DECISION

 

Casa Ford, Inc. v. Spider Webs, Ltd.

Claim Number: FA0106000097355

 

PARTIES

The Complainant is Casa Ford, Inc., El Paso, TX, USA (“Complainant”) represented by Victor F. Poulos of Poulos & Dickey, LLP.  The Respondent is Spider Webs, Ltd., Houston, TX, USA (“Respondent”) represented by Bernard Lisle Mathews of Hocker, Morrow & Mathews.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <casaford.com>, registered with Network Solutions, 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.

 

Hon. R. P. Kerans (ret’d) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 4, 2001.

 

On June 5, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <casaford.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 2001 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@casaford.com by e-mail.

 

On June 27, 2001 a late Response was received. ICANN arbitrations are intended to be cheap, quick, and simple.  To permit this, it falls to the parties to ensure by every reasonable means that these objects are met.  Nevertheless, this submission was but one day late, and before my appointment or any consideration.  I will consider it.  See University of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made).

 

On July 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. R. P. Kerans (ret’d) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.        Complainant

Casa Ford, Inc. of El Paso, Texas has been an automobile dealership in El Paso, Texas since 1969.  Casa Ford, Inc. has attempted to register the Internet domain name of Casa Ford and has been unable to do so because Respondent has registered that name.

 

Casa Ford, Inc. is the only commercial entity that has been and is currently utilizing the Casa Ford name.  The trademark name “Casa Ford” is distinctive and Respondent’s use of the name Casa Ford misleadingly diverts consumers and tarnishes Complainant’s mark.

 

A major portion of the business name “Casa Ford”, is identical to Respondent’s Domain Name Registration CASAFORD.COM Respondent has established a domain name registration using a major portion of Complainant’s business name for the purpose of diverting Internet inquiries intended for Casa Ford, Inc. of El Paso, Texas to a different and totally unrelated web site owned and controlled by Respondent, thus causing significant damage to the business of Complainant.

 

Respondent has attempted to “sell” the domain name CASAFORD.COM to Casa Ford, Inc. of El Paso, Texas. 

 

B.                 Respondent

Respondent is engaged in consumer advocacy, and operates an Internet web site known as Spintopic.com. Keying in the addresses in dispute in this proceeding, along with numerous other addresses that have been registered by Respondent, will direct an individual's browser to Spintopic.com.

 

Spintopic, provides a variety of useful information to consumers in connection with numerous products, and the companies that manufacture them. Free forums are made available for exchange of information on consumer topics. Respondent has linked the Spintopic site to other sites of interest to consumers. A visitor to the Spintopic site can quickly find tips on buying and pricing automobiles, reach Better Business Bureaus, or read the latest updates from the Federal Consumer Protection Agency. These are but a few of the many options available to visitors to Spintopic.com.

 

The vast majority of addresses used in this fashion were registered in the Summer and early Fall of 1999, when Respondent began developing its ideas for the consumer site.

 

The addresses in question were registered by Respondent in 1999, before enactment of the Anticybersquatting Consumer Protection Act.

 

Spider Webs does not sell trademark domain addresses for profit. Casa Ford’s allegations in this regard are completely false. This has never been done, and never planned. Of the total of over 2000 domain addresses Spider Webs has registered, only around 15% of them could be considered related to an existing business name, such as the sites in question in this case.

 

The Respondent deposes:

 

“We registered these sites with the belief that they would fit into our overall plans for development of a consumer-oriented portal, and not with the intent of selling them to anyone. While we were certainly hopeful that some aspect of the overall business would be profitable, such as the sale of generic domain names, no thought was given to how companies like Casa Ford might respond to the registrations.”

 

Negotiations about sale of the domain name were initiated by the Complainant, not the Respondent.

 

No person could be confused into believing that the Spintopic site was sponsored or operated by Casa Ford. Clear disclaimers appear on the first page of the site. Spider Webs is not selling automobiles at the site, and no business could possibly be diverted from any content on the web site.

 

When Spider Webs began registering names it began with purely generic names, names of geographic locations, and building sites. Names that might be well known for other reasons, such as the one in question in this matter, were among the last to be registered. Spider Webs had little or no time to consider how to use these names before the Congress swept through the ACPA as part of an appropriations bill. As a consequence, the Respondent did not have time to consider how to best use the domain names of this sort until after the law was passed.

 

It is certainly true that many of the generic names that the Respondent  registered were intended for ultimate resale. However, the other names, such as the one in question in this case were not registered for that reason.

 

Nothing other than purely generic names has ever been offered for sale on at Spider Webs' website, or anywhere else. To suggest that there has been a Pattern of "trafficking" in trademarked names is false.

 

Since the Spintopic site has been in operation, it has received over 200,000 visitors. The traffic at the site is no doubt due, in part, to the great number of domain addresses that point to it, including the one in question in this case.

 

Spider Webs made the decision to make its Spintopic site accessible from the domain name in question in this case because of the unfortunate way the ACPA is worded. If Spider Webs had not used the site, then companies such as Casa Ford would have argued that this was evidence of bad faith. Given a "damned if you do, damned if you don't" choice, the obvious course of action was to implement that plan for the consumer advocacy site that had been in the works for many months.

 

Casa Ford appears to take the position that its business name is being diluted by the use of the domain name registered by Spider Webs. First of all, the Internet is intended as a world wide forum for the exchange of information. It is not, and should not be the exclusive realm of the large retailers whose only intent is to coral more consumers for their products. Casa Ford does not own or have any rights in the name in question. It is only able to use existing law to prevent any unfair, commercial, use of its trademark that can be demonstrated to have harmed it. In this case, Spider Webs has done nothing to harm the business of Casa Ford, has not acted in bad faith, and has not made any use of the addresses that it registered, other than to provide a public service.

 

Respondent is conducting a legitimate, consumer advocacy enterprise of use to the general public, and has never demonstrated any ill will or engaged in unfair competition with Complainant.

 

Complainant might have a basis for its position if Respondent were selling cars at the site, or otherwise using it for a commercial benefit that would be in direct competition with Complainant. This has not been asserted, and is not the case.

 

Complainant is entitled to certain protections with respect to unfair commercial use of a business name that is identical or confusingly similar to its name. However, there is no proprietary right to a name, and even a trademark is not a property right. Complainant’s  assertions are grounded on the mistaken premise that a trademark owner has property rights in any item which bears its name. This is totally untrue. Trademark protection statutes do not elevate trademarks to the status of property, they merely protect the registrant from improper use. Illinois High School Association v. GTE Vantage, Inc. 99 F.3d 244, 246-47 (7^th Cir.1996).

 

Parties may make legitimate, non-commercial use of trademarks without violating the rights of a registrant. Respondent is entitled to use a web site to comment on issues of public policy, and what it considers to be key consumer issues. In the case of Bally Total Fitness Holding Corporation v. Faber 29 F. Supp. 2d 1161 (C.D. Cal. 1998) a critic of Plaintiff’s business was using a web site that incorporated Plaintiff’s trademarked name in its address, for the express purpose of criticizing the Plaintiff.

 

ICANN has been faced with essentially identical complaints in the case of Quirk v. Maccini, FA 94964 (Nat. Arb. Forum July 11, 2001). In that matter the respondent was utilizing the name “quirkchevrolet.com” over the objection of a business proprietor using an unregistered trade name “Quirk Chevrolet”. As in this case, the address was not being used competitively to sell cars, but provided consumer information. The assigned panelist correctly determined that this was a fair non-commercial use of the domain name, and refused to order transfer of the name to Complainant.

 

Complainant makes unsubstantiated allegations that Respondent had the “intent” to divert customers from Complainant. Anyone sophisticated enough to use the Internet could easily conclude that this was not a website operated by Complainant and could just as easily avail themselves of a lesser technology, namely the telephone book, to make contact with Complainant.

 

Respondent may even be aiding Complainant in its business. By providing a means for the consumer to get information concerning automotive products before going to the dealership to buy. Thus, a considerable amount of time can be saved in the process. An informed consumer should be a benefit to Complainant, since only serious buyers would be presented after the educational process available through Respondent’s site and links to other consumer advocacy sites.

 

The site makes it clear that Respondent is not associated with Complainant. It also makes no attempt to divert consumers to other dealerships. The site is totally neutral in this regard. Any reasonable visitor to the address in question could quickly discern that this is not a site maintained and sponsored by Complainant, and therefor no confusion is possible.

 

Complainant primarily advertises in newspapers and the radio in its target market. No law provides that all potential sites for advertising on the Internet must be delivered to Complainant. The Internet is not a medium owned by anyone to the exclusion of others. Complainant should not be permitted to force disgorgement of a site that was legally registered by Respondent, merely because it wants it. It is entitled only to protection for unfair use of the site by Respondent, which is not in question here.

 

Respondent admittedly in interested in generating traffic for its consumer advocacy site. The use of familiar names is a part of this strategy. However, since no anti-competitive, commercial use of the domain name casaford.com has been demonstrated by the evidence of the complaint, the registration and use of the name can not be found to be in bad faith.

 

Complainant is essentially upset that it failed to make a timely registration of a name. Had the address obtained by Respondent been crucial to Complainant’s business interests, it can be assumed that Complainant would have invested the $75.00 required to acquire a license for that name. It did not. Therefor, it is difficult to see how Complainant can reasonably contend that customers are being misled or diverted.

 

Complainant has failed to present any evidence of an intent by Respondent to register or use the site in question for unlawful purposes.

 

FINDINGS

1.   Neither party supplied any actual content from the web site.  The Respondent in its material said it attached a copy of the Home Page, but it failed to do so.  In these unique circumstances, I have examined the actual site.  The Home Page – which announces it is under construction – contains this disclaimer at the foot:  “This Site Is Not Affiliated With Any Service Mark Or Trademarked Entity(s) For Which Our Visitors May Have Searched For Via Search Engines Or Entries Entered In The Address Field Of Their Browser Of Choice.”

 

The site offers many links.  Many of them simply call up a comment form.  It would appear its ambition largely is to invite comment and discussion of consumer issues, although I could find no display of ongoing discussions or comments.

 

2.  I accept the claim of the Respondent that the Complainant opened any negotiations about sale.

 

3.  I have jurisdiction.  The Uniform Domain Name Dispute Resolution Policy applies to domain names registered before it came into existence.  See The State Bar of California v. eWebNation.com, Inc. FA 97137 (Nat. Arb. Forum June 14, 2001).

 

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.

 

Identical and/or Confusingly Similar

It is obvious that a consumer looking on the web for the site of Casa Ford in El Paso Texas may well go instead to this site.  “Casaford.com” is precisely the name a consumer may reasonably expect to be the domain name of the business in question. Indeed, the disclaimer quoted above implicitly acknowledges this.

 

The names are confusingly similar.

 

It is no answer to argue that the consumer may find Casa Ford by other means.

 

Rights or Legitimate Interests

While it has no registered trademark, Casa Ford obviously has some goodwill in the name “Casa Ford” in El Paso, and has a legitimate interest in it.  This is not to say that the Complainant can claim an exclusive and universal right to the name “Ford” or even “Casa Ford”.  I cannot know if there is another “Casa Ford”, in, for example, another Spanish-speaking country.  Its established interest relates to El Paso and environs.

 

The Respondent in its submission fails to appreciate that, despite the fact the Complainant has not necessarily an exclusive universal right to use the name, it nevertheless has a legitimate interest in it that the ICANN rules are designed to protect.

 

The issue is similar to that before me recently in Potter Brothers Ski Shops, Inc. v. McCoy FA 97254 (Nat. Arb. Forum, July 1, 2001), where I said:

 

If there is more than one business called “Potter Brothers”, each has some rights in the term “potterbrothers.com.” Indeed, each probably has the right to demand of others that, to avoid confusion, the domain names of each must contain a qualifier relating to locale or kind of business or both. 

 

      The Respondent offers no legitimate basis for an interest in the name.  It is as much as admitted that it is used solely in the hope that it will divert consumers to its site who are looking for a site of the Complainant.

 

      Although somewhat skeptical after a visit to the site, I accept the legitimacy of the claim by the Respondent that the purpose of the site in question is to develop consumer awareness, and to offer information to consumers who may wish to do business with the Complainant.

 

      It is quite a big jump, however, to use the name of the business about which one would offer information.

 

      There is, of course, a free-speech issue.  I recently had occasion to review the decisions in that area.  See North American Wilderness Recovery, Inc. d/b/a The Wildlands Project v Citizens With Common Sense FA 97058  (Nat. Arb. Forum July 1, 2001.)   I concluded:

 

. . . fair use can include the name of the person or business the critic would attack, and it will depend on the circumstances of each case whether that use is fair or not.  It may well not be a fair use if the domain name offers no hint of its real purpose, but the use of a non-commercial suffix like “org” or ”net” may suffice to differentiate when criticizing a commercial enterprise.  It may well also be a fair use to employ the name together with some added words to indicate a critical purpose.

 

      With great respect, the decision cited for the Respondent does not acknowledge the concept of unfair use, as that has been developed in recent decisions both of tribunals and Courts.  As a result, it is not a persuasive precedent.

 

      The domain name “casaford.com” offers no hint that it is something other than what the name purports to be, that being the name of the site of the Complainant’s business, and that is not fair use.

 

Registration and Use in Bad Faith

The Respondent argues that it had no intention to employ the name for any commercial gain.  I accept this statement of intention.  I note that it denies any connection with Casa Ford in the disclaimer on the website, and offers nothing for sale, does not attempt to divert the visitor to a site that does, and does not solicit for funds.

 

On the other hand, the Respondent, who is located in Houston, Texas, never denies that its choice of the name of this El Paso business was pure coincidence or for some purpose other than to lure potential customers of the Complainant to its site.

 

The Respondent argues that, on these facts, the test in Clause 4(b) of the Policy has not been met.

 

I disagree.  An intention of commercial gain is not essential to a finding of bad faith. Clause 4(b)(iv) is merely illustrative, not exhausting.   It is enough that the Respondent intentionally attempts to attract Internet users to its site by creating a likelihood of confusion with the business name of the Complainant as to the source, sponsorship, affiliation or endorsement of the site.

 

The sole remaining question is whether the disclaimer offers a sufficient answer on the question whether the Respondent created confusion as to the source, sponsorship, affiliation or endorsement of the site.

 

In many cases, the disclaimer can resolve an issue about bad faith.  For example, if the risk is merely of an accidental “hit” on the site, then a disclaimer establishes good faith. 

 

I have concluded that it is bad faith to lure consumers to a site by deliberate use of a confusing name.  Lure is a fair description of a use that intends to create and rely upon a likelihood of confusion on the part of the surfing public as to the source, sponsorship, affiliation or endorsement of the site.  That is the case here. That bad faith is not dissipated by a disclaimer, which may or may not clarify the confusion after the person has arrived at the site.  An intention to create even momentary confusion is bad faith.  And the bad faith is not resolved by double-talk.  How else to describe a practice which in the first place offers a lure, and then by disclaimer denies the truth of lure – but only after the fish is hooked?

 

I find bad faith. 

 

DECISION

For the reasons mentioned, I am in doubt whether the Complainant is entitled to a domain name that is unqualified as to locale.  I therefore direct cancellation rather than transfer.  The Respondent is of course at liberty to use its website in connection with any domain name that does not involve an unfair use of another name.

 

 

Hon. R. P. Kerans (ret’d), Panelist

 

Dated: July 13, 2001.

 

 

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