Lincolns of Distinction Car Club, Inc. v.
Joseph Detomaso
Claim Number: FA0508000538014
PARTIES
Complainant
is Lincolns of Distinction Car Club,
Inc. (“Complainant”), represented by Scott
M. Rickard, of Stoel Rives LLP, 900 SW Fifth Avenue, Suite 2600, Portland, OR 97204. Respondent is Joseph Detomaso (“Respondent”), 513 Brewster Ave., Lombard, IL
60148.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lincolnsofdistinction.com>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 15, 2005. On August 18, 2005 Complainant amended the Complaint in
response to a letter from the National Arbitration Forum of that same date
specifying certain deficiencies in the Complaint originally filed.
On
August 11, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <lincolnsofdistinction.com>
domain name 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
August 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
8, 2005 by which Respondent could file a Response to the Complaint, as amended,
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@lincolnsofdistinction.com by e-mail.
A
timely Response was received and determined to be complete on September 6, 2005.
A
timely Additional Submission from Complainant was received and determined to be
complete on September 8, 2005. A timely Additional Submission from Respondent
was received and determined to be complete on September 13, 2005.
On September 12, 2005, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a not-for-profit New York incorporated membership organization. It claims to
have acquired, through continuous and extensive advertising and use, common law
rights in the LINCOLNS OF DISTINCTION mark, under which it says it has
provided, since 1999, services to enthusiasts of Lincoln automobiles, namely
information related to Lincoln automobiles, membership benefits and retail
goods. In addition to the sale of memberships (which includes decals bearing
the LINCOLNS OF DISTINCTION logo, membership cards, newsletters, hosted
webspaces, email addresses, access to an exclusive “members only” online forum
and discounts on automotive parts from participating vendors), Complainant
sells clothing (shirts, T-shirts, jackets, hats, bags) and collectibles (teddy
bears, toy trucks, travel mugs, glassware) bearing the LINCOLNS OF DISTINCTION
mark and logo. Complainant registered the domain names <lincolnsclub.org>
and <mark8.org> on February 17, 2003; <lincolnsofdistinction.org>
and <lodcc.org> on March 19, 2003; and <markvii.org> on July 7,
2003.
In
support of its claim of trademark rights, Complainant has provided printouts of
the home page, benefits page, merchandise page and forum index page of its
websites at <mark8.org> and <lincolnsclub.org>.
Respondent
is a former member of Complainant. Complainant claims the disputed domain name,
which Respondent registered on April 15, 2004, is identical to its LINCOLNS OF
DISTINCTION service mark and is identical and confusingly similar to its
<lincolnsofdistinction.org> domain name.
Complainant
says Respondent has no rights to or legitimate interests in the disputed domain
name and that Respondent’s registration and use of the disputed domain name are
in bad faith.
B.
Respondent
Respondent
says although it may appear that the disputed domain name is similar to
Complainant’s website name, LINCOLN is a trademark of the Ford Motor Company
and “OF DISTINCTION” is descriptive. Complainant cannot satisfy the initial
requirement that a mark distinguish the owner’s goods and services from those
of others. A complainant must file concrete evidence demonstrating that it has
invested considerable time, effort and resources to establish an association
between its mark and goods or services. Complainant has not submitted evidence
to establish either fame or strong secondary meaning of its mark such that
consumers are likely to associate <lincolnsofdistinction.com> only
with Complainant.
Respondent
relies on an exchange of messages between directors of Complainant in the days
immediately following his registration of the disputed domain name in which
consideration was given to registering the LINCOLNS OF DISTINCTION mark. The
President wrote:
“I
spoke with a trademark and patent lawyer today. We can still register Lincolns of Distinction as a trademark
since it has been in use by us since 1999.”
The Vice President responded:
“Alexander,
as I said before, YOU MUST IMMEDIATELY put the TM symbol after every use of
“Lincolns of Distinction” and of “LOD” on our web site.
“You
should also add a line to the legal page stating that these are our trademarks
and any use without permission is strictly prohibited.
“As
far as anyone else is concerned these have been there all along!”
Respondent
says this indicates Complainant knew it had no rights to the phrase “Lincolns
of Distinction” but intended to deceive others into thinking it did, since at
the time of registration of the disputed domain name, Complainant’s website did
not bear the “™” symbol nor any claim to ownership of the phrase. Respondent
says he could not reasonably have believed Complainant had trademark rights
when he registered the disputed domain name, since Complainant did not believe
it had rights and needed to perpetuate a deception to establish them.
Respondent
asserts he has rights and legitimate interests in the disputed domain name and
that it was not registered and is not being used in bad faith.
Respondent
seeks denial of the remedy sought by Complainant and a finding of Reverse
Domain Name Hijacking.
C.
Additional Submissions
Complainant
As
to common law rights, Complainant refers to Bibbero
Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000; Aquarius Enters. Inc. v. Pet Expo Online,
FA 96585 (Nat. Arb. Forum Apr. 6, 2001) and Smart Design v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000).
As
to Respondent’s claim that Complainant knew it had no trademark rights,
Complainant says Respondent’s reliance on the words of laymen members of
Complainant’s organization is misplaced.
Complainant
addresses further the issues of legitimacy and bad faith.
Respondent
As
to the proof required of a Complainant in establishing trademark rights,
Respondent relies on Van Vleck Homes,
Inc. v. Kirk, FA 414680 (Nat. Arb. Forum Apr. 1,
2005); Mio, Inc. v. Showplace Publ’ns,
Inc., FA 157296 (Nat. Arb. Forum July 10, 2003); Candy Direct, Inc. v. itsalldirect2u.com, FA 514784 (Nat. Arb. Forum Aug. 22, 2005) and Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001).
Respondent
says the exchange regarding trademark rights was not between “laymen members”
but between officers of Complainant.
Respondent says he did an online
trademark search and found no trademark registration nor did he find any “™”
marks on Complainant’s website at <lincolnsclub.org>.
FINDINGS
Complainant has failed to demonstrate
that it has rights in the trademark or service mark LINCOLNS OF DISTINCTION.
DISCUSSION
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.
The Policy affords protection to those
having common law trademark rights as well as to those having rights in
registered trademarks: Cedar Trade
Assocs., Inc., v. Ricks, FA 93633
(Nat. Arb. Forum Feb. 25, 2000); Bennett
Coleman & Co. Ltd v. Lalwani,
D2000-0014 (WIPO Mar. 11, 2000); SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) and Passion Group Inc. v. Usearch, Inc.,
AF-0250 (eResolution June 9, 2000).
The
well-known trademark, LINCOLN, in relation to automobiles, belongs to the Ford
Motor Company. Accordingly, when that word is coupled by Complainant with the
appended words OF DISTINCTION, the expression LINCOLNS OF DISTINCTION is to be
taken as purely descriptive unless Complainant can show that, through use, it
has become distinctive of its goods or services. Since the corporate name of
Complainant includes the whole of its claimed mark, it is important that any
use of the expression LINCOLNS OF DISTINCTION on which it relies to demonstrate
trademark rights is unequivocally trademark use, not merely use of the
corporate name.
To serve as a trademark, the expression must be used in a manner
so that the public can come to recognize it as an indication of source. Since
the expression is descriptive, Complainant must also show that it has, in fact,
acquired a secondary meaning and has thereby become distinctive as an
indication of a single source, and is not simply viewed by the public as a
description applicable to the goods or services from various sources: Baltimore
Gas and Elec. Co. v. Nat’l Material Supply Co., LLC., D2001-0315 (WIPO
May 17, 2001); British Heart Found. v. Meyer, AF-0957 (eResolution August 22, 2001).
Relevant evidence of secondary meaning includes length and amount
of sales under the mark, the nature and extent of advertising, consumer surveys
and media recognition. Amsec
Enters., L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001); Philatelic.Com v. Jeong, FA
112547 (Nat. Arb. Forum July 24, 2002); Snowboards-for-sale.com, Inc. v. Name Admin.
Inc., D2002-1167 (WIPO Feb.
19, 2003).
Under U.S. trademark law (applicable here since both parties are
in the U.S.), rights in a descriptive term can be found based on “proof of
substantially exclusive and continuous use thereof as a mark by the applicant
in commerce for the five years before the date on which the claim of
distinctiveness is made” 15 U.S.C. 1052.
Complainant asserts it has used the expression LINCOLNS OF DISTINCTION as a mark since 1999. It relies on its assertions and upon
webshots of its 2003 domain name registrations; webshots printed in June 2005
of certain pages of its websites at <mark8.org> and
<lincolnsclub.org>; and (oddly) Whois search results of the disputed
domain name (page 3 and Exhibits A-C of the Complaint, relied upon in this
regard in Complainant’s Supplementary Submission at p.2).
Complainant’s assertions are not evidence. Evidence of domain name
registrations in 2003 and web shots made in 2005 cannot demonstrate use since
1999. There is no evidence, as distinct from unsubstantiated assertion, that
could be argued to be trademark use prior to registration of the disputed domain
name. This is not necessarily fatal to relief under the Policy, since the
prevailing view amongst panelists is that the relevant date at which trademark
rights must be shown to exist is the date of filing the Complaint, not the date
of registration of the domain name. See Valve
Corp. v. ValveNET, Inc., D2005-0038
(WIPO Mar. 9, 2005) and the cases there cited.
Turning to the substance of the evidence, the 2003 domain name
registrations do not establish trademark use. Only one of Complainant’s domain
names, <lincolnsofdistinction.org>, could conceivably be relevant here. Insofar as Complainant claims the
disputed domain name is identical and confusingly similar to that domain name,
it is only where a domain name has been shown by appropriate evidence to have
acquired distinctiveness as a trademark that it may be protected under the
Policy. Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011
(WIPO Jan. 21, 2003). There is no such evidence here.
Some of the webshots in 2005 on which Complainant relies
(Complaint, Exhibit B) show the expression LINCOLNS OF DISTINCTION used upon
merchandise, usually subordinately to other more prominent indicia such as the
Lincoln logo and the words ‘Mark VIII.’ There is no evidence that the
expression LINCOLNS OF DISTINCTION, standing alone, has become distinctive of
Complainant’s goods or services.
Although one June 2005 webshot of a web page (Complaint Exhibit B,
page 1) carries the “™” symbol after the expression ‘Welcome to the Lincolns of
Distinction’ and a footnote asserting ‘Lincolns of Distinction is a trademark
of this organization,’ that page had no such symbol and footnote on April 2,
2004 (Response, Exhibit B). It is clear from the message to the President from
the Vice President posted on the LOD BOD private forum on April 19, 2004 (after
registration of the disputed domain name) that no such symbol or footnote had
yet been adopted (Response, Exhibit A). Accordingly, there is no
evidence that any trademark use has met the five-year standard required under 15 U.S.C. 1052.
Although
the disputed domain name is identical in all relevant respects to the
expression LINCOLNS OF DISTINCTION (the absence of spaces between the words and
the presence of ‘.com’ being inconsequential), this does not avail Complainant
because Complainant has failed to establish trademark or service mark rights.
In
light of this finding, it is unnecessary to address the issues of legitimacy
and bad faith.
Reverse
domain name hijacking
Rule 1 defines reverse domain name hijacking as “using the
Policy in bad faith to attempt to deprive a registered domain-name holder of a
domain name.” See also Rule 15(e). To
prevail on such a claim, a respondent must show either that the complainant
knew of the respondent’s unassailable right or legitimate interest in the
disputed domain name or the clear lack of bad faith registration and use, and
nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO
Oct. 31, 2000); Goldline Int’l v. Gold Line, D2000-1151 (WIPO Jan. 4,
2001); or that the complaint was brought in knowing disregard of the likelihood
that the respondent possessed legitimate interests: Smart Design LLC v.
Hughes, D2000-0993 (WIPO Oct. 18, 2000); or that the complainant knew it
had no rights in the trademark or service mark upon which it relied and
nevertheless brought the complaint in bad faith: Zuckerman v. Peeris, DBIZ2002-00245 (WIPO Aug. 12, 2002); The Queen v. Virtual Countries, Inc.,
D2002-0754 (WIPO Nov. 27, 2002).
Here
Respondent relies on the discussion at the LOD BOD
private forum in the days immediately following registration of the disputed
domain name as showing Complainant knew it did not have any trademark rights.
The discussion at that forum was clearly about seeking to register the mark
based on claimed use since 1999. It does not support Respondent’s claim that
Complainant knew it had no common law rights.
It is not necessary to use the symbol TM nor to assert rights in a
trademark in order to acquire them at common law. Use as a mark until the
public comes to recognize it as such is both necessary and sufficient.
This is a case in which Complainant has simply failed to provide
evidence upon which this Panelist can find that Complainant has a trademark or
service mark, not a case in which there is evidence that Complainant knew it
had no trademark rights. Accordingly a finding of reverse domain name hijacking
is not warranted.
DECISION
Complainant
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: September 24, 2005
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