Tim Schroer v. Al Perkins
Claim Number: FA1412001597755
Complainant is Tim Schroer (“Complainant”), represented by Kurt Snyder, Indiana, USA. Respondent is Al Perkins (“Respondent”), represented by UDRP POLICE DBS, Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dirtyspokes.com>, registered with Wild West Domains, 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.
Hector Ariel Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2014; the National Arbitration Forum received payment on December 31, 2014.
On January 2, 2015, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <dirtyspokes.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@dirtyspokes.com. Also on January 5, 2015, 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 January 26, 2015.
On February 2, 2015 Complainant Additional Submission Complaint and Respondent Additional Submission Complaint were received.
On January 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector Ariel 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. In 2005 Complainant registered as an LLC in the state of Georgia under the name Dirty Spokes Productions, LLC.
2. Since that time Complainant has made continuous use of the dirtyspokes.com website and claims that it has developed common-law trademark rights in DIRTYSPOKES as a result of extensive, continuous, and substantially exclusive use of the mark over that period.
3. Complainant argues Dirty Spokes to be the leading southeastern athletic events company specializing in off road trail running and bike races in Georgia, Alabama, and North Carolina and to do approximately 30 different events on an annual basis. Through a partnership with XTERRA many of their races via a point system allow their racers to participate in “bigger” events across the US and internationally.
4. Complainant states that it used the disputed domain name to promote its products and services from 2005 until December 27, 2014, at which time its domain registration lapsed, after which it was registered by Respondent. Complainant contends that the disputed domain name is identical to its DIRTYSPOKES mark.
5. Complainant argues that Respondent has no legitimate interest in the disputed domain name since it is not known as DIRTYSPOKES and has not used that mark.
6. Complainant alleges that Respondent is in the business of securing and selling domains; is currently in possession of over 1400 domains and has engaged in a pattern of registering domain names in bad faith, as evidenced by prior decisions under the policy with this forum. Complainant asserts that Respondent registered the domain name with the sole purpose of selling it to Complainant at a substantial profit.
7. Complainant argues that Respondent registered and is using the disputed domain name in bad faith.
8. Complainant states that after it contacted Respondent concerning the domain name, Respondent sought to sell the domain name to Complainant for approximately $10,000 and that this amount far exceeds the amount necessary to register said domain.
B. Respondent
1. Respondent alleges that the domain name consists of the common English words "dirty" and "spokes" and that these words are not distinctive.
2. A "spoke" refers to one of a number of rods radiating from the center of a wheel, commonly found in mountain/road bikes and due to the nature of the activity, it is a common occurrence that bike spokes break or become "dirty" due to debris or neglect and is an issue regularly discussed in bike forums. Thus, Complainant should bring forth substantial evidence of acquired distinctiveness or secondary meaning in order to establish common law rights to overcome the first hurdle of the policy.
3. Respondent argues that evidence brought by Complainant is not sufficient enough to prove that the DIRTY SPOKES has become a distinctive identifier associated with the complainant or its goods or services and that it has acquired secondary meaning.
4. Respondent admits being in the "business" of acquiring descriptive and generic domain names for resale or for existing clients.
5. Respondent has no intention of operating a business to offer services with the domain name. The Respondent merely provides the goods and services in the form of a domain which allows individuals or companies to put their plans into action.
6. Respondent argues that when a domain name comes onto the market, registrants have no way of knowing that it belonged to a trade mark holder, and should not be required to assume in all cases that it was inadvertently allowed to lapse.
7. Respondent has not utilized an automated system but a conscious effort to secure a domain at great time and costs to the Respondent because of its descriptive features. Thus, Respondent is not subject to a higher standard of investigating whether their domains are identical or confusingly similar to the third party marks
8. Respondent argues that both parties do not share a close geographical proximity to one another (Georgia and the island of Jersey, Europe).
9. Respondent alleges that Complainant was not able to demonstrate that the Respondent registered the domain to capitalize on the Complainant's mark.
10. Respondent argues that he is not attempting to compete with Complainant, disrupt its business, or prey on its mark in any way; therefore there are no instances of bad faith registration or use in the current case.
11. The correspondence that took place between the parties was instigated by Complainant and Respondent's offer was in response to the Complainant's inquiry.
12. The domain was acquired through auction when they failed to renew it.
C. Additional Submissions
Complainant.
1. Complainant submitted some additional evidence in the Additional Submission to prove its common law rights and news articles which backs as far as 2006.
2. Complainant argues most of the Google’s search results about “Dirty Spokes” are third party references to the Complainant.
3. Complainant argued that Respondent either did nothing to research the mark or did so knowing that the Complainant was using the mark. Based on the Google and Bing results, Complainant argues that it would take a matter of seconds to become aware of the fact that the Dirty Spokes mark was being used by the Complainant.
4. Complainant refutes the Respondent’s argument about the very small area of use of the trademark (Georgia) and added that Dirty Spokes has a partnership with XTERRA that has a much broader reach. Moreover, the localized use of the disputed domain is irrelevant in this case since Respondent is not claiming to use the trademark in a localized area of Europe.
Respondent.
1. Respondent argues that Complainant failed to provide sufficient proof of common law rights and to show that it has provided goods or services under the unregistered mark and acquired a reputation such that members of the public associate those goods or services with the Complainant exclusively and not others.
2. Respondent argues that no evidence was submitted to show that the Complainant, Mr. Tim Schroer, is associated with the mark or the company Dirty Spokes Production.
3. Respondent argues that where it is true that a combination of common words can acquire trade mark status, they are still free for public use when not used in a way that would infringe the mark, as is the case here.
4. Respondent is not using the website and the disputed domain name to advertise products or services that compete with the Complainants. The website does not intend to imitate the Complainant’s in any way.
5. Respondent argues that there is no evidence on the record to demonstrate that Respondent registered the domain name with the clear-cut intention of capitalizing on the goodwill created by Complainant.
Dirty Spokes Productions, LLC. was registered by Complainant in 2005 and the domain name <dirtyspokes.com> was used by Complainant since at least 2006.
Respondent registered the disputed domain name when it lapsed and try to sell it back to Complainant for $10,000.00, which far exceeds the amount necessary to register the domain name.
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.
Even though Complainant does not have a registration for DIRTYSPOKES mark, the Panel finds that a valid trademark registration is not a prerequisite to satisfy Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (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 ¶ 4(a)(i)).
Complainant claims to own the DIRTYSPOKES mark through common law rights and purports to use the DIRTYSPOKES mark in connection with its business as the leading southeastern athletic events company, specializing in off road trail running and bike races.
Complainant submitted evidence to prove that Dirty Spokes Production LLC was registered in the state of Georgia in 2005. (See Complaint Annex 17075944, in which is also mentioned that Timothy Schroer is the registered agent. It proves his association with the company Dirty Spokes Production).
Moreover, Complainant filed evidence to prove use of DIRTY SPOKES and the <dirtyspokes.com> domain name at least from 2006. (See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant has submitted evidence about a lot of different merchandizing products which show an important investment to promote his services. This Panel finds that Complainant has demonstrated that it has established rights in the DIRTYSPOKES mark. (See Cybertania, Inc. v. Right Mobile, Inc. Do-main Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) in which a panel found that a UDRP complainant had acquired secondary meaning sufficient to establish common law rights in a mark under Policy ¶ 4(a)(i) where that complainant had invested substantial resources in promoting the goods and services marketed under the mark over an extended period).
This Panel points out the evidence submitted by the Complainant which includes references such as “Dirty Spoke Race” which shows secondary meaning. (See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Finally this Panel finds that Respondent recognized Complainant’s business and his domain name when answering Complainant’s e-mail regarding the purchase of the domain name. On December 29, 2014 Respondent said “Hey Tim You must have a busy little business i have had loads of emails asking if you are still in business”.
This Panel finds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <dirtyspokes.com> domain name is identical to Complainant’s DIRTYSPOKES mark. Since the disputed domain name differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com”, this Panel finds that such a small change to a mark is irrelevant to Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As such, the Panel finds that the <dirtyspokes.com> domain name is identical to Complainant’s DIRTYSPOKES mark.
The Panel finds the first element of the Policy is satisfied.
The Panel finds that Complainant have made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant has submitted evidence which shows that Respondent has not actually made an active use of the disputed domain name and that Respondent has registered it for sale. Respondent has confirmed it.
Moreover, the WHOIS information for the disputed domain name lists “Al Perkins” as the registrant of the disputed domain name and this Panel finds that Respondent is not commonly known by the disputed <dirtyspokes.com> domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent has not actually made an active use of the disputed domain name and this Panel finds that Respondent has not provided any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name which indicates a lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Previous panels have agreed with this argument. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
This Panel finds that <dirtyspokes.com> is not a generic term domain name. No concrete evidence was filed in this respect. For this reason, Respondent’s arguments about having rights and legitimate interests in the disputed domain name because Respondent is in the business of buying and selling generic domain names are not accepted by the Panel.
This Panel also finds that Respondent’s failure to make an active use of the <dirtyspokes.com> domain name demonstrates a lack of a bona fide offering of goods and services, and a lack of a noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds the second element of the Policy is satisfied.
The evidence submitted by the Complainant proves that Respondent attempted to sell the disputed domain name back to Complainant for $10,000.00, which far exceeds the amount necessary to register the domain name. See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Moreover, this Panel finds that Respondent’s behavior has become somewhat of a pattern in that he has had other UDRP and WIPO decisions against him. See, e.g., Sonny Gambhir v. Al Perkins, FA 1507793 (Nat. Arb. Forum July 9, 2013); Teledrift Co. v. Al Perkins, FA 1423203 (Nat. Arb. Forum Jan. 12, 2012). Previous panels have found that when a Respondent is on the losing end of many UDRP decisions, such behavior seems to create a sort of pattern of bad faith registration and permeates the panel’s instant bad faith consideration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
This Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i)and 4(b)(ii).
Respondent contends that the <dirtyspokes.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s DIRTYSPOKES mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.
This Panel finds that Respondent did not submit sufficient evidence to show that the domain name currently in dispute is a generic one. The evidence refers to “Cleaning Spoked Wheels”, “Clean Spokes”, “Clean Motorcicles Wheel Spokes”, “Clean Aluminum Bicycles Wheels”, etc. Thus, the Respondent’s argument about selling it for such a high price because it was a valuable generic domain name is not accepted by this Panel.
Respondent claims it was unaware of Complainant or its alleged DIRTYSPOKES mark at the time of domain name registration, and argues that Complainant operates within a small region within the United States, while Respondent is located in Jersey.
In addition, Respondent argues having utilized a conscious effort to secure a domain at great time and costs and admitted being in the "business" of acquiring descriptive and generic domain names for resale.
Thus this Panel finds that Respondent was “willfully blind” in failing to make a quick and simple enquiries to find out if DIRTY SPOKES belonged to third parties. (See Sumol+Compal Marcas, S.A. v. BuyDomains.com, WIPO Case No. D2013–0566. “On the evidence provided, the Panel concludes that the Respondent was “willfully blind” in failing to make these enquiries…”. “Furthermore, while the Respondent may not have had actual knowledge of the Complainant, it would have been aware of the traffic that the Dispute Domain Name was generating at the time it decided to acquire the Disputed Domain Name. It would be implausible that a professional domain name trader such as the Respondent would not have reviewed traffic details and search engines results before valuing and acquiring the Disputed Domain Name”).
The Panel finds the third element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dirtyspokes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff, Panelist
Dated: February 10, 2015
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