Brett Randy Sadovnick DBA Tucson Coin v. VERTICALwisdom Group
Claim Number: FA1311001531775
Complainant is Brett Randy Sadovnick DBA Tucson Coin (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is VERTICALwisdom Group (“Respondent”), represented by Scott D. Smiley of The Concept Law Group, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tucsoncoin.com>, registered with GoDaddy.com, LLC.
Michael A. Albert as Panelist.
On November 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tucsoncoin.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tucsoncoin.com. Also on November 26, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 16, 2013.
A timely Additional Submission from Complainant was received and determined to be complete on December 20, 2013.
On December 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
An untimely Additional Submission from Respondent was received on December 27, 2013.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint and Additional Submission, Complainant alleges:
(i) The Domain Names are identical or confusingly similar to marks in which Complainant has rights.
(a) Complainant asserts rights in the marks TUCSON COIN, which he claims to have used in commerce since 1994. Complainant filed a trademark application with the United States Patent and Trademark Office for the TUCSON COIN character mark (Serial No. 86,102,304, filed date October 25, 2013). The application is currently awaiting examination.
(b) Complainant asserts rights in the marks TUCSON COIN & AUTOGRAPH, which he claims to have used in commerce since 1998.
(c) Complainant alleges he has operated his coin dealership business in a manner that has produced a positive reputation and consumer goodwill directed at his marks in the Tucson area, as well as throughout Arizona and other states.
(d) Complainant alleges present and past activities in the Tucson community which have spread the public recognition of his marks. In support of this contention, Complainant provides evidence of newspaper articles about him and his store, and awards from the Better Business Bureau and Inside Tucson Business, all of which refer to his business as “Tucson Coin and Autograph.” Complainant also provides signed declarations from 5 of the 6 nonparty coin dealerships in Tucson, each affirming they “immediately think of the coin dealership owned by [Complainant]” when hearing or seeing the name, “Tucson Coin.” Complainant also provides a 2013 electric bill addressed to “Tucson Coin c/o Brett Sadovnick,” and a photo of his storefront bearing a sign reading, “Tucson Coin.”
(e) Complainant alleges spending thousands of dollars a year to advertise his marks.
(f) Complainant argues his marks are not invalid as merely descriptive. Complainant states the marks have acquired secondary meaning in the minds of consumers based, in part, on the above evidence.
(g) Complainant has been using <tucsoncoinandautograph.com> as a domain name for his business since 2001. Complainant’s current email address is tucsoncoin@theriver.com.
(h) Complainant states that the disputed domain name <tucsoncoin.com> contains all of Complainant’s TUCSON COIN mark and part of his TUCSON COIN & AUTOGRAPH mark, and the generic top-level domain (“gTLD”) “.com.” As such, Complainant asserts the domain name is identical to his TUCSON COIN mark and confusingly similar to his TUCSON COIN & AUTOGRAPH mark.
(i) Complainant alleges the disputed domain name resolves to a site for Arizona Stamp & Coin, a competing Tucson coin dealership, which causes consumer confusion as to the site’s association with Complainant. Complainant asserts, in a sworn declaration, that consumers have already visited the site and subsequently called his store to ask about his association with the site.
(ii) Respondent has no rights or legitimate interests in the domain name.
(a) Complainant asserts Respondent has never been known as, or done business under the name, “Tucson Coin.” Complainant states the same is true of Arizona Stamp & Coin, the third-party using the site to which the disputed domain name resolves.
(b) Complainant alleges Arizona Stamp & Coin does not make bona fide use of the site, because it uses it to advertise products similar to those sold by Complainant.
(c) Complainant argues the disputed domain is used to advertise Arizona Stamp & Coin, foreclosing any argument the domain name is being put to noncommercial or fair use.
(iii) The domain name was registered and is being used in bad faith.
(a) Complainant alleges Respondent is currently disrupting his business.
(b) Complainant argues Respondent registered the domain name with the intent of profiting off Complainant’s reputation and consumer goodwill by attracting Internet users who are looking for Complainant’s website.
(c) Complainant alleges Respondent knew that Complainant operated under the TUCSON COIN and TUCSON COIN & AUTOGRAPH marks, due to the close proximity of the parties, and the dearth of coin dealers in Tucson, making its choice of the domain name incorporating Complainant’s marks intentional.
B. Respondent
In its Response and Additional Response, Respondent alleges:
(i) The domain name is not identical or confusingly similar to the marks in which Complainant has rights.
(a) Respondent argues that Complainant’s marks are not entitled to protection as trademarks because they are geographically descriptive and/or descriptive of the services and/or goods Complainant offers.
(b) Respondent asserts Complainant fails to prove any acquired secondary meaning for his marks in the minds of consumers. In support of this position, Respondent provides declarations by nine people answering, “what the name TUCSON COIN means or to what it connotes.” Respondent contends the answers provided in these declarations demonstrate that Complainant’s marks have acquired no distinctive secondary meaning in the minds of the public.
(ii) Respondent has rights and legitimate interests respecting its domain name.
(a) Respondent alleges the domain was put to legitimate use before the dispute began.
(b) Respondent alleges it registered and developed the domain for Arizona Stamp & Coin, a third-party which uses the domain to promote its own Tucson-based coin dealership business. Respondent backs up this assertion with a declaration from its managing partner.
(c) Respondent alleges the domain is being used legitimately to promote Arizona Stamp & Coin’s business.
(d) Respondent claims fair use of the domain name because it is descriptive of Arizona Stamp & Coin’s location and business.
(iii) Respondent registered and is using the domain in good faith.
(a) Respondent claims Complainant offers no evidence to support a finding of bad faith registration or use under Policy paragraph 4(b)(i), (ii), (iii), or (iv), failing to meet its burden on this element.
(b) Respondent alleges the disputed domain is being used to promote the business of Arizona Stamp & Coin, not to disrupt Complainant.
(c) Respondent argues Complainant fails to demonstrate actual consumer confusion resulting from its registration and use of the disputed domain, and as such fails to show an intention to attract Complainant’s consumers to Respondent’s domain.
Preliminary Matters
The Panel first rules on one evidentiary issue. Both parties submitted additional materials. Complainant timely filed his, and the arguments and exhibits contained therein are considered with Complainant’s original Complaint.[1] Respondent’s Additional Submission was untimely; however, its exhibits properly respond to exhibits presented in Complainant’s Additional Submission. [2] For that reason, the Panel found it appropriate to consider Respondent’s Additional Submission, as well.
Paragraph 15(a) of 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.
Policy paragraph 4(a)(i) does not require Complainant to register his trademarks with a trademark agency, so long as he can establish common law rights in the marks. See Zee TV USA, Inc. v. Siddiqi, NAF Claim No. 0721969 (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy paragraph 4(a)(i)). However, unregistered marks “must acquire a secondary meaning” in the minds of consumers. MaxID Corp. v. Sam Koulusi / Sam, NAF Claim Number 1421132. Relevant to determining the presence of a secondary meaning are such factors as the “amount and manner of advertising, volume of sales, and length and manner of use” of the mark. Id.
Complainant first claims rights in two marks. First, Complainant argues common law rights in TUCSON COIN & AUTOGRAPH. Complainant’s evidence adequately demonstrates rights in the TUCSON COIN & AUTOGRAPH mark. Complainant’s Exhibit B shows that Complainant registered his business under the name Tucson Coin and Autograph, L.L.C. in 1998. There is no evidence Complainant ever ceased operating the business for any period of time, or altered its name for any period of time since then. Complainant has promoted the mark by, inter alia, operating a food bank collection drive out of his store. Numerous articles referring to Complainant’s program reference Complainant’s store as “Tucson Coin and Autograph.” Complainant’s Exhibit G. Complainant provides evidence of local and national awards for his business, referring to it as “Tucson Coin and Autograph.” Complainant also registered the domain <tusconcoinandautograph.com> in 2001. Complainant’s Exhibit C confirms development and use of that domain to promote Complainant’s business. Given this evidence, the Panel finds Complainant has a common law right in the name, TUCSON COIN & AUTOGRAPH.
Respondent’s allegations that the name is geographically descriptive and descriptive of the goods or services offered by Complainant are unpersuasive. Respondent is correct in claiming that merely geographic terms offer no trademark protection. See HER MAJESTY THE QUEEN v. Virtual Countries, Inc., WIPO Case No. D2002-0754 (denying New Zealand’s government rights in the mark, “New Zealand”). Even when a geographically descriptive term is augmented by another word in a mark, the mark’s owner does not get rights in the geographical indicator, standing alone. See Empresa Municipal Promoción Madrid S.A. v. Easylink Services Corp., WIPO Case No. D2002-1110 (the marks, “PROMOCION MADRID” and “MADRID CIUDAD 2002” did not create rights in “Madrid” as a mark by itself). Respondent is also correct that a mark consisting of a descriptive word or term cannot acquire protection without evidence of secondary meaning. See Canine Lifesavers, Inc. v. Papaloa Press, NAF Claim No. 1329056 (requiring evidence of acquired secondary meaning for the mark K9 LIFESAVERS).
That being said, when a geographic indicator is combined with a descriptive or dictionary word, the combination can create a mark in which a complainant has rights, provided the mark “has indeed acquired a distinctive secondary meaning in a market.” Instra Corporation Pty Ltd v. Domain Management SPM , WIPO Case No. D2009-1097; see also BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 (finding rights in the mark ABERDEEN AIRPORT, which combined a geographically descriptive term with a term describing that the goods and services there offered related to aviation activity).
In Instra Corporation, the complainant claimed rights in the unregistered mark ASIA REGISTRY. The panel concluded that evidence of media coverage, email newsletters and social networking promoting the mark sufficiently proved it had acquired a secondary meaning for the purposes of Policy paragraph 4(a)(i).[3] Complainant’s asserted mark, TUCSON COIN & AUTOGRAPH, has acquired the secondary meaning necessary for a mark combining geographic and descriptive terms. Like the mark in Aberdeen, Complainant’s mark describes the numismatic and autographic goods and services of Complainant’s Tucson business. Like the complainant in Instra Corporation, Complainant has demonstrated significant media coverage and award honors directed at the mark.[4] His charitable activity further attracts people to the business that bears this mark. For the foregoing reasons, the Panel finds Complainant demonstrates rights in the TUCSON COIN & AUTOGRAPH mark.
Complainant also alleges rights in the mark TUCSON COIN. These rights must be demonstrated through common law standards, since Complainant’s federal registry application is not yet granted. For the same reasons addressed above, Complainant could, in theory, demonstrate common law rights in the mark TUCSON COIN. However, on this mark Complainant fails to proffer evidence sufficient to establish such rights. Complainant’s evidence consists of four items. First, Complainant provides his application for federal registration of the mark. Complainant’s Exhibit A. Second, Complainant provides his own declaration swearing to use of the mark since 1994. Complainant’s Exhibit I. Third, Complainant submits a photo of the sign on the front of his store bearing the name “Tucson Coin.” Complainant’s Exhibit C. Fourth, Complainant provides declarations by five of the six nonparty local coin dealers agreeing with Complainant’s written statement that when they “hear the term ‘Tucson Coin’ [they] immediately think of the coin dealership owned by Brett Sadovnick.” Complainant’s Exhibits J-N. Complainant also lists his primary contact as the email address, “tucsoncoin@theriver.com,” and provides evidence of an electric bill addressed to “Tucson Coin c/o Brett Sadovnick” from 2013.
This evidence does not establish requisite secondary meaning necessary of unregistered trademarks. All media coverage and awards refer to Complainant as Tucson Coin and Autograph, contradicting Complainant’s assertions that his business operates under the Tucson Coin name. This evidence weighs heavily against finding rights in the mark. See Mega Shoes, Inc. v. Gregg Ostrick / GNO, Inc., NAF Claim No. 1362894 (finding no rights in a mark where proffered media references spoke of complainant under a name different from the mark in which he claimed rights).
Regarding the submitted affirmative evidence, questions as to when Complainant’s sign went up, and when he began using his tucsoncoin@theriver email address are unanswered. This evidence is therefore necessarily unpersuasive, since duration is relevant to establishing rights. Additionally, these changes may have occurred after Respondent registered the domain. The electric bill addressed to “Tucson Coin c/o Brett Sadovnick” is dated several months after Respondent registered the disputed domain name. As such, it too fails to demonstrate adequate rights in the mark.
Complainant asserts spending “thousands of dollars each year in advertising his business,” yet he submits no evidence regarding these expenditures. Complaint at 3. Complainant’s declaration to use of the mark beginning in 1994 is also unsupported by the evidence submitted. Complainant’s declarations, signed by local coin collectors, also fails to show rights in the mark. As Respondent correctly points out, these locals are professionals engaged in the same business as Complainant, not average consumers. The declarations also fail to specify when the signatories first began connecting the name with Complainant, and fails to offer them an alternative choice of considering TUCSON COIN & AUTOGRAPH, rather than TUCSON COIN with Complainant. Respondent’s evidence of several Tucson residents not linking TUCSON COIN directly to Complainant is not very weighty.[5] However, given Complainant’s failure to garner better evidence of acquired secondary meaning for the TUCSON COIN mark, Respondent’s evidence does further tip a scale which already leaned heavily against Complainant.
For the foregoing reasons the Panel finds that Complainant fails to show continuous use of the mark demonstrating an acquired secondary meaning. As such, the Panel finds Complainant has not proven rights in TUCSON COIN as a mark. See William (Bill) Robert Johnson (Sole Director) / Aahara Enterprises Pty Ltd v. Pieter’s, NAF Claim No. 1423269 (finding a complainant who fails to affirmatively show the extent of a mark’s use is not entitled to common law trademark rights in the mark for the purposes of a dispute). The Panel will not address that mark further in this analysis. See Creative Curb v. Edgetec Int’l Pty. Ltd., NAF Claim No. 0116765 (finding that the complainant’s failure to prove one of the three elements in Policy paragraph 4 makes further inquiry into the remaining elements unnecessary); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, NAF Claim No. 0836538 (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not show rights in a mark).
The remaining question for Policy paragraph 4(a)(i) is whether the disputed domain name is identical or confusingly similar to the mark in which Complainant does demonstrate rights. The domain name <tucsoncoin.com> is not identical to Complainant’s TUCSON COIN & AUTOGRAPH mark, as it includes only two of the mark’s four words. The inclusion of two words may still make the domain name confusingly similar to the mark. The test for confusing similarity begins with an initial comparison of the domain name and the mark “[i]n terms of sight and sound” of the names. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The portion of the mark included in the disputed domain name consists of the first two words of the mark, in the same order as they appear in the mark. This can be enough to create a sight and sound confusingly similar to Complainant’s mark. See Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661 (finding the domain name <parmigiano.org> confusingly similar to "PARMIGIANO REGGIANO" and "PARMESAN" marks); CE Power Solutions, LLC v. NA / Andrei Kulich, NAF Claim No. 1471767 (finding the domain name <cepowersol.com> confusingly similar to the CE POWER SOLUTIONS mark).
The absence of some portions of a mark from a domain name does not automatically prevent a finding of confusing similarity. The appropriate inquiry focuses on whether the portion of the mark present in the domain name constitutes the “definitive word[s]” of the mark. Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203; see also Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 (finding confusing similarity between <zermatt.com> and the marks ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT because “‘Zermatt’ is the dominant, distinctive element of both trademark registrations”); EthnicGrocer.com, Inc. v. Latingrocer.com, NAF Claim No. 0094384 (citing Marriott Int’l, Inc. v. Café au lait, NAF Claim No. 0093670) (“the association between the dominant terms of the Complainant’s mark is vital in maintaining a business in today’s e-commerce society”).
In making this determination, the Panel must assess “whether an Internet user would confuse [the portion of the mark included in the domain name] with . . . any of the Complainants' trademarks.” Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203. In Jumeirah International LLC, the panel ultimately held no confusing similarity because the disputed domain name only included the geographic term of the complainant’s mark, but did not include the portion describing the goods or services it offered, which more important to the mark than geographic location standing alone. However, in Aberdeen Airport the complainant prevailed because the respondent’s domain included both “Aberdeen” and “Airport.”
The case sub judice is closer to Aberdeen Airport than to Jumeirah. The record shows Complainant’s primary work is as a coin dealership. The sign outside Complainant’s shop, evidenced in Complainant’s Exhibit C, lists the goods Complaint offers. The first two listings refer to coins. Autographs are mentioned once, five spots from the top. Complainant’s website, also shown in Complainant’s Exhibit C, states on its main page, “We have been dealing in coins, gold, silver, and currency since 1974.” Farther down on the page is a video apparently directed exclusively at Complainant’s functions in “buying and selling coins.” That page omits any mention of autographs, except in naming the store. Complainant’s coverage in the media focuses on his offer to give new state coins to any person who comes to his store and donates cans for a community food bank. Complainant’s sign over his store says “Tucson Coin.”[6] This evidence suggests “coin” is a definitive portion of Complainant’s mark.[7]
Complainant’s status as a brick and mortar suggests the high importance of the mark’s geographic term. Complainant’s locally-focused food bank drive, coverage in local media, and the nature of the wares he offers support this conclusion. This suggests “Tucson” is also a definitive portion of Complainant’s mark.
The two definitive terms of Complainant’s mark, “Tucson” and “coin” serve as Respondent’s domain name, their order unaltered. This points to confusing similarity. In addition, the domain name adds no additional words to the portion of the mark it used. Such a step is instrumental in reducing confusing similarity, even when part of the domain remains a sizable portion of a mark.[8] See Vitamin Shoppe Industries, Inc. v. Kosher Vitamin Express, NAF Claim No. 1466844 (finding no confusing similarity between THE VITAMIN SHOPPE mark and the domain name <koshervitaminshoppe.com> because, despite the overlap in the words “vitamin” and “shoppe,” the addition of the word “kosher” to the domain name had a significant effect in decreasing the risk of consumer confusion).
The evidence on record also suggests likelihood is turning into reality. Complainant’s declaration states he has received phone calls from confused customers since Respondent started linking to Arizona Stamp & Coin’s site. Complainant’s Exhibit I. This evidence further weighs toward finding confusing similarity. [9]
For the foregoing reasons, the Panel finds Respondent’s domain name <tucsoncoin.com> is confusingly similar to TUCSON COIN & AUTOGRAPH, a mark in which Complainant has rights.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), after which the burden shifts to Respondent to rebut this evidence by showing it has rights or legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 741828. Complainant’s burden is not high, “[b]ecause it is difficult to produce evidence to support a negative statement.” Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Under Policy paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant asserts that the disputed domain resolves to a site used by Arizona Stamp & Coin. Arizona Stamp & Coin is a third-party Tucson coin dealership that hired Respondent to register the disputed domain name and link it to the site Respondent developed to advertise Arizona Stamp & Coin’s business. See Respondent’s Exhibit A. Complainant states neither Respondent, nor Arizona Stamp & Coin are authorized to use his mark. Complainant contends, and Respondent does not dispute, that neither Respondent, nor Arizona Stamp & Coin are, or ever have operated under the name “Tucson Coin.” Complainant argues that although Arizona Stamp & Coin deals in, inter alia, coins, Respondent does not. Complainant alleges that even if Respondent is an agent of Arizona Stamp and Coin, the site’s use to sell goods and services that compete with the goods and services Complainant offers under his mark does not constitute a bona fide offering of goods or services. Thus, Complainant claims Respondent has no legitimate interest in the domain name.
Regarding the requirements of 4(c)(i), Respondent shows it put the domain to use before the dispute arose, using it to host a site that advertises the goods of Arizona Stamp & Coin. However, Respondent fails to show the goods and services offered at the site are different from those sold by Complainant—both Arizona Stamp & Coin and Complainant deal in coins, gold, silver, and jewelry. See Complainant’s Exhibits C and D. While Respondent additionally deals in stamps, and Complainant additionally deals in autographs, this difference is not significant enough to find dissimilarity between the parties’ businesses.[10] This similarity prevents a finding that such offerings are bona fide. See Global Rental Co., Inc. v. Truck Sales, NAF Claim No. 1498509 (finding a domain using the complainant’s mark to advertise the same type of trucks as the complainant was not being put to bona fide use); Computerized Sec. Sys., Inc. v. Hu, NAF Claim No. 0157321 (finding a domain using the complainant’s mark to sell electronic locks similar to those offered by the complainant was not making bona fide offerings of goods).
The fact that Respondent itself deals in domains, rather than coins, is irrelevant. Prior panels have held that a respondent’s use of a confusingly similar domain name to host a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Computerized Sec. Sys., Inc. v. Hu, NAF Claim No. 0157321. Since Arizona Stamp and Coin is not making bona fide offerings through the site, Respondent’s use of the domain is illegitimate.
Regarding the requirements of 4(c)(ii), Complainant contends, and Respondent does not dispute, that neither Respondent, nor Arizona Stamp and Coin are operating, or ever have operated under the name “Tucson Coin.” Thus, the Panel finds Respondent fails to show legitimate rights or interests in the domain name under this category.
Regarding the requirements of 4(c)(iii), Respondent currently uses the domain to host a site advertising Arizona Stamp & Coin’s for-profit business. See Complainant’s Exhibit D. Respondent also developed the site at the behest of Arizona Stamp & Coin, which it dubs its “employer.” See Respondent’s Exhibit A. As such, Respondent fails to show it is putting the domain to legitimate noncommercial use.
Respondent argues the domain name is descriptive of the business to which it connects, and it is making fair use of it. Complainant’s mark, the central part of which is used in Respondent’s domain name, has acquired secondary meaning. Respondent may legitimately use domain names incorporating, inter alia, “Tucson,” “Stamp and Coin,” and even “Coin,” but it may not use a domain name consisting entirely of “Tucson Coin,” for the reasons addressed above.
In addition, many panels have held that use of a domain name to compete with a complainant fails as both bona fide use, as well as fair use. See Getty Images (US), Inc. and its subsidiary Istockphoto LP v. Above.com Domain Privacy, NAF Claim No. 1489476; H-D Michigan Inc. v. Buell, NAF Claim No. 1106640; Expedia, Inc. v. Compaid, NAF Claim No. 0520654. Since the Panel previously found that Respondent is using site to compete with Complainant, the Panel concludes Respondent’s use is not “fair.”
For the foregoing reasons, the Panel finds Respondent does not have legitimate rights or interests in the disputed domain name.
Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in Policy paragraph 4(b): (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the trademark or service mark owner, or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Regarding 4(b)(i), there is no evidence Respondent registered the domain primarily to sell or lease it to Complainant. Although Respondent admits it developed the site at the behest of Arizona Stamp & Coin, whose site Respondent hosts, there is no evidence regarding the monetary arrangement between these parties. As such, Respondent does not demonstrate bad faith under this category.
Regarding 4(b)(ii), Respondent admits its primary business is registering domain names. See Respondent’s Exhibit A. However, there is no evidence as to the nature or names of these domains, preventing any finding of a pattern of bad faith.
Regarding 4(b)(iii), there is no evidence that Respondent’s primary goal was to disrupt Complainant’s business.
Under 4(b)(iv), however, the Panel finds Respondent’s registration and use of the domain to constitute bad faith. Complainant argues that Respondent could not but be aware of its name, given the proximity of Arizona Stamp and Coin to Complainant, and the existence of only six other coin dealerships in Tucson, five of which declared that they know Complainant as Tucson Coin. This evidence, while circumstantial, constitutes more than mere speculation in the final analysis. See EthnicGrocer.com, Inc. v. Latingrocer.com, NAF Claim No. 0094384 (July 7, 2000) (finding bad faith where the respondent was a competitor of the claimant, and as such could not but know of the complainant’s mark). The record shows Complainant registered his <tucsoncoinandautograph.com> domain years before Respondent registered <tucsoncoin.com>. Complainant also points out that Respondent never denies knowledge of Complainant’s mark. This evidence creates a strong presumption that the domain was registered in bad faith to attract customers interested in Complainant to Respondent’s site.
This bad faith goal is further evidenced by the fact that Complainant offers most of the same goods as Arizona Stamp & Coin, the entity for which Respondent developed the domain. See State Farm Mutual Automobile Insurance Company v Douglas LaFaive Claim Number: FA0008000095407 (holding that “[d]iverting Internet users, for commercial gain, to another web site by creating a likelihood of confusion with the [c]omplainant’s mark is evidence of registration and use in bad faith”); Luck's Music Library v. Stellar Artist Mgmt., NAF Claim No. 0095650 (finding bad faith where the respondent used a domain to advertise services similar to those of the complainant).
Although Respondent is not Arizona Stamp & Coin, the latter’s use counts as the former’s when inquiring into bad faith. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (holding that bad faith under 4(b)(iv) “does not need to be derived by the [r]espondent himself. The [r]espondent cannot infringe the [c]omplainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct”). Respondent’s domain was developed for, and is hosting a site that advertises one of Complainant’s competitors. Since Respondent remains in control of the site, Arizona Stamp & Coin’s bad faith goal of drawing Complainant’s customers to its site count as Respondent’s goals in registering and developing the site at Arizona Stamp & Coin’s behest.
For the foregoing reasons, the Panel finds Respondent registered and used the domain name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tucsoncoin.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: 01/07/2014
[1] Respondent’s suggestion, in its own Additional Submission, that Complainant’s Additional Submission amends the original pleadings in contravention of Supplemental Rule #7 is without merit. Complainant’s supplement properly and solely augments Complainant’s original filing and the arguments and evidence therein.
[2] Specifically, the Panel finds Respondent’s third-party declaration evidence regarding the acquired distinctive secondary meaning of Complainant’s marks directly responsive to Complainant’s declaration evidence on the subject contained in Complainant’s Additional Submission.
[3] The panel was careful to note, “This record might or might not prove sufficient to establish common-law rights in a contested trademark case in any particular jurisdiction, but the Panel finds that it is sufficient to meet the requirement for a ‘mark’ within the meaning of the Policy, paragraph 4(a)(i).” This Panel adopts the same limitations in finding Complainant has rights to the TUCSON COIN & AUTOGRAPH mark.
[4] The Panel finds it significant that the media coverage and awards extend beyond the Tucson (and even beyond the Arizona) area. Complainant provides media references to his mark in Numismatic News, as well as an award from the Better Business Bureau.
[5] See Respondent’s Exhibits B-J. In particular, Respondent fails to address whether the submitted responses include all the responses it obtained. In addition, several of the submitted responses answer that TUCSON COIN “means” or “connotes” a coin dealership in Tucson. That they don’t specifically name Complainant’s, or give his address, is not clear evidence that they are not thinking of his store.
[6] While this sign cannot demonstrate rights in its name as a mark, it is relevant in assessing the primary goods and services Complainant holds himself out as offering.
[7] Complainant’s choice to place “coin” before “autograph” in the mark similarly points to this conclusion.
[8] Under the Policy, the generic top-level domain (“gTLD”) “.com” does not add any additional component to the domain name. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 (finding the domain name <all-about-tamiflu.com> confusingly similar to the trademark “Tamiflu,” despite the addition of a gTLD and descriptive words); Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493 (finding <pomellato.com> identical to the complainant’s mark because the gTLD “.com” that follows the POMELLATO mark is irrelevant).
[9] Respondent’s consumer declarations, discussed above, show nine people may not be confused by the mark and domain name. However, as stated above, they are not decisively clear on this point, and therefore serve only to lessen the impact of Complainant’s evidence of actual consumer confusion.
[10] Although Arizona Stamp & Coin places “Stamp” before “Coin,” the evidence on record with regard to its website clearly suggests a stronger emphasis on gold and silver coins than on stamps. See Complainant’s Exhibit D.
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