and began using the Infringing Domain. Respondent had at least constructive notice of Holley’s exclusive rights in and to such designation prior to registering and using the Infringing Domain.
Upon learning that the Infringing Domain had been registered and was being used in the above described manner, counsel for Holley made written demand to Respondent on September 22, 2008. The demand requested that Respondent cease and desist from using the Infringing Domain. The response indicated that it would continue to impermissibly hold and use the Infringing Domain without Holley’s authorization or consent.
Registration of the Infringing Domain is part of a pattern of bad faith activity engaged in by Respondent, particularly in view of Tucow.com Co.’s documented history of improperly registering various third-party trademarks and/or service marks as domain names. Respondent has previously been found to have registered and used domain names in bad faith.
Respondent’s repeated pattern of bad faith domain name registrations and use supports a finding of bad faith.
Respondent has used the Infringing Domain to redirect consumers of Holley to commercial third-party websites not affiliated with Holley for presumed economic gain, and without license or consent from Holley.
Respondent has registered the Infringing Domain primarily for the purpose of using it to compete with Holley, without Holley’s approval which circumstances further corroborate a finding of bad faith use and registration.
Complainant filed its original Complaint on or about July 7, 2010, pending verification, compliance review and docketing by the Nation Arbitration Forum. The present UDRP was docketed on July 8, 2010, with a response due from the Respondent on or before Wednesday July 28, 2010. On the same day that this UDRP Complaint was docketed, July 8, 2010, the Respondent filed a civil action against Complainant in the Ontario Superior Court of Justice seeking a declaration that Respondent’s use of the domain name at issue is non-infringing.
Respondent’s request for Dismissal Without Prejudice or, in the alternative, Stay of Proceedings, was filed timely, in lieu of a substantial response on the merits, on Wednesday July 28, 2010.
Pursuant to the Complaint filed with the Nation Arbitration Forum
Complainant agreed to submit to the jurisdiction of the courts in the
jurisdiction in which the Respondent is based for any legal challenges to the
present proceeding. Respondent,
Tucows.Com Co. (“Tucows”), is an
A true and correct copy of the Complaint, Ontario Civil Action No.
CV-10-406431 was attached to the Request for Dismissal. Among the other relief sought in Tucows’
Statement of Claim, Tucows seeks a declaration that Tucows has rights and
legitimate interests in the domain name EARLS.COM and that it neither
registered nor uses the domain name EARLS.COM in bad faith. Accordingly, the court in
Tucows requests that the National Association Forum dismiss or suspend
the current proceeding under UDRP Rule 18(a), until such time as a final
judgment is issued in the pending
C. Additional Submissions
By e-mail on July 16, 2010, Complainant requested that despite the pending civil action, the Panel render a decision in this matter on the merits.
For the reasons set forth below, the Panel finds that the Complaint should be dismissed without prejudice.
On July 8, 2010, Respondent filed a civil action against Complainant in the Ontario Superior Court of Justice seeking a declaration, among other things, that Complainant is not entitled to the transfer of the domain name, EARLS.COM.
Rule 18 of the Policy provides in pertinent part:
Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
Applying Rule 18, the Panel finds this matter should not be decided until the court proceeding is resolved. See AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr. 22, 2002) (finding that Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute until the court proceeding is resolved and therefore, a panel should not rule on a decision when there is a court proceeding pending because no purpose is served by the panel rendering a decision on the merits to transfer the domain name, or have it remain, when a decision regarding the domain name will have no practical consequence); see also Lutton Invs., Inc. v. Darkhorse Distrib., Inc., FA 154142 (Nat. Arb. Forum June 4, 2003) (stating that “[t]he pending arbitration between the parties to this dispute, touching on matters directly relevant to the resolution of a claim under the UDRP, justifies terminating the present administrative proceeding” and dismissing the complaint without prejudice).
Accordingly, the Panel orders that the Complaint is DISMISSED without prejudice to Complainant bringing a further proceeding in the event the pending court action does not resolve the dispute over the domain name.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 19, 2010
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