Dealer Technology Group, LLC v. Mike Goodwin
Claim Number: FA1202001428506
Complainant is Dealer Technology Group, LLC (“Complainant”), represented by Jeffrey E. DiTolla of DiTolla Law Firm, Colorado, USA. Respondent is Mike Goodwin (“Respondent”), represented by Michael M. Bajalia, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dealerlogicsystems.com> (“the Domain Name”), registered with Go Daddy.
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.
Alan L Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 21, 2012.
On February 8, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@dealerlogicsystems.com. Also on February 28, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 by the National Arbitration Forum on March 19, 2012.
On March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant says the Domain Name is confusingly similar to its United States federally registered DEALER LOGIX trademark No.78656502, registered on March 25, 2008, upon application filed on June 22, 2005, for use with:
“Computer software for use in the marketing, promotion and sale of services, accessories, and financial and insurance products by automotive, motorcycle, marine, aviation and recreational vehicle dealerships, repair shops and accessory sellers”.
The Domain Name is also confusingly similar to Complainant’s domain name <dealerlogix.com>, registered on December 4, 2003.
The Domain Name was registered on December 6, 2010. The similarity between the names, and the likelihood that the consuming public would confuse them, is self-evident. Respondent is in the same business as Complainant, namely selling computer software to automotive, motorcycle, marine, aviation and recreational vehicle dealerships. Respondent should be considered as having no rights or any legitimate interest in the Domain Name, because Respondent’s business activities under the Domain Name constitute trademark infringement under federal law. Complainant had been selling computer software to automobile and other vehicle dealers under its registered federal trademark before Respondent began doing the same under a confusingly similar domain name. By federal law, this creates prima facie evidence to Complainant’s ownership of the mark:
“A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” 15 U.S.C. 1057(b).
As to bad faith, Complainant says this is clearly a case of bad faith on the part of Respondent. Section 4(b) of the Policy describes which circumstances may be evidence of registration and use of a domain name in bad faith. Sections 4(b)(iii) and (iv) read as follows:
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Respondent’s business activities are described by both of these sections. Respondent has intentionally obtained a domain name which was similar to Complainant, and it has entered a business with a name confusingly similar to Complainant’s registered trademark. The only reason for Respondent to do this is to intentionally seek to disrupt Complainant’s business and to attract customers, for commercial gain, that had been seeking the services of Complainant but were confused into doing business with Respondent.
B. Respondent
Respondent says he incorporated his company under the name RV Logic, Inc., in January, 2003 and has been in business since before Complainant registered its domain name <dealerlogix.com>. Initially, the RV Logic product was a dealer management software product specifically for recreational dealerships. However, in 2007, the RV Logic software became certified by QuickBooks as a Gold Certified System. This led to Respondent’s software product becoming more publicly known, and Respondent began to receive enquiries not merely from recreational vehicle dealers but also from automobile dealers, heavy equipment dealers, boat/marine dealers and power sports dealers, most of whom already use QuickBooks accounting software. As a result of these dealer enquiries, Respondent determined that it should change the name of its product to a more general name that properly identified its software product as one available to any “dealer”, not just recreational dealers. It was, however, critical to Respondent’s business that the new name continue to use the word “logic”, as that word had become well known by its current customers. In 2010, Respondent settled upon the name “Dealer Logic” and shortly thereafter obtained the Domain Name <dealerlogicsystems.com>.
Respondent says there is no indication whatsoever that Respondent selected the Domain Name to benefit financially from a name that is confusingly similar to Complainant’s. Respondent had been in business before Complainant. A comparison of the parties’ websites shows they do not offer similar products and there could be no genuine confusion. Respondent’s software is a complete operating system for the management of dealerships, whereas Complainant’s is focused upon the general public’s experience in dealer service departments.
To suggest that Respondent has no rights or legitimate interest in the Domain Name is a stretch. Respondent used the word “logic” in its name since inception in 2003. In 2010, it simply changed the word “RV” to “dealer”. According to Complainant’s trademark registration, “no claim is made to the exclusive use of “dealer” apart from the mark as shown”. Thus it can be assumed Complainant does not challenge Respondent’s right to use the word “dealer”. The remaining word “logic” is a commonly used word in many businesses and Complainant has shown no right to the exclusive use of that word. Its trademark registration gives it no exclusive right to use the word “logic”.
It is clear that before any notice to Respondent of this dispute, Respondent had already been using the Domain Name and a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Additionally, none of the circumstances set out in the Policy, section 4(b), are present here.
Complainant has failed to establish all three elements necessary to entitle it to relief under the Policy.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Paragraph 15(a) of 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."
Complainant clearly has rights in its registered trademark DEALER LOGIX. The Domain Name <dealerlogicsystems.com> is not identical to that mark. In determining whether or not it is confusingly similar, the specific top level of the Domain Name “.com” is irrelevant: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001); Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. v. NABR, D2001-1480 (WIPO Mar. 26, 2002) and Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001). See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar. 31, 2000).
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be:
“Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Trevenio, D2007‑0648 (WIPO July 11, 2007).
Numerous UDRP decisions have found confusing similarity where a domain name was visually different, but phonetically identical to a Complainant’s trademark and where any additional words do not distinguish the domain name from the mark: DreamWorks, L.L.C. v. Sequence Media, LLC, D2003-0219 (WIPO May 29, 2003) (finding <dreamwerxentertainment.com> confusingly similar to DREAMWORKS); Medtronic, Inc. v. gotdomains4sale.com, D2001-1033 (WIPO Oct. 29, 2001) (holding <medtronixs.com> confusingly similar to MEDTRONIC).
Having regard to all of the above, the Panel finds that the Domain Name is confusingly similar to Complainant’s mark.
Complainant bears the onus of proof of this element, as it does with the other elements. However, since this element requires proof of the absence of rights or legitimate interests, once a complainant establishes a prima facie case against a respondent, the burden shifts to the respondent to provide concrete evidence of its rights or legitimate interests under paragraph 4(c) of the Policy: Cassava Enters. Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
Complainant has shown that Respondent acquired the confusingly similar Domain Name after Complainant obtained its federally registered trademark and that Respondent is in the same business as Complainant, namely selling computer software to automotive, motorcycle, marine, aviation and recreational vehicle dealerships. These circumstances suffice to establish a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of Respondent.
Although Complainant asserts that Respondent is infringing Complainant’s trademark, that issue is not appropriate for resolution in this Administrative Proceeding:
“… the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) …” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy submitted to the ICANN Board at its meeting on October 24, 1999, para. 4.1(c).
In any such proceeding, a court would no doubt have to decide whether the Domain Name is a reproduction, counterfeit, copy, or colorable imitation of Complainant’s mark: 15 USC § 1114(1)(a).
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests in the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”
In the absence of evidence of any communication between the parties prior to the filing of the Complaint, it appears Respondent received notice of this dispute in or about February 2012.
Complainant’s rights are in the mark DEALER LOGIX as a whole, since the common word “dealer” has been disclaimed, leaving anyone free to use that word in relation to the supply of software to dealerships. The spelling of the word “logix” is an important factor in the ability of the trademark to distinguish Complainant’s goods and services from those of others who may wish to use the word “dealer” and the equally common word “logic” in connection with similar goods and services.
Paragraph 4(c)(i) of the Policy contemplates that a domain name registrant may have a right or legitimate interest in a domain name that is identical or confusingly similar to the trademark of another, so long as the registrant is acting bona fide. In these circumstances the risk of confusion must be accepted:
“In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action” Hornsby Building Information Centre v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229, citing Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 43, per Lord Simonds: “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be”.
Respondent has shown that, under the name “RV Logic, Inc.” it has been in the business of supplying software to recreational vehicle dealers since 2003. Because its software became attractive to a wider range of dealers, Respondent decided to change “RV” to “dealer” and, in 2010, registered the Domain Name <dealerlogicsystems.com>. Hence, Respondent has been using the Domain Name to offer goods or services to dealers before any notice of this dispute.
The critical issue in this case is whether, following the adoption of the Domain Name, Respondent’s offering of goods or services to dealers has been bona fide. This involves determining whether or not Respondent, in adopting the Domain Name, intended to trade off the reputation of Complainant’s mark, since use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Ciccone v. Parisi, D2000‑0847 (WIPO Oct. 12, 2000).
Complainant does not claim that its mark is famous. That it is distinctive is established by its registration on the Principal Register of the USPTO.
Complainant says, in effect, that to trade off the reputation of Complainant’s trademark was the only reason for Respondent to adopt the Domain Name. Respondent puts forward a different, apparently innocent reason: he wished to adopt a name reflecting the wider appeal of his existing software than was conveyed by the name “RV Logic”. Whilst Respondent says “there is no indication” that he selected the Domain Name to benefit financially from a name that is confusingly similar to Complainant’s, Respondent does not explicitly deny being aware of Complainant or its mark when he chose the Domain Name. One would expect traders in the same market to be aware of each other and one would expect Respondent to have come across Complainant’s domain name <dealerlogix.com> when choosing his own.
The Panel concludes that the reason put forward by Respondent for his choice of the Domain Name is plausible and that, even had he been aware of Complainant and its trademark, Respondent could reasonably have regarded the Domain Name <dealerlogicsystems.com> as descriptive of the goods or services Respondent intended to offer and had previously offered to dealers. Accordingly, the Panel is not prepared to find that Respondent intended to trade off the reputation of Complainant’s mark.
It follows that Respondent has succeeded in showing that, before any notice to Respondent of the dispute, he used the Domain Name in connection with a bona fide offering of goods or services. Accordingly, Complainant has failed to establish this element.
For the reasons set out above, the Panel finds that Complainant has not established that Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor nor that, by using the Domain Name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. Nor has Complainant established any other basis for a finding that the Domain Name was registered and is being used in bad faith.
Complainant has failed to establish this element.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: April 3, 2012
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