NovaCopy, Inc. c/o Darren Metz v. MBM c/o
Jerry Beaird
Claim Number: FA0502000428839
PARTIES
Complainant
is NovaCopy, Inc. c/o Darren Metz (“Complainant”), 3026 Owen Drive, Suite 109,
Nashville, TN 37013. Respondent is MBM c/o Jerry Beaird (“Respondent”),
620 NW Broad St., Murfreesboro, TN 37130.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <novacopy.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
R.
Glen Ayers served as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 22, 2005.
On
February 23, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <novacopy.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 22,
2005 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@novacopy.com by e-mail.
A
timely Response was received and determined to be complete on March 21, 2005.
Additional
Submissions were received: Complainant filed a “Response to Response;” Respondent
filed an untitled letter; Complainant added a letter (e-mail) on March 25,
2005. The Panelist will consider all of
these documents in part because both parties appear without counsel. However, consideration of these documents is
also necessary as pointed out below.
On March 29, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed R. Glen Ayers, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
NovaCopy, Inc., an entity apparently owned and operated by Darren Metz, asserts
that MBM is using the name “NovaCopy” in a domain name, <novacopy.com>. Complainant asserts that “NovaCopy” is the
name of its company, incorporated in Tennessee in 1999. Complainant asserts that “‘NovaCopy’ is used
to represent services and goods we offer in selling office equipment to businesses.” Complainant asserts that MBM is using its
name to market to the same target customers and “piggyback” on Complainant’s
advertising.
Complainant goes on to assert that MBM has no rights
in, or other reasons for the use of, the word “NovaCopy.” Complainant asserts that “MBM is a clearly
defined competitor in our local market.”
Complainant goes on to assert that MBM is not known by any other names
other than MBM.
Complainant then asserts that “MBM registered the .
. . domain name to attract customers” by creating confusion between Complainant
and Respondent.
B.
Respondent
Respondent
filed a Response admitting use of <novacopy.com>
in order to promote business. Respondent makes some references to a Paul
Whittemore of Canada and alleges that he is the trademark holder of the word
“NovaCopy.” Respondent indicates that
MBM, or Murfreesboro Business Machines Inc., which apparently is a Tenneessee
corporation, hopes to use the domain name in dispute “to promote products
currently under development.”
C.
Additional Submissions
In its Response to Response, Complainant
asserts a pattern of conduct by MBM, showing that MBM has registered domain
names of other competing businesses in the area. Complainant goes on to assert that it has contacted Paul
Whittemore of Canada and determined that Mr. Whittemore has no trademarks.
Most
importantly, however, in the Response to Response, Complainant asserts and
provides evidence that it has applied for a trademark with the U.S. Patent and
Trademark Office. The trademark applied
for is, naturally, “NovaCopy.” The
Response to Response also includes emails with Jerry Beaird of MBM.
Respondent
then filed a letter discussing his relationship with Mr. Whittemore, the
Canadian citizen.
Finally,
Complainant responded and inserted a final supplemental pleading alleging that
Respondent has not been truthful about his relationship with Mr. Whittemore,
the Canadian citizen.
FINDINGS
The Panel finds, based upon the Response
to Response, that there is a trademark held by Complainant. Complainant does not enunciate a right to a
trademark ownership claim (or if it intended to do so, does not do so clearly
in the Complaint itself). However, the
Complainant has shown that it has filed a trademark application for the word
“NovaCopy” with the U.S. Patent and Trademark Office. This means that there is a trademark identical or confusingly
similar to the domain name thus meeting the first prong of the ICANN test. See generally, Royal Caribbean
Cruises Ltd. v. Gold Anchor Serv., D2003-0443 (WIPO July 17, 2003) (finding
rights in a trademark when Complainant filed an application with the United
States Patent and Trademark Office and Notice of Allowance had been granted); see
also, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant’s trademark or
service mark be registered by a government authority or agency for such rights
to exist; rights in the mark can be established by pending trademark
applications).
It is also clear from the pleadings as
filed that that Respondent, MBM, has no rights in the name. The Panel finds that the minimal
justification offered concerning acquisition of some sort of rights in the name
from a Canadian citizen are simply not sufficient to show that Respondent has
any rights or legitimate interests in the domain name. Further, it does not appear that Respondent
has ever used the domain name for any legitimate offering of goods or services.
This brings up the question of bad
faith. Given the evidence set forth in
Complainant’s pleadings, which is not contradicted by Respondent, Respondent is
certainly attempting to utilize a domain name that is identical to a trademark
that is the subject of a pending patent and application for a trademark in an
attempt to divert customers from Complainant to Respondent. Respondent admits as much. Further, Complainant has provided
uncontradicted evidence that Respondent has registered the name of another
competitor as a domain name.
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.
Complainant has
not provided any evidence that it holds a registration of the “NovaCopy” mark
with a government authority, but it has provided evidence that it has applied
to register “NovaCopy” as a mark. The
Policy does not require registration of a mark for Complainant to claim rights
to its mark under Policy ¶ 4(a)(i). See
SeekAmerica
Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000); see
also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does
not require that a trademark be registered by a governmental authority for such
rights to exist.”).
Complainant contends that its “NovaCopy”
mark is the name of its company, which was incorporated in Tennessee in
1999. Furthermore, Complainant contends
that it uses the mark in association with its business of selling office
equipment to businesses. The
Complainant has established common law rights in its mark through secondary
meaning. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it [Complainant] has acquired rights under the common law.”); see also Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (finding that Complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com> domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark).
Complainant asserts that the <novacopy.com> domain name registered by Respondent is
identical to Complainant’s “NovaCopy” mark because the domain name differs from
Complainant’s mark only with the addition of the generic top-level domain
(gTLD) “.com.” Adding a gTLD to
Complainant’s mark is irrelevant to determining whether the domain name is
identical to the mark pursuant to Policy ¶ 4(a)(i). See Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal significance since use of a
gTLD is required of domain name registrants.").
Complainant argues
that Respondent is not known by any other names besides MBM and does not
otherwise use the “NovaCopy” mark or the <novacopy.com> domain name except for its
website. Respondent is not commonly
known by the disputed domain name, and Respondent, therefore, lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a Respondent
does not have rights in a domain name when the respondent is not known by the
mark).
Furthermore,
Complainant contends that Respondent is a “clearly defined” competitor of
Complainant and is using the <novacopy.com> domain name to
promote Respondent’s competing products and services to the same target
market. Respondent’s use of a domain
name identical to the business name and mark of one of its competitors, to
market competing goods and services, is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Clear Channel
Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2,
2003) (finding that Respondent, as a competitor of Complainant, had no rights
or legitimate interests in a domain name that utilized Complainant’s mark for
its competing website); see also Avery Dennison Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that Respondent had no rights or legitimate interests in the disputed domain
name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant).
Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name, it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name).
Complainant
argues that Respondent is using the <novacopy.com>
domain name to attract customers
and generate sales, knowing that Complainant advertises frequently on local
radio stations and has received a large amount of press coverage. Certainly, Respondent is using the domain
name to divert, for commercial gain, Internet users interested in locating
Complainant’s goods and services online to Respondent’s website by causing a
likelihood of confusion with Complainant’s “NovaCopy” mark; this is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
Respondent’s use of the <saflock.com> domain name to offer goods
competing with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name, evidence of bad faith registration and use pursuant
to Policy 4(b)(iv)); see also TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally attract users to a direct competitor of Complainant); see
also Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where
Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
Complainant’s
evidence shows that it is in the business of offering and selling office
equipment to businesses and that Respondent is a “clearly defined competitor in
our local market.” Respondent is using
Complainant’s mark within its domain name to divert business from Complainant
to Respondent’s competing business and this constitutes diversion under the
Policy and is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business).
DECISION
Having
established all three elements required under the ICANN Policy, the Panelist
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <novacopy.com>
domain name be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR., Panelist
DATED: April 12, 2005
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