Meguiar's, Inc.
v. Target Online Inc
Claim Number:
FA0503000435003
PARTIES
Complainant is Meguiar's Inc. (“Complainant”), represented by Richard H. Zaitlen, of Pillsbury Winthrop, LLP, 725 S. Figueroa Street, Suite 2800,
Los Angeles, CA 90017. Respondent is Target Online Inc (“Respondent”),
represented by Herbert M. Korn, 22 Park Place, Third Floor,
Morristown, NJ 07960.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <carcrazy.com>, registered with Dotster.
PANEL
The undersigned 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.
Jeffery M. Samuels, David A. Einhorn
and Steven L. Schwartz as Panelists.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on March 4, 2005; the National
Arbitration Forum received a hard copy of the Complaint on March 7, 2005.
On March 7, 2005, Dotster confirmed by
e-mail to the National Arbitration Forum that the domain name <carcrazy.com> is registered with
Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is
bound by the Dotster 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 8, 2005, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 28, 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@carcrazy.com by e-mail.
A timely Response was received and
determined to be complete on April 18, 2005.
Additional submissions were timely
received from Complainant and from Respondent.
On April 29, 2005
pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffery
M. Samuels, David A. Einhorn and Steven L. Schwartz as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant states that is has federally
registered and incontestable marks in the following which have been in use by
Complainant and/or its predecessor in interest beginning at least as early as
1993:
1.
CAR CRAZY, U.S. Registration No. 1867841, in International class 42 and
U.S. Class 100, covering goods and services relating to retail automotive
stores, registration date December 13, 1994, first use June 10, 1993; and
2. CAR
CRAZY AND DESIGN, U.S. Registration No. 1985210, in
International Class 42 and U.S. classes 100 and 101, covering goods and services
relating to retail automotive stores registration date July 9, 1996, first use
June 10, 1993.
The above marks were acquired by
Complainant by assignment accepted and recorded December 14, 2004 from the
original registrant Richard Tabas on behalf of Car Crazy, Inc., a Pennsylvania
corporation.
Complainant further states that it has
common law rights in and to the CAR CRAZY marks with regard to additional goods
and services, including as evidenced by the following pending applications for
federal registration:
3.
CAR CRAZY, Application Serial No. 76627273, in International Class 41
and U.S. Classes 100, 101, and 107, covering educational and entertainment
programming, including via the Internet, television, radio, and trade shows, relating
to matters of interest to vehicle enthusiasts and hobbyists; and
4.
CAR CRAZY AND DESIGN, Application Serial No. 76627272, also in
International Class 41 and U.S. Classes 100, 101, and 107, and covering
educational and entertainment programming, including via the Internet,
television, radio, and trade shows, relating to matters of interest to vehicle
enthusiasts and hobbyists.
Complainant describes its
business as having begun more than 100 years ago as a furniture polish
laboratory and plant. Complainant states that is has grown to become one of the
world's leading surface care products companies, providing highly specialized
products for almost every conceivable type of surface. From its inception,
Complainant has also been an active participant in the car collecting and
preservation hobby, and markets and sells a leading product line for automotive
care and polishing products.
Complainant’s products are used by professional detailers, body shops,
show-car owners and serious auto care enthusiasts worldwide. Complainant now
manufactures more than 300 different cleaners, polishes, waxes, conditioners,
and protectants for homes, cars, boats, trains and planes, and almost every
other type of surface. Complainant’s
products are marketed and sold worldwide, through outlets in more than 14
different countries
Under the banner of its CAR CRAZY
name and mark, Complainant also provides automotive collector and hobbyist news
and advice. This service is provided on the Internet via Complainant’s
<carcrazycentral.com> web site, in addition to being broadcast nationwide
on television and radio. Complainant
states that its Car Crazy TV program is an award-winning program that
currently appears on the SPEED Channel network and that it also has a
nationally syndicated Car Crazy Radio Show that is broadcast weekly.
Complainant also takes its “Car Crazy” show on the road, presenting at hundreds
of collector shows, convention, and annual tours.
Complainant,
itself and via its predecessor in interest, has been using its CAR CRAZY mark
since at least 1993. Over the years,
and beginning at least as early as 1993, Complainant and its predecessor in
interest have expended substantial amounts of time, effort, and money promoting
its CAR CRAZY mark and its related goods and services. Complainant claims that its CAR CRAZY mark has
become internationally recognized and famous, associated by consumers with the
quality services, information, and products, offered by Complainant in
conjunction with the mark. Complainant has created extensive goodwill in its CAR CRAZY
mark.
Complainant desired to, and continues to
desire to, utilize its CAR CRAZY mark in connection with its educational and
professional services, and to make it easier for hobbyists and potential
customers to locate CAR CRAZY on the Internet. Complainant discovered that Respondent had already registered
the <carcrazy.com> domain and as a result, Complainant was barred
from making such use of its name and mark.
At present, Complainant states that it utilizing an alternative domain <carcrazycentral.com> which it feels is
more user-cumbersome.
Complainant’s
representative attempted to contact Respondent to acquire the <carcrazy.com>
domain and to offer to compensate for what may have been Respondent’s direct
costs, and in the hope of alleviating the need for a costly dispute resolution
proceeding, Respondent was offered a reasonable sum. In reply, Respondent’s representative, President Shelley Brooke,
rejected the offer, stating that Complainant should “do the math” as Respondent
had paid $200 per year when it registered the domain and had last turned down
an offer for $18,500.
Complainant seeks transfer of the domain
based upon its claims of long-standing, incontestable right to exclusive use of
the CAR CRAZY mark and because: (1) Respondent has registered the <carcrazy.com>
domain name which is identical and/or confusingly similar to the CAR CRAZY trademark and service mark
in which Complainant has exclusive rights, (2) Respondent has no rights or
legitimate interests in the <carcrazy.com> domain name, and (3)
Respondent has registered and is using the <carcrazy.com> domain
name in bad faith. Complaint’s three
arguments in support of its requested relief are as follows:
(1) Respondent’s Domain Name Is
Identical and/or Confusingly Similar to Complainant’s Registered Mark.
Complainant
contends that because its CAR CRAZY mark was first used in 1993, and federally
registered by December 1994, Respondent had either actual or constructive
notice of Complainant’s rights when it registered the <carcrazy.com> domain name
March 11, 1996.
Complainant
contends that the disputed domain name is also not merely confusingly similar,
but is identical to the CAR CRAZY mark because respondent has fully
incorporated Complainant’s mark and merely added the generic top-level domain
“.com.” The addition of a generic top-level domain (“.com” “.org” or “.net”) is irrelevant in
determining whether, as here, a domain name is identical to another’s
mark. Finally, the finding of
confusing similarity is also possible, regardless of the relationship between
the goods and services of Complainants and Respondent. The offending <carcrazy.com>
domain name is, therefore, identical and confusingly similar to Complainant’s
registered and common law mark.
(2) Respondent Has No Legitimate Rights Or
Interests In Respect To The <carcrazy.com> Domain Name.
Respondent has
no legitimate rights or interests with respect to the <carcrazy.com>
domain because Respondent: (a) has made no use, or shown any demonstrable
preparation to use, the domain or corresponding name in connection with a bona
fide offering of goods and services; and (b) Respondent is not commonly known
by the domain name. Respondent is not
using the domain to offer any goods or services, bona fide or otherwise. When a user enters the domain name in their
web browser, no active page materializes.
The domain is merely “parked,” operating solely as a means to prevent
Complainant from reflecting its incontestable mark as its domain. There is also no evidence that Respondent
has made use of the domain, bona fide or otherwise, since registration in 1996.
It is further argued that Respondent is
not commonly known by the CAR CRAZY name, mark, or domain name, and could not,
under any circumstances, acquire trademark or service mark rights in and to the
name. Respondent is neither a licensee
of Complainant nor otherwise authorized to use the CAR CRAZY mark. Respondent was not authorized to register
the <carcrazy.com> domain name or any other domain names
incorporating Complainant’s mark or name.
Rather, Respondent is known as and conducts business as
“Target Online.” Therefore, use of a domain name such as in the manner at issue here is
illegitimate.
(3) Respondent Has Registered And Is Using The
<carcrazy.com> Domain Name In Bad Faith.
Complainant argues that despite
Respondent having actual or constructive knowledge of Complainant’s mark and exclusive
rights, it registered a domain identical to Complainant’s mark and merely
“parked it.” The result of Respondent’s
wrongful conduct is that consumers looking for Complainant who take the natural
step of entering its famous CAR CRAZY mark into their web browser followed by
the ubiquitous “.com” are left to believe Complainant has no active web
site. Some may look further, but many
will not, costing Complainant substantial goodwill and customers.
Based on circumstances as described by
Complainant, bad faith can be inferred from Respondent’s registration of the <carcrazy.com>
domain name for one of the following purposes: (1) for the purpose of selling,
renting, or otherwise transferring the domain name to Complainant for valuable
consideration in excess of Respondent’s out-of-pocket costs directly related to
the domain names; (2) to capitalize on the fame of Complainant’s mark; and/or
(3) for the purpose of preventing Complainant from using its trademark in such
domain name, which purpose Respondent is in fact accomplishing by neither using
nor releasing the domain name. Given
Complainant’s exclusive rights, any conceivable use of the domain by Respondent
would presumably be for the purpose of attracting, for commercial gain,
Internet users to the infringing web site by creating a likelihood of confusion
with Complainant’s mark.
It is also argued that Respondent’s
passive holding of the domain name under the circumstances is itself evidence
of bad faith and
especially true when, as here, such passive holding is combined with
Respondent’s actual or constructive knowledge of Complainant’s rights. Such passive holding also demonstrates
Respondent’s lack of any legitimate interest in exploiting the domain for lawful
ends.
According to Complainant, bad faith is
further shown by Respondent’s attempt to obtain an exorbitant sum for sale of
the domain. When contacted by
Complainant’s representative, Respondent rejected Complainant’s reasonable
offer by responding that it had ‘last turned down $18,500’ for the domain. This is evidence that the Respondent
registered the domain name for the purpose of selling it for valuable
consideration in excess of out of pocket costs associated with the domain name.
Finally, bad faith is further presumed
from Respondent’s adoption of a domain name identical to Complainant’s famous
mark. With Complainant’s use dating at least as
far back as 1993, national use and recognition in the industry on television,
radio, and an incontestable federal registration, Respondent’s bad faith is
self evident.
B. Respondent
Respondent describes itself as an
Internet company based in Morristown, New Jersey, incorporated in 1995. Its primary Internet business site is
<target-online.com> which has been doing business since incorporation. Respondent’s business, conducted via the
primary site and others that it owns and operates, focuses on website design,
advanced online production, graphics, marketing and advertising, classified ads
as well as interaction between the residents of local communities with a unique
emphasis on civic information disseminated to the population of Northern New
Jersey and more specifically Morris County, New Jersey.
In addition to the primary site of
<target-online.com> Respondent has created, owns and actively operates
and disseminates on a daily basis, public information on the
<morristown.com> website. This site is a not-for-profit site funded by
Respondent and primarily dedicated to keeping the residents of Morris County,
N.J. abreast of local functions and events such as little league games, local
school sport schedules, church events, home sales, entertainment, classified
ads, restaurant reviews, "local chats" and other civic-minded events
in the area. (See <morristown.com>).
Finally, Respondent has created and operates a number of "teenage
sports" cites that caters to that generation in terms of up to date
events, fashions and trends.
Respondent states that upon entering
the Internet market in the mid 1990's, it designed a business model which included
the registration of numerous “common phrases” and was not aware of Mr. Richard
Tabas' (the original trademark registrant), his auto store in Narberth,
Pennsylvania or of his registered mark, CAR CRAZY. Respondent's business design
and intention was to create an "Internet classified site" for the
immediate geographical area which it states has been done incorporating many of
its initial ideas in <morristown.com>.
In addition to the domain name in
question, <carcrazy.com>, Respondent has registered numerous
domains during the mid-1990's for its business projects including, but not
limited to the following:
a.
<morristown.com>
b.
<parsippany.com>
c.
<morrisCountySports.com>
d.
<morriscountybusiness.com>
e.
<morriscountyclassifieds.com>
f.
<morriscountygaragesale.com>
g.
<nj-classifieds.com>
h.
<dollshop.com>
i.
<oldtrains.com>
j.
<toychest.com>
k.
<xtremecentral.com>
l.
<bladegirlz.com>
m.
<hotrails.com>
n.
<piercedpark.com>
o.
<windchillfactor.com>
p.
<mangledmansion.com>
q.
<ripping.com>
Respondent's position is that the words
"car crazy" are common and generic words put to a descriptive use,
and thus Complainant has no enforceable trademark rights under the UDRP. In
addition, Respondent maintains it has a legitimate interest in the Domain Name
since it developed a business plan for a bona fide use prior to notice of this
dispute, and for that matter, prior to any knowledge of the CAR CRAZY
trademark, initially registered by Richard Tabas in 1994 and assigned to the
Complainant in 2004. The Respondent
also asserts that the Complainant did not own nor use the name prior to the
Respondent's registering the name. Finally, the Respondent argues that it did
not register nor use the disputed name in bad faith and accuses the Complainant
of reverse domain name hijacking.
More specifically Respondent replies to
Complainant’s allegations and affirmatively argues in its own behalf as
follows:
Respondent
rejects Complainant’s allegation that registration of CAR CRAZY on December,
13, 1994 results in an “incontestable mark beginning at least as early at
1993." Complainant only became the owner of the mark on December 14, 2004
upon the USPTO registration assignment of the mark, “CAR CRAZY” from, Car Crazy
Inc., the automotive car care, accessory, multi-gadget retail store in
Narberth, Pennsylvania, owned by Mr. Richard Tabas. It cannot be said,
therefore, that Complainant had expended
substantial amounts of time, effort, and money promoting its CAR CRAZY mark and
its related goods and services and making it nationally and internationally
known and famous. Nor does there appear
to be any evidence that Mr. Tabas expended such efforts in developing the name
either.
Respondent
contends that Complainant did not have any rights or even a remote connection
with the <carcrazy.com> domain name, or for that matter, the trademark, prior to
March 11, 1996, when Respondent registered its domain. It is further argued
that there is no evidence that Mr. Barry Meguiar used the name prior to the
year 2002, when Complainant began broadcasting a TV show called Car Crazy TV.
Rather,
Respondent contends that Complainant’s CAR CRAZY mark did not become
“internationally recognized and famous, associated by consumers with quality
services, information, and products, offered by the Complainant in conjunction
with the mark Complainant has created extensive goodwill in its car crazy
mark,” until after Complainant acquired Mr. Tabas’ trademark by assignment in
2004.
Respondent
opposes Complainant's argument that the latter’s use of the CAR CRAZY mark for
domain name registration purposes should relate back to 1994 when Mr. Tabas
federally registered the name in December 1994. Respondent contends this is a
“bootstrapping” argument in which Complainant is attempting assert prior use of
the trademark name prior to Respondent's integrating it into its business plan
and registering it as a domain.
Furthermore,
Respondent rejects the Complainant’s argument that it has exclusive rights to
the domain because it is not merely confusingly similar, but it identical to
the “CAR CRAZY" mark and fully incorporates Complainant’s mark with the
generic top level domain “.com.”
Rather, Respondent contends that the name is basically a combination of
two ordinary and generic dictionary terms – “car” and “crazy” -- and are
combined for the purposes of classified
advertisements and/or other legitimate business purposes
Respondent contends that its use of <carcrazy.com>
in its business model is a legitimate right or interest based upon the clear
proofs as set forth in the emails and affidavit set forth in the Respondent’s
Exhibits. Respondent contends that so
long as the domain name is part of a business model and was intended and
remains intended to be used in an ongoing business venture, Complainant cannot
prove that Respondent has no legitimate rights or interests in the name.
Respondent argues that it is indisputable that it registered
the <carcrazy.com> domain name long before she was aware of any
trademark by anyone, much less the Complainant. Respondent owns and operates
websites such as <morristown.com>, <bladegirlz.com>,
<hotrails.com>, <piercedpark.com>, <mangledmansion.com>,
<xtremecentral.com>, <parsippany.com>, all of which where
registered to fit into the Respondent's business plan and compares these names
and their uses with that of <carcrazy.com> as being composed of
municipality names or generic, dictionary names.
Respondent
rejects Complainant’s claim that it had "actual or constructive knowledge
of Complainant's mark and exclusive rights . . . and merely parked it," arguing
that there is no proof whatsoever to support this claim. Rather, Respondent
contends that it is evident from the nature of Respondent's business plan and
actual business activities that when registering the <carcrazy.com>
domain name, it did not do so to divert business away from Mr. Tabas’ Narberth,
Pennsylvania "auto parts store" nor register it for the purpose of
resale.
Respondent
states that it had no knowledge whatsoever of Mr. Tabas’ business or
trademark. Consequently, Respondent
cannot be found to have engaged in bad faith registration of Complainant’s mark
if it had never heard of Complainant's mark at the time of the registration.
Complainant
Complainant asserts that Respondent has admitted to
knowledge of the CAR CRAZY trademark at the time of its domain registration;
and that Respondent’s business “plans” show an intent to infringe by marketing
automotive products; and that Respondent has admitted that the domain is
confusingly similar to the mark. Based
upon these “admissions,” Complainant concludes that Respondent has no
legitimate interest in the domain and registered and used the domain in bad
faith.
Complainant also contends that it is
entitled to a heavy presumption of validity of the mark and that Respondent
cannot overcome this presumption.
Furthermore, it states that the use of the name in relationship to
automotive retail stores, care products and industry news and events
contributes to making it suggestive and distinctive and not generic.
Furthermore, Complainant claims that
Respondent has not shown evidence of demonstrable planning, and did not use the
domain until 2003. Then, once use commenced, it was for the competitive purpose
of offering identical and/or confusingly similar goods and services to those of
Complainant. Accordingly, this
demonstrates Respondent’s bad faith and lack of legitimate interests.
Complainant argues, as well, that it is
entitled to the trademark priority date of June 10, 1993, which precedes
Respondent’s domain registration. Complainant also contends that it is entitled
to both the goodwill accumulated prior to obtaining ownership of the
trademark. Complainant also states that
it is entitled to the goodwill and notoriety arising from its own use of the
term “crazy cars” for the years after Mr. Tabas’ registration but prior to
obtaining ownership by way of assignment from Mr. Tabas. Furthermore, Complainant argues that
Respondent has conceded notice of the mark and of Complainant’s nationwide use
prior to obtaining any ownership rights thus constituting at least constructive
if not actual notice.
respondent’s Additional
Submission
Respondent concedes that the domain is identical or
confusingly similar. It goes on to
state, however, the real issues are whether Respondent has legitimate interests
and whether registration and use has been in bad faith.
In addressing the issue of legitimate
interests, Respondent rejects Complainant’s contention that the nature of its
business is the marketing of automotive products thus demonstrating an intent
to infringe on the mark.
Respondent describes its business as a
small Internet business with an emphasis on municipal information to a very
small base with a business plan of enlarging the base to Northern New Jersey
and the entire state. Contrary to
Complainant’s contention, Respondent states that its business is not to sell
automotive products but to sell advertising and runs ads on municipal sites.
Respondent further contends that its lack
of knowledge of Mr. Tabas, Mcguiar or the use of the term car crazy is
legitimate and truthful and that under the circumstances unless one was
familiar with the classic automotive industry, such names would not necessarily
be known.
Respondent points out that Complainant
operates an additional website entitled <carcrazy.net>.
Lastly, Respondent affirms that it has
never sought to sell the domain name registration even when approached by
others including Complainant as further evidence that no bad faith is involved
in its registration and use of the domain.
FINDINGS and discussion
The Panel makes the following findings:
1.
CAR CRAZY, is a trademark registered by Richard Tabas, U.S. Registration
No. 1867841, in International class 42 and U.S. Class 100, covering goods and
services relating to retail automotive stores, registration date December 13,
1994, first use June 10, 1993.
2.
CAR CRAZY AND DESIGN, is a trademark registered by Richard Tabas, U.S.
Registration No. 1985210, in International Class 42 and U.S. classes 100 and
101, covering goods and services relating to retail automotive stores
registration date July 9, 1996, first use June 10, 1993.
3.
<carcrazy.net> was registered through Network
Solutions and later transferred to Dotster, Inc. by Richard Tabas starting on
December 31, 1996.
4.
<carcrazy.com> was registered by Respondent on March
11, 1996.
5.
CAR CRAZY trademark was assigned by Richard Tabas to
Complainant on December 14, 2004.
6.
<carcrazycentral.com> was registered by Complainant on
September 17, 2001.
7.
Complainant has used the term “car crazy” in connection with its
business starting sometime in 2002 prior to obtaining trademark rights in the
mark previously registered by Richard Tabas and subsequent to December 14, 2004
at which time it acquired all rights in the mark by assignment from Richard
Tabas.
8.
Complainant has been long involved in the business of surface care
products initially in the furniture field and now manufactures and markets numerous
cleaners, polishes, waxes and related products nationally and worldwide. Complainant has been active, as well, in the
car collector and preservation hobby field offering a product line of
automotive care and polishing products.
9.
Respondent is an Internet company based in
Morristown, New Jersey incorporated in 1995.
Its primary Internet business site is <target-online.com> which
has been doing business since incorporation.
10.
Respondent’s business, conducted via
the primary site and others that it owns and operates focuses on website
design, advanced online production, graphics, marketing and advertising,
classified ads as well as interaction between the residents of local
communities with an emphasis on civic information disseminated to the population
of Northern New Jersey, and more specifically Morris County, New Jersey.
11.
Respondent also funds and operates a not-for-profit site primarily dedicated to keeping the
residents of Morris County, N.J. abreast of local functions and events such as
little league games, local school sport schedules, church events, home sales,
entertainment, classified ads, restaurant reviews, "local chats" and
other civic-minded events in the area.
12.
Respondent
has also created and operates a number of "teenage sports" sites that
cater to that generation in terms of up to date events, fashions and trends.
13.
Respondent
was not aware of Mr. Richard Tabas' “car crazy trademark nor of his auto store
in Narberth, Pennsylvania.”
14.
Respondent
is not in the business of manufacturing, marketing or selling automotive parts
or supplies including the items manufactured, marketed and sold by Complainant.
15.
Respondent
was not aware of Complainant until the latter contacted it and offered to
purchase Respondent’s domain name at issue.
16.
Respondent registered the domain at issue as part of its overall
business plan but did not actively begin to employ the domain as part of its
classified advertising business until sometime in 2003.
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.
That the disputed domain name is identical or
confusingly similar to its trademark;
2.
That respondent has no rights or legitimate
interest in the domain name; and
3.
The domain name was registered and is being used
in bad faith.
(Policy,
¶¶ 4(a)(i)-(iii).) Complainant bears
the burden of proof as to each element of its claim. (Policy ¶ 4(a).) Each of these
components is discussed below and the Panel’s conclusions provided in the order
above.
Identical or Confusingly
Similar: Policy ¶ 4(a)(i).
Complainant
asserts rights in the CAR CRAZY mark. Complainant’s
predecessor-in-interest registered the mark with the United States Patent and
Trademark Office on December 13, 1994 (Reg. No. 1,867,841). The mark has been used in connection with
retail automobile store services since 1993.
Complainant has established a presumption of rights in the CAR CRAZY
mark as the result of the ownership of the federal registration of the mark
that it obtained by assignment from Richard Tabas. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18,
2001) (finding that successful trademark registration with the United States
Patent and Trademark Office creates a presumption of rights in a mark).
Complainant
asserts that the disputed domain name, <carcrazy.com>, is
identical to Complainant’s CAR CRAZY mark.
The Panel finds that the domain name is identical to the mark; the
addition of the generic top-level domain “.com” is immaterial under Policy ¶
4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a
top-level domain is without legal significance); see also
Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb.
Forum Dec. 6, 2003) (“It has
been established that the addition of a generic top-level domain is irrelevant
when considering whether a domain name is identical or confusingly similar
under the Policy.”). The Panel,
therefore, finds that Complainant has met its burden of proof regarding this
Policy requirement.
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii).
Respondent is
engaged in a legitimate, non-competitive business involving website design, advanced online production, graphics, marketing and
advertising, classified ads as well as interaction between the residents of
local communities with an emphasis on civic information. Respondent
contends that the disputed domain name was registered for purposes related to
these business activities although not implemented until 2003 as part of its
overall business development.
The Panel finds
demonstrable evidence sufficient to conclude that Respondent has a right or
legitimate interest in the domain name.
See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000)
(“Respondent has shown demonstrable preparations to use the domain name in
connection with a bona fide offering of goods or services prior to notice of
the dispute. The fact that Respondent has not yet actually made any use of the
domain name does not undermine the fact that Respondent has shown demonstrable
preparations to use the domain name.”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000)
(finding rights and legitimate interests in the domain name where Respondent
sought to develop a bona fide business use for the domain name); see also Easygroup Ltd v. Easymaterial.com Ltd,
D2000-0711 (WIPO Sept. 7, 2000) (finding that Respondent has demonstrated that
he has a legitimate interest in the domain name where he has produced a
business plan and five letters from independent parties confirming that, prior
to any notice of the dispute, preparations were made to use the domain name).
Complainant
has forcefully argued that the lapse of time between Respondent’s registration
of approximately eight years and its commencement of use should be persuasive
evidence of a passive holding insufficient to establish rights and interests on
Respondent’s part. The Panel believes,
however, that while Respondent’s lack of active use of the domain may give rise
to an evidentiary inference of passive holding, without more evidence that
Respondent has insufficient rights and interests in the domain, such an
inference, standing by itself, does not carry Complainant’s burden. Furthermore, Complainant’s citation to Pac. Inv. Mgmt. Co. LLC v Szabo, FA
95614 (Nat Arb. Forum Oct. 18, 2000) is inapposite. In that case, the respondent failed to respond to the complaint
and the panel decided the case based upon the undisputed evidence submitted in
the complaint. Finally, even if the Panel were to conclude that passive holding
was present here, this would not be dispositive in favor of Complainant’s claim
for transfer in light of our conclusion adverse to Complainant on the third
element of the ICANN Policy. (The domain name was not
registered and is not being used in bad faith.)
Registration and Use in Bad Faith: Policy
¶ 4(a)(iii).
The
Panel finds that Respondent did not violate Policy ¶ 4(b)(i) because Respondent
not only rejected Complainant’s offer, but also previously rejected an even
higher offer. The Panel considers this
admitted fact to support the notion that Respondent never attempted to sell the
domain name registration to anyone, let alone Complainant. Moreover, the Panel has considered the fact
that it was Complainant who initiated discussions to purchase the domain name registration. It may be argued that, under Complainant’s
reasoning, bad faith registration and use could be imputed to any respondent
who rejected even the most extravagant offers regardless of a respondent’s
desire to keep the domain name registration.
This argument, however, has been rejected by many ICANN panels.
See
PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000)
(finding that Respondent did not register the domain names in bad faith where
there is no evidence that Respondent intended to sell the domain name or
disrupt Complainant’s business); see also Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO October 5, 2001) (finding no bad faith where “the Complainant offers
the Respondent far more than the Respondent paid for the disputed domain name
and the Respondent asks for an even larger sum”); see also General Mach. Prod. Co. v. Prime Domains,
FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding it significant that Complainant,
and not Respondent had initiated contact, inquiring about purchasing the domain
name <craftwork.com>, and that this fact tended to weigh against a
finding of bad faith); see also Sumner
v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where
Respondent did not contact Complainant first, but rather, Complainant first
contacted Respondent about purchasing the domain name).
There
is no evidence that Respondent had actual knowledge of the CAR CRAZY mark at the
time it registered the disputed domain name.
“Furthermore it is clear from not only the Respondent’s affidavit, but
the use of common sense that Respondent, when registering the domain name <carcrazy.com>,
did not do so to divert business away from an ‘auto parts store’ in Pa. owned
by the original holder of the mark.”
Response at 8. See Chestnutt v. Tumminelli, D2000-1758
(WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain
name <racegirl.com> where no evidence was presented that Respondent
intended to divert business from Complainant or for any other purpose
prohibited by UDRP Rules); see also Anticybersquatting Consumer
Protection Act, 15 U.S.C. §1125(d)(1)(B)(ii) ("Bad faith intent … shall
not be found in any case in which the court determines that the person believed
and had reasonable grounds to believe that the use of the domain name was a
fair use or otherwise lawful.”).
Respondent’s registration cannot have been in bad faith if, at the time,
it had not heard of Complainant, DK
Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad
faith registration if respondent had not heard of complainant’s mark at time of
registration)
The
Panel rejects Complainant’s argument that knowledge of its mark and its common
law rights in the mark was well known for several years even before it was
assigned the CAR CRAZY mark and registration.
If Complainant had no rights in the mark prior to acquiring it from
Tabas, it has no claim that Respondent’s domain registration was done in bad
faith in violation of such nonexistent rights.
Indeed, for all practical
purposes, it may be said that Complainant did not even exist at the time
because it had no rights in the mark to assert at the time of Respondent’s
domain registration. Aspen Grove,
Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (it is impossible for
Respondent to register a domain name in bad faith if Complainant’s company did
not exist at the time of registration); E-Duction, Inc. v. Zuccarini,
D2000-1369 (WIPO Feb. 5, 2001); Interep Nat’l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).
Complainant
argues that because of Respondent’s wrongful act, “…consumers looking for
Complainant, and who take the natural step of entering the famous CAR CRAZY
mark into their web browser followed by the ubiquitous ‘.com,’ are left to
believe Complainant has no active web site. (Complaint, p. 8) No evidence has been introduced that this
has occurred, however. Nor has any
evidence been introduced that business has been diverted from Complainant to
Respondent by virtue of the domain. In
fact, the evidence shows that the businesses of the two disputants are entirely
different and that Respondent is neither an active competitor nor has it
demonstrated any intention of becoming a competitor.
Complainant
has cited the case of Telstra v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) as precedent for its
requested relief under the circumstances of this case. The Panel finds this case to be inapposite. In that case, unlike this case, the
respondent’s domain did not resolve to a web site or other on-line
presence. Moreover, there the
respondent evaded identification and location.
Finally, in Telstra the
respondent did not file a response to the complaint and the panel accepted the
complainant’s allegations as undisputed.
Complainant
has cited the case of Video Direct
Distribs., Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5,
2000) for the proposition that constructive notice of the domain by virtue of
the trademark registration. While in
some cases, constructive notice can be a factor in awarding a domain transfer,
typically such cases involve additional elements of clear bad faith. Indeed, in Complainant’s cited case, the
respondent’s use of the domain name was held to be confusing and likely to lead
consumers into believing that the complainant is either in the business of
sexually explicit materials or affiliated with that business in some way. Moreover, that case concluded that contrary
to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iv),
the respondent, without any provable or ascertainable business purpose,
registered the domain name <videodirect.com> to attract Internet users to
its website by creating a likelihood of confusion with the complainant’s
name. Such obvious improper intent is
not present in this case.
Complainant’s reliance upon Expressdata Corp. v. MSM Express Data
Servs., FA 94721 (Nat. Arb. Forum June 20, 2000) is also misplaced. In that case, again unlike the facts
presently before the Panel, constructive notice was a factor because of the
unique circumstances: The respondent
was not a legal business entity, had no active web site and no active business;
nor was there any credible evidence that the respondent (owned by a former
employee of the complainant and had registered some 150 other domain names)
ever intended to conduct any business.
Complainant’s
reliance upon Samsonite Corp. v Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) also is
unpersuasive. At the time of
Respondent’s domain registration, Mr. Tabas’ mark was not commonly known as was
the case in Samsonite where the Panel
concluded that registration and use in bad faith were present. There, the
Panel held that the primary purpose for registering the domain name
<samsonite.org> was to disrupt the business of the complainant for the
personal gain of the respondent. Samsonite is also well known for its erudite
discussion of the requirement that bad faith must be found in both the
registration and use of the domain. In the context of that discussion, even if
Respondent’s delayed use of the domain were to be suspect, there can be no
legitimate argument that at the time of its registration there was any improper
conduct nor that Complainant was even in the picture as a potential interested
party to the domain.
Indeed,
the Panel considers that the failure of both Richard Tabas’ and Complainant to
initiate a claim to the domain name for a period of over eight years (or six
years since the Policy was adopted) is relevant in determining whether
Complainant actually thought business was being diverted. See New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum
May 2, 2000) (stating that Complainant’s failure to initiate a suit in over two
years indicated that Complainant did not believe that Respondent intended to
attract customers through confusion); see also Bosco Prod., Inc. v. Bosco email Serv., FA 94828 (Nat. Arb. Forum
June 29, 2000) (“Without determining if the passage of considerable time would
alone bar Complainant from relief in this proceeding, the Panel notes that
Complainant does not explain why it has waited nearly four years to try and
resolve [the domain name dispute]”).
DECISION
Having failed to establish all three
elements required under the ICANN Policy, the Panel concludes that relief shall
be DENIED.
Accordingly, it
is Ordered that the <carcrazy.com> domain name NOT BE TRANSFERRED
from Respondent to Complainant.
Steven L. Schwartz,
Panelist
(Writing for the Majority)
Jeffery M. Samuels, Panelist
Dated: May 20, 2005
Meguiar's, Inc. v. Target Online Inc
Claim Number: FA 435003
Panelist David A. Einhorn
dissenting:
I dissent from the ruling of my
co-panelists that Complainant has failed to establish the requirements of Policy § 4(a)(iii). I believe that the record before this Panel
supports findings of bad faith registration and usage by Respondent.
There is a long line of arbitration
decisions finding that panelists may infer constructive knowledge of federal
registrations existing at the time of registration of a domain, especially when
the domain is identical to Complainant’s mark.
In fact, a case standing for this proposition was decided even as of
yesterday. (See MIPS Techs., Inc. v. Int’l Cyber Bus. Servs., Inc. FA 463134 (Nat.
Arb. Forum May 19, 2005) (“Respondent’s registration of the disputed domain
name, which is identical to Complainant’s mark, suggests that Respondent knew
of Complainant’s rights in the MIP TECHNOLOGIES mark. Additionally, Complainant’s trademark registration on the
Principal Register of the United States Patent and Trademark Office gave
Respondent constructive notice of Complainant’s mark.”)). This is particularly true with respect to
domain disputes between companies in the same field of goods and/or
services. See, SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum,
Jan. 4,, 2001) (“Looking at the totality of the circumstances, the record shows
that Respondent registered domain names that are identical or confusingly
similar to Complainant’s trademarks.
Complainant and Respondent
belong to a group of a relatively small number of companies that offer specific
automobile racing services. Given the
competitive relationship between Complainant and Respondent, the Panel finds
that Respondent was aware of Complainant’s mark before registering the domain
names.”)). Also see, Kelley
Blue Book Co., Inc. v. South EastEnterprise, Inc., Case No. D2004-0499 (WIPO Aug. 23, 2004) (finding
the similarity in services offered by the parties as constituting
circumstantial evidence supporting a finding of bad faith registration and
use).
Respondent in the present case intends
to use the domain for a classified car web site. Complainant’s registration is for retail automobile store
services. Given the competitive
relationship between Complainant’s and Respondent’s services, Respondent should
have been aware of Complainant’s registration(s) before registering its domain
name. Thus, I am of the opinion that
Respondent registered the domain name in bad faith. I am also of the belief that Respondent’s use of the domain name
has been in bad faith.
Respondent’s passive holding of the
domain name for over seven years is itself evidence of both bad faith
registration and use. See Caravan Club v. Muggale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that passive holding of a domain name
permits an inference of registration and use in bad faith).
Further, the fact that Respondent did
not commence preparation for active use of a web site until over seven years
after the registration of the domain name constitutes circumstantial evidence
of bad faith use. Respondent registered
its domain name in March 1996. However,
it did not begin preparation for a web site until September 2003. Significantly, this commencement toward
active activity occurred a mere two months after the assignment of the
registration(s) to Meguiar. Complainant
(Meguiar) has provided documentary evidence of its heavy usage of the
mark. The timing of Respondent’s
commencement of actual preparations to use the mark as a web site immediately
following Meguiar’s apparent increased usage of this mark constitutes further
circumstantial evidence upon which this Panel could have based a finding of bad
faith use.
I concur with my co-panelists that
Complainant has established the requirements of Policy §§ 4(a)(i) and
4(a)(ii). Further, since I also
believe that Complainant has satisfied the requirement of § 4(a)(iii) of the
Policy, I am of the view that Complainant’s request for transfer of the domain
name should have been granted.
David A. Einhorn, Panelist
(Chairperson)
Dated: May 20, 2005
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