David Hall Rare Coins v.
Claim Number: FA0702000915206
Complainant is David Hall Rare Coins (“Complainant”), represented by Keith
A. Attlesey, of Attlesey & Thomlinson, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davidhallrarecoins.com>, registered with Compana, LLC.
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.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2007.
On February 15, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <davidhallrarecoins.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 February 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2007, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 12, 2007.
On March 19, 2007, an Additional Submission was timely filed by the Complainant in accordance with Supplemental Rule 7 and was duly forwarded to the panel.
On March 19, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, David Hall Rare Coins & Collectibles, contends that it was created in 1991 and has continuously operated since that time as one of the nation’s largest rare coin dealers and has established common law trademark rights in the name DAVID HALL RARE COINS. Complainant asserts that Respondent’s registered domain name, <davidhallrarecoins.com>, is identical to Complainant’s mark and that Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not presently, nor has ever been commonly know by the name. Complainant further asserts that Respondent registered and used the domain name in bad faith.
Respondent, Texas International Property Associates, contends that Complainant has not established or substantiated any trademark rights in the mark DAVID HALL RARE COINS, thus the domain name in dispute can not be identical or confusingly similar to any mark held by Complainant. Respondent also states “Respondent has rights and legitimate interests in domains comprised of generic and/or descriptive terms, not associated with the Complainant’s business, and Respondent herein . . . used the disputed domain name in connection with a bona fide offering of services pursuant to ICANN Policy.” Respondent further states that Complainant’s mark is unprotectable because “David” and “Hall” are unprotectable surnames and that the words “rare” and “coins” are unprotectable generic terms. Respondent also contends that Complainant is wrongfully trying to protect a trade name which is not entitled to the protection afforded a trademark or service mark. Respondent further asserts that it has not used the disputed domain in bad faith.
C. Additional Submissions
Complainant timely filed an Additional Submission where Complainant reasserted its common law rights to the mark DAVID HALL RARE COINS, contending that it provided direct evidence of the same based on acquired secondary meaning. Complainant also further disputed the nature of Respondent’s business and argued that Respondent’s intentional diversion of Complainant’s potential customers to Respondent’s website for commercial gain indicates Respondent’s bad faith.
Respondent filed a “surreply” in which Respondent objected to Complainant’s Additional Submission on procedural grounds as being beyond the scope of the UDRP rules and the NAF rules. Respondent reiterated its prior substantive objections to Complainant’s case based on the alleged generic nature of Complainant’s mark.
Complainant, David Hall Rare Coins & Collectibles, has been established at least since 1991, engaging in the business of dealing in rare coins. Complainant purchases and sells rare coins and assists clients in building coin sets, conducting rare coin searches and providing price information. In 1996 Complainant registered <davidhall.com> as its domain name to facilitate its online business and it continues to use that domain name at present. In 2000 Complainant dropped “& Collectibles” and has operated since that time as David Hall Rare Coins. Complainant does not hold a federal registration for a mark but claims common law rights in the name DAVID HALL RARE COINS based on evidence of secondary meaning. Complainant has used the mark in its present or closely related form in excess of fifteen years, has engaged in extensive advertising of its business and is cited by various trade publications as an expert in the rare coin business.
Respondent created the disputed domain <davidhallrarecoins.com> on
February 4, 2005, and states that a search of the relevant section of the
United States Trademark website would not have shown a registration for
Complainant’s mark at that time.
Respondent states that it registers thousands of names that it feels are
commonly used, generic or descriptive terms to which no party has exclusive
rights. Respondent claims to be in the
business of providing locator services and claims to use the disputed domain
name for a website that is an advertising portal access to a broad range of
services. Respondent states, “the fact
that advertising revenues may be generated by Respondent’s activity
demonstrates a legitimate interest.”
Respondent also states that in order . . . “to have been acting in bad
faith, it would have had to anticipate with absolutely no notice or
communication . . . that a coin dealer
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 does not hold a federally registered trademark for the mark
in which it claims common law rights, namely DAVID HALL RARE COINS. However the UDRP does not require a federal
registration for a party to establish rights in a mark. See
Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law. Respondent’s assertion that a trade name can not be protected to the same degree as a trademark is at odds with both trademark law and the realities of today’s commercial environment.
Complainant has established this element.
Respondent is not commonly known by the domain name <davidhallrarecoins.com> at least insofar as identified by
WHOIS which list Respondent as “
Furthermore, an improper enterprise is not made legitimate by the fact that it generates positive cash flow. Respondent’s use of the domain name as a portal to advertise rare coin goods and services that directly compete with Complainant’s business is not legitimized by its generation of advertising revenue.
Complainant has established this element.
Respondent’s use of the domain name in dispute to advertise its goods and services of Complainant’s competitors disrupts Complainant’s business by diverting potential customers of Complainant to Respondent’s website. Respondent’s registration and use in this manner is in bad faith pursuant to Policy ¶4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). Competitors may be confused as to the affiliation, endorsement, or sponsorship of the rare coin products and services on Respondent’s website due to the <davidhallrarecoins.com> domain name. See 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); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Respondent is in violation of to Policy ¶4(b); Complainant’s mark is protectable under common law, so Respondent’s registration and use is in bad faith under Policy ¶4(b)(iii). Although Respondent contends that Complainant’s mark was not federally registered at the time Respondent adopted the domain name <davidhallrarecoins.com> and thus Respondent lacked notice of Complainant’s claim to common law rights in the mark DAVID HALL RARE COINS, Respondent should have known of Complainant’s existence and inquired further regarding its potential use of the name. A simple internet search at the time of Respondent’s adoption of the disputed domain would have undoubtedly returned responses directed at Complainant’s ongoing business by reference to the common law mark DAVID HALL RARE COINS as identified by various other websites and/or via Complainant’s own website <davidhall.com>.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <davidhallrarecoins.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 9, 2007
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