Restomod, Inc. v. Domain Privacy Group
Claim Number: FA1403001548333
Complainant is Restomod, Inc. (“Complainant”), represented by David Bramlett, California, USA. Respondent is Domain Privacy Group (“Respondent”), represented by Anthony Antonelli, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <restomod.com>, registered with Domain.com, 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.
Héctor A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2014; the National Arbitration Forum received payment on March 12, 2014.
On March 12, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <restomod.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 March 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2014 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@restomod.com. Also on March 14, 2014, 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 March 14, 2014.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff as Panelist.
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
1. Complainant states that it has a trademark RESTOMOD and that it uses the mark to sell automotive parts and magazines.
2. Complainant asserts that the domain name “Restomod” is identical to the trademark “Restomod”.
3. Complainant states that Respondent should be considered as having no rights to <restomod.com> because: 1) Restomod is trademarked. 2) the respondent has only redirected the domain name restmod.com to another website called hippieshop.com 3) The respondent had intentions of selling and profiting from restomod.com, which appeared for sale on sites such as Sedo and Godaddy.
4. Complainant states that Respondent has registered and used the domain name <restomod.com> in bad faith because “Restomod” is a trademarked name and the respondent has used <restomod.com> to redirect internet traffic to his website hippie.shop
B. Respondent
1. Respondent states that the word Restomod is common term used in the automotive restoration industry and he quotes a definition of the term from Wikipedia: “A restomod has portions of the car as they were when the car was first offered for sale as well as significant changes (updates). If any part of the car is updated, the car has been "restomodded," and not restored.”
2. Respondent claims that while Complainant’s trademark RESTOMOD was granted for automotive parts, he does not manufacture auto parts.
3. Respondent states he was the first person to register the domain name “restomod” in 1997. He adds that Complainant would have deliberately filed a “First use in commerce date” to predate his URL registration.
4. Respondent stated that he had had many unsolicited offers to sell the <restomod.com> domain over the last 17 years but never sold it.
5. Respondent stated that he have put the <restomod.com> domain on an auction site in the past to find out it’s perceived worth or just as an example to test the auction site.
6. Respondent states he had never had the intention to sell the <restomod.com> domain to Restomod, Inc. or his competitors.
7. Respondent further states that Mr. Bramlett called him and asked if he would consider selling the <restomod.com> domain name and he immediately told him it was not for sale. He adds that Mr. Bramlett further asked if he could make Respondent an offer via email but he never responded.
8. Respondent states that he has been an automotive enthusiast all his life. He further states that he built his first restomod in High School in 1989 and has owned and still owns vehicles that are considered “Restomods”.
9. Respondent states that he has regularly organized car shows through by business Hippie Shop, LLC for charity
10. Respondent states that cars are one of his passions and he intends to use the <restomod.com> domain name to display his own vehicles, as a blog or informational site.
Complainant is a company from California, U.S.A., which owns a registered U.S. mark RESTOMOD, which was registered in 2002 to distinguish automotive parts. Complainant did not provide evidence regarding the use of its mark prior to the filing date of the application.
Respondent is a person from New Jersey, U.S.A., who registered the <restomod.com> domain name in 1999. Respondent provided evidence that he is an automotive enthusiast and organizes car shows. He states he plans to use the <restomod.com> domain name to display his own vehicles, as a blog or informational site. It is to be noted that restomod is a common term used in the automotive restoration industry.
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; and
(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.
Complainant states that it uses the RESTOMOD mark to sell automotive parts and magazines. Complainant claims rights in the RESTOMOD mark based on its trademark registration with the USPTO (Reg. No. 2,599,645 filed April 27, 2001; registered July 23, 2002). Previous panels have determined that a USPTO registration confers rights in the corresponding mark dating back to filing. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); 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.”). Thus, the Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the RESTOMOD mark under Policy ¶ 4(a)(i) dating back to April 27, 2001.
Respondent registered the <restomod.com> domain name on July 6, 1999, prior to Complainant’s filing of its application.
Complainant’s trademark registration lists February 1, 1997 as the first use in commerce for the RESTOMOD mark. While this claim is made in Complainant’s trademark application, Respondent rebutted it.
The Panel notes that Complainant did not provide evidence of having acquired common law rights before the filing date of its trademark application. Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s marks. This provision necessarily implies that Complainants’ rights predate the registration of Registrant’s domain names. See Intermark Media, Inc. v. Wang Logic Corp., FA139660 (Nat. Arb. Forum Feb. 19, 2003) (holding that …to raise a claim against another party that would support transfer of a domain name registration, Complainant must demonstrate interests in a mark that predate the domain name registration. A finding to the contrary would obviate the intention of the Policy, which was prescribed to protect infringement of existing trademark rights through identical or confusingly similar domain name registration. See Phoenix Mortgage Corp. v. Tom Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that the Complainant’s rights predate the Respondent’s registration. . .of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).
Because the Panel has determined that Complainant has not satisfied this requirement of Policy ¶ 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain names or whether Respondent registered or used the domain names in bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <restomod.com> domain name REMAIN WITH Respondent.
Héctor A. Manoff, Panelist
Dated: April 4, 2014
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