National Arbitration Forum

 

DECISION

 

Coppertown Drive-Thru Systems, LLC v. R. Snowden

Claim Number: FA0605000715089

 

PARTIES

Complainant is Coppertown Drive-Thru Systems, LLC (“Complainant”), represented by Michael C. Cesarano, of Akerman Senterfitt, One S.E. 3rd Avenue, 28th Floor, Miami, FL 33131-1714.  Respondent is R. Snowden (“Respondent”).

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <coppertown.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.

 

Clive Elliott as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 26, 2006.

 

On May 26, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <coppertown.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 June 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 28, 2006 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@coppertown.com by e-mail.

 

A timely Response was received and determined to be complete on June 28, 2006.

 

On July 6, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.

 

An Additional Submission was submitted by Complainant on July 6, 2006 and was determined to be deficient.  The Panel has chosen to not consider this Additional Submission in its Decision.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant owns and has been using its trademark COPPERTOWN since at least as early as December 2004 to market and license "turn-key" specialty coffee drive-thru businesses throughout the United States.  Complainant owns a domain name <coppertown.biz> and uses that web site to promote its business.

Complainant states that Respondent is the registrant of the domain name <coppertown.com> and that Respondent has leased, sold or otherwise made the domain name available to Java Jo'z Coffee & More, LLC ("Java Jo'z"). 

Complainant submits that the domain name, <coppertown.com>, is identical and or confusingly similar to Complainant’s registered mark, COPPERTOWN, and its domain name, <coppertown.biz>, and is Respondent’s domain name likely to cause confusion, deception, or mistake amongst members of the public who may believe that Java Jo'z' web site is affiliated with, sponsored or approved by, or operated under license from Complainant. 

Complainant further states that neither Respondent nor Java Jo'z can show the use of, or preparations to use, the domain name prior to having actual knowledge of Complainant's prior acquisition and ownership of the mark COPPERTOWN, nor have they applied for a trademark registration for COPPERTOWN.

It is asserted that Java Jo'z is using Respondent's <coppertown.com> domain name to engage in a practice designed and intended to disrupt and disparage Complainants' business.  Namely, Respondent posts on the <coppertown.com> web site a copy of a lawsuit drafted and filed by Java Jo'z in the Circuit Court for the First Judicial Circuit in Okaloosa County, Florida.  In that Lawsuit Java Jo'z alleges that Complainant is infringing Java Jo'z’s trademark rights in the descriptive words "A Business You Can Be Proud to Own."  Complainant points out that it is currently defending the claim and says Java Jo'z’s lawsuit has nothing whatsoever to do with Complainant's COPPERTOWN trademark, and ownership of the COPPERTOWN trademark is not an issue.

 

Complainant states that the use of the domain name <coppertown.com> for the purpose of advertising a lawsuit against Complainant is causing irreparable injury to Complainant’s reputation and goodwill.

Finally, Complainant states that materials posted on Respondent's web site discourage prospective purchasers from doing business with Complainant, tarnish Complainant's business reputation, and direct prospective purchasers' attention to Java Jo'z, a competing specialty coffee drive-thru businesses.

 

B. Respondent

Respondent admits that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

However, Respondent states that it should be considered as having rights or legitimate interests with respect to the disputed domain name since Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent requests that the remedy sought herein be denied.  In the alternative, Respondent requests that this UDRP proceeding be terminated in its entirety and the matter resolved through pending litigation between the parties.  In the further alternative, the Respondent requests that the UDRP matter be suspended pending determination of the pending litigation.

Respondent says in support of this position that after several conversations, Complainant admitted copying material from Java Jo’z and promised that it would immediately remove the material from its website.  Respondent expected Complainant to immediately correct Complainant’s website.

Respondent states that Complainant’s webmaster was highly agitated about the fact that Respondent’s materials were being used verbatim and stated he (the webmaster) was going to “kill the website: titled www.coppertown.biz immediately”.

Respondent notes that he purchased <coppertown.com> for the sum of $1,870.00 and that he uses the domain name to exercise his first amendment right to publish the public record of the filed lawsuit.

Respondent says that he researched the trademark database before purchasing the <coppertown.com> domain name and found no registration nor did he find any such registration in the state of Oregon trademark database.  Respondent accordingly purchased the domain for the purpose stated above.

Respondent states that it is his express goal to keep <coppertown.com>  until such time that there is a purchase of the name from him that is agreeable and he considers that he has been compensated properly for the materials that Complainant used and plagiarized without his knowledge or permission.

 

C. Additional Submissions

 

None applicable

 

FINDINGS

Having considered the Complaint, the Panel finds that:

 

(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.

 

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.

 

Jurisdiction

Before considering the grounds it is necessary to deal with the preliminary issue of jurisdiction.

Respondent argues that the current dispute is outside the scope of the Policy, because Respondent has filed a lawsuit against Complainant in Florida state court for tortious interference with business relationships, trademark infringement, unfair competition and civil conspiracy.  Respondent claims that the case has been removed to Federal District Court in Florida and that Respondent is currently awaiting a decision on a motion to remand the case back to state court.  Respondent requests that, in accordance with Rule 18 of the Policy, this proceeding be “terminated in its entirety” and be decided by a court of law in conjunction with the issues of Respondent’s lawsuit.  Alternatively, Respondent asks that the Panel suspend this proceeding until the lawsuit is settled.  The Panel may decide, under Rule 18 of the Policy, that it is best not to proceed with this matter at the present time and instead have the parties either litigate the dispute along with the other issues in a court of law or have Complainant wait until the outcome of the litigation to bring this domain name dispute. 

 

On the other hand, Complainant asserts that this Complaint involves issues completely unrelated to the lawsuit.  Complainant claims that the suit involves alleged trademark infringement of Respondent’s marks, whereas the current domain name dispute deals with Complainant’s COPPERTOWN mark.  Complainant further claims that the lawsuit does not involve the <coppertown.com> domain name in any way. 

The Panel is of the view that the court proceeding involves issues separate and distinct from the current domain name dispute and the current dispute was brought by Complainant, whereas the lawsuit was brought by Respondent.  See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties’ respective trademark rights in federal court); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum Apr. 30, 2002) (deciding to proceed despite the complainant filing suit in federal court for trademark and service mark infringement).

On this basis the Panel considers that it has jurisdiction.

Identical or Confusingly Similar

Complainant alleges that it has registered the COPPERTOWN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,097,245 issued May 30, 2006, filed June 9, 2005).  Because Complainant filed a trademark registration application for the mark with the USPTO in 2005, before Respondent registered the <coppertown.com> domain name on March 31, 2006, the Panel finds that Complainant’s rights in the mark relate back to its filing date in 2005 and thus Complainant’s rights in the COPPERTOWN mark predate Respondent’s rights in the <coppertown.com> domain name pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

Respondent does not contest Complainant’s assertions that the <coppertown.com> domain name is identical to Complainant’s COPPERTOWN mark. 

The ground is clearly established.

Rights or Legitimate Interests

The Panel accepts that Complainant has the initial burden of making a prima facie case that Respondent has no rights or legitimate interests in the <coppertown.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name.  The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.  Here, Complainant has alleged that Respondent does not own any rights in the term Coppertown, and that Respondent’s use of the domain name is not a fair one.  These assertions, are sufficient to make a prima facie showing in regard to the legitimacy element.”).

 

Complainant alleges that the WHOIS information lists the registrant of the domain name as “R. Snowden” and that there is no other evidence in the record suggesting that Respondent is commonly known by the <coppertown.com> domain name.  Complainant also alleges that it has not authorized or licensed Respondent to register or use a domain name incorporating a variation of Complainant’s COPPERTOWN mark.  The Panel’s view is that Respondent is not commonly known by the disputed domain name, and accordingly finds that Respondent does not have rights or legitimate interests in the  <coppertown.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Moreover, Complainant contends that Respondent is using the <coppertown.com> domain name to display details of a lawsuit that Respondent filed against Complainant in a Florida state court.  Complainant argues that Internet users seeking Complainant’s goods or services are redirected to this website, where disparaging and untrue statements about Complainant are posted.  It is open to a panel to find that a respondent’s use of a domain name identical to a complainant’s mark to criticize a complainant is not a bona fide offering of goods or services within the realm of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the realm of Policy ¶ 4(c)(iii).  See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Baker & Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because the respondent’s <bakeranddaniels.com> domain name merely incorporates the complainant’s trademark, without more, it is not protected by the First Amendment).

For these reasons it is found that the ground is established.

 

Registration and Use in Bad Faith

 

The Panel considers that Respondent, a direct competitor of Complainant in the drive-thru coffee business, has violated Policy ¶ 4(b)(iii) by registering and using the <coppertown.com> domain name to post a lawsuit against Complainant, because the posting of negative comments about Complainant will potentially disrupt Complainant’s business.  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 the respondent and the complainant were in the same line of business in the same market area); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

 

The Panel also finds that by posting a lawsuit involving Complainant at the <coppertown.com> domain name, Respondent, a direct competitor of Complainant, is attempting to divert Internet users seeking Complainant’s goods or services to a website criticizing Complainant and that it is doing so for commercial gain.  This is on the basis that internet users will see that Respondent is suing Complainant and might be discouraged from doing business with Complainant and instead decide to do business with Respondent.  Hence, the Panel finds that Respondent is attempting to profit from the goodwill associated with Complainant’s COPPERTOWN mark, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Even if Respondent had not violated any of the factors listed in Policy ¶ 4(b), the Panel would still find that, based on the totality of the circumstances, Respondent’s registration and use of the <coppertown.com> domain name suggests bad faith under Policy ¶ 4(a)(iii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”).

 

The Panel finds that Respondent’s use of the disputed domain name to criticize Complainant in the way it does suggests that Respondent registered and is using the <coppertown.com> domain name for collateral purposes and thus in bad faith pursuant to Policy ¶ 4(a)(iii).  See Diners Club Int’l, Ltd.  v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).

Respondent’s rather frank admission that he intends to use the disputed domain name to leverage compensation for copyright materials allegedly taken from his website suggests that the motive was to use the domain name as a bargaining means for another dispute.  This is improper and in the Panel’s view is a clear illustration of bad faith.

On this basis the ground is made out.

 

DECISION

Having found that it has the necessary jurisdiction and having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <coppertown.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Clive Elliott, Panelist
Dated: July 17, 2006

 

 

 

National Arbitration Forum