National Arbitration Forum

DECISION

Collision Research & Analysis, Inc. v. Marc Pryor

Claim Number: FA0504000463242

PARTIES

Complainant is Collision Research & Analysis, Inc. (“Complainant”), represented by Michael Leventhal, of Praxis, LLP, 11700 National Blvd., Suite L, #106, Los Angeles, CA 90064. Respondent is Marc Pryor (“Respondent”), represented by Gregory M. Hatton, 20311 Birch Street, Suite 100, Newport Beach, CA 92660.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <collisionresearch.com>, registered with Domaindiscover.

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.

Timothy D. O’Leary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on April 15, 2005.

On April 19, 2005, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the domain name <collisionresearch.com> is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 April 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 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@collisionresearch.com by e-mail.

A Response was due on May 10, 2005. The Response was sent at approximately 10:50 p.m. PDT to the National Arbitration Forum’s office in Minneapolis, Minnesota, where at the moment of sending the date and time were no earlier than 12:50 a.m. May 11, 2005. Since the Response was not received on time as required by the Rule, Complainant requests that the Response not be considered.

The Panel elected to accept the Response.

Additional submissions were received by both Complainant and Respondent. The Panel accepted those submissions and considered them in its ruling.

On May 18, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

ISSUE: In reviewing the Complaint and Response, it appears that the main issues are under the UDRP Policy:

Policy ¶ 4(a)(i) “confusing similarity,”

Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and

Policy ¶ 4(a)(iii) “bad faith registration and use.”

Procedural Issue

Complainant asserts that Respondent and Complainant executed a contract in which Respondent sold his intellectual property rights to Complainant, including use of the COLLISION RESEARCH mark for any purpose. Complainant contends that Respondent’s continued control of the <collisionresearch.com> domain name violates the terms of its contract with Respondent. The Panel finds that interpretation of the contract that Complainant furnished with the Complaint would raise issues that are outside the scope of the Policy and inappropriate for determination in this proceeding. See Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the Policy because the dispute centered on the interpretation of contractual language and whether or not a breach occurred); see also Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations’” and finding that cases where registered domain names are subject to legitimate disputes are relegated to the courts).

Identical or Confusingly Similar contention, Complainant states:

In addition to the allegations that Respondent sold the rights to the <collisionresearch.com> domain name, (a contention the Panel has ruled that it has no jurisdiction to rule) Complainant advises it owns the COLLISION RESEARCH AND ANALYSIS, INC. trademark. Complainant argues that Respondent’s continued control over the domain name not only violates the agreement, but also causes confusion as to the rightful owner of the trademark. Furthermore, Respondent’s continued control over the domain will likely cause confusion as Complainant owns the identical <collisionresearch.net> domain name

[ML1]

Response of Respondent to contention No. 1

Respondent has lawfully owned and operated the generically named <collisionresearch.com> domain name for eight years, with the knowledge of the entire motor vehicle accident reconstruction industry in the United States, including Complainant, without protest. Respondent states that in an attempt to mischaracterize a simple contract dispute as a claim under ICANN, Complainant makes a series of intentional misrepresentations. For example: (A) “Collision research” is not the Complainant’s corporate or business name. “Collision research” is a generic term that describes forensic vehicular accident reconstruction, which is a trade engaged in by literally thousands of engineers in America and around the world today. (B) Complainant, Collision Research & Analysis (“CRA”), has never registered any trade or service mark. Nor would CRA likely have any success in an attempt to enforce the exclusive right to a trade or service mark using the generic term “collision research.” “Collision research” is the generic industry term for the work performed daily by thousands of engineers engaged in the field of forensic vehicular accident reconstruction and analysis. (C) There is no evidence of any confusion resulting from CRA’s use of the <collisionresearch.net> domain name. (D) CRA falsely contends that it owns <collisionresearch.net>. This domain name was very recently registered by Timothy Long, an individual who is a non-shareholder employee of CRA. There is no known use of this domain at the present time.

Finally, the Respondent argues that the domain name was registered by Pryor after CRA repeatedly expressed no interest in registering or owning the domain name, or in advertising in any way on the internet. CRA was fully aware for eight years that Pryor had registered and continued to use the generic <collisionresearch.com> domain name in good faith.

Complainant’s Additional Submission

Complainant responds to the fact that there is no registered trademark by reminding the Respondent that Complainant has common law trademark rights associated with the mark. Complainant states that the undisputed fact remains that Complainant has owned and operated Collision Research & Analysis since 1987, and has owned and/or controlled the domain name at issue as a company or through an authorized representative since 1997. Nowhere has Respondent claimed, nor could he, that Respondent has ever used this domain name for any purpose other than as the online presence of Complainant. Complainant’s answer to Respondent’s argument that <collisionresearch.net> is owned by someone other than Complainant is that the registrant works for them, and that, at worst, Complainant has made the same mistake as when they trusted an individual to be the registrant of <collisionresearch.com>, when it has always been the corporate domain name.

Respondent’s Additional Submission

CRA, Inc. creates the factual and legal fiction that it is the “owner” [sic] of the generic term, “collision research,” for the purpose of wresting control of <collisionresearch.com> from its rightful owner, a professional engineer whose full time employment is in the field of collision research. The fact remains: after two rounds of briefing, CRA has failed to demonstrate any legally cognizable trade or service mark rights in the generic term, “collision research.” At all times, Pryor has made legitimate and fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, or to tarnish any trademark or service mark.

Finding for Respondent

The Panel finds that Complainant has failed to show that the <collisionresearch.com> domain name is confusingly similar to a mark in which Complainant has rights under Policy ¶ 4(a)(i). See NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying the complaint because the complainant was not the owner of the trademarks); see also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (“Serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that the Policy did not support a finding of common law rights in a mark in lieu of any supporting evidence (e.g., business sales figures, revenues, advertising expenditures, or number of consumers served)).

Respondent argues that, even if Complainant had alleged common law rights in the COLLISION RESEARCH mark, Complainant could not maintain exclusive rights in the mark because the mark is generic. Respondent asserts that “collision research” is a widely used industry term that describes the services performed by thousands of forensic engineers. The Panel finds that the COLLISION RESEARCH mark is generic, which would prevent Complainant from establishing exclusive rights in the mark under Policy ¶ 4(a)(i). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that “seminar” and “success” were generic terms to which the complainant could not maintain exclusive rights).

Rights and Legitimate Interests contention, Complainant states:

Complainant maintains that Respondent agreed to relinquish all rights in and to the Complainant’s company as a result of agreements of sale, including the domain name in dispute. Therefore, Respondent no longer has rights or legitimate interest in the domain name. Respondent’s continued control over the domain name violates both the agreements of sale Respondent executed, as well as the ICANN Rules and Policy. Therefore, Complainant requests that Respondent transfer the domain name.

Response of Respondent to contention No. 2

Complainant cannot rely on the interpretation of a contractual agreement to prove that Respondent relinquished rights to the disputed domain name. That alleged dispute over the meaning of a contract has to be resolved by arbitration, as the parties agreed, and cannot be decided in this action.

There is no evidence of any act or omission by Respondent that violates any ICANN Rule or Policy. It is undisputed that Respondent registered the generic <collisionresearch.com> domain name eight years ago, and that no objections of any kind were made prior to the current business dispute between Respondent and Complainant CRA.

Finding for Respondent

The Panel has heretofore ruled that it has no jurisdiction to decide the contractual dispute.

Respondent contends that he has used <collisionresearch.com> domain name in connection with a bona fide offering of goods for eight years. The Panel finds that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name).

Registration and Use in Bad Faith contention, Complainant states:

Respondent’s continued control over the registration of the Complainant’s website is contrary to the agreement he made, and therefore is in bad faith. Respondent continues to refuse to transfer the domain name to Complainant, thereby denying Complainant access to the domain. Complainant further is concerned that Respondent has the ability to divert traffic from the current URL to a competing site, and at present Complainant does not have the ability to stop such a diversion.

Response of Respondent to contention No. 3

There is absolutely no evidence that Pryor’s use of the domain name is in bad faith. CRA’s legally and factually unsupportable “claim” to some undefined “exclusive” right to the generic term “collision research” hardly constitutes “evidence” that Pryor is using the disputed domain name in bad faith. In fact, the <collisionresearch.com> website is available to the general public, including the thousands of professional engineers engaged in the field of “collision research” in America today. Again, the Panel does not have jurisdiction to decide or to interpret the rights and duties of the parties under the agreement. But even if it did, Pryor would prevail based on the truth: the domain name in dispute is simply not a part of the agreement.

Finding for Respondent

Respondent contends that Complainant has failed to assert any grounds for finding bad faith registration and use of the <collisionresearch.com> domain name under the Policy. The Panel finds that Complainant has failed to meet its burden of alleging facts that would support a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which a panel may conclude that a respondent acted in bad faith); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the Panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name).

The Panel finds that Respondent has rights and legitimate interests in the disputed domain name. In addition, the Panel finds that Respondent has not registered or used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website.

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

FINDINGS

Identical and Confusingly Similar

The Panel finds in favor of Respondent.

Rights or Legitimate Interests

The Panel finds in favor of Respondent.

Registration and Use in Bad Faith

The Panel finds in favor of Respondent.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Timothy D. O’Leary, Panelist
Dated: June 2, 2005

National Arbitration Forum