Modern Props, Inc. v. Stephen Wallis
Claim Number: FA0303000152458
Complainant is Modern Props, Inc., Los Angeles, CA (“Complainant”) represented by Jennifer Hughes, of Funsten & Franzen. Respondent is Stephen Wallis, New York, NY (“Respondent”) represented by Martin H. Samson, of Phillips Nizer LLC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <modprops.com>, <modprop.com> and <modprop.net>, registered with Go Daddy Software, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Diane Cabell, Paul M. DeCicco and Bruce Meyerson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 28, 2003; the Forum received a hard copy of the Complaint on March 31, 2003.
On March 31, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <modprops.com>, <modprop.com> and <modprop.net> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 28, 2003 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 email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on April 29, 2003.
Although the Complainant submitted an additional response which was untimely under Supplemental Rule 7, the Panel, having reviewed the objection filed by Respondent on May 23, 2003, in the exercise of its discretion, did consider it.
On May 16, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Diane Cabell, Paul M. DeCicco and Bruce Meyerson as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant Modern Props, Inc., which rents theatrical props and furniture, contends it is the sole registered owner of the mark “Modern Props” having registered the mark since July 2001. Complainant contends that it has used the mark in commerce since 1979 and has used it as a designation for its website since 1995. Complainant contends that the domain names at issue are confusingly similar to its mark and line of business. Complainant contends that Respondent should not be considered as having a legitimate right or interest in its mark because Complainant established its website six years before Respondent established its site, Respondent has no registered trademark of its name, and Respondent did not operate a theatrical prop rental business prior to 2001 (when Complainant established its website).
Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods and services. Complainant asserts that while it is a leader in the field of contemporary props, operating an established business with several locations, Respondent, on the other hand, does not have a listing in the Manhattan phone directory, is not registered with the New York Secretary of State and does not have a business license with the City of New York.
Respondent Stephen Wallis contends that for the past two years he has operated a prop rental business under the name “modprop.com” solely on the Internet, without either a store or telephone listing. Respondent states that Complainant was aware of Respondent’s business activities for almost two years before this complaint was brought “during which time Respondent continued to build its business around the <modprop.com> domain and mark.” Respondent contends that his domain names are not confusingly similar to the mark owned by Complainant, contending there are distinct differences between the meaning of the word “modern” and the word “mod.”
Respondent contends he has legitimate rights and interests in the domain name because he began using the domain name before any dispute with Complainant arose. Complainant contends he has been actively doing business using this domain name since 2001, renting cars, furniture and other props. Finally, Respondent contends he has not acted in bad faith. When registering the domain name in March 2001, he claims to have no knowledge of Complainant’s business or the use of its mark. He conducted a trademark search which did not reveal any marks which he believed he would infringe upon.
C. Additional Submissions
In its Additional Submission, Complainant contends that the disputed domain names are confusingly similar to its mark. Complainant argues that it is likely that Respondent was aware of Complainant’s business when Respondent started his business because Respondent chose a name that is substantially similar to Complainant’s business. Finally, Complainant contends that Respondent has acted in bad faith because Complainant’s website, which predated Respondent’s, was easily accessible to Respondent before he started his business and because both parties have similar businesses, this “creates a strong inference” that Respondent has intentionally attempted to divert business from Complainant.
Respondent began its business operations in March 2001 and conducted research to determine whether the “<modprop.com>” name infringed on any trademarks. Complainant first complained to Respondent regarding his use of the domain names in June 2001 and Complainant filed a trademark application for the MODERN PROPS mark on July 27, 2001.
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.
The domain name is sufficiently similar to Complainant’s trademark to allow Complainant to proceed with its Complaint. Notwithstanding the analysis by Respondent, “modprops” is a contraction or shorthand for “Modern Props.” “Mod” cononotes “modern” regardless of any other dictionary meanings, so the names are substantially similar in meaning. The names are also similar sounding, having but one syllable that is different (modern v. mod).
The record supports Respondent’s contention that when its business operations started in March 2001 research was conducted to determine whether the “<modprop.com>” name infringed on any trademarks. Complainant’s trademark was not discovered in this search because it had yet to file a trademark application for the MODERN PROPS mark which it did on July 27, 2001. Under these circumstances we agree with Respondent that his registration and use of the domain names for a prop rental business are legitimate. Even though Respondent may have been aware of Complainant’s business, or Complainant’s website (and there is nothing in the record to support this), such awareness does not establish that the use of a similar domain name violates the Policy.
Furthermore, Respondent has demonstrated legitimate use of his domain names and that he is commonly known by the <modprop.com> domain name, as he registered that name as his business identity with the New York County Clerk on April 20, 2001 and has since conducted his prop rental business under that name. The first complaint regarding the disputed domain names was not made until June 21, 2002. Accordingly, the record supports Respondent’s contention that before any notice of this dispute, Respondent had used, or was making preparations to use, the domain names in connection with a bona fide offering of goods or services.
Thus, we conclude that Respondent has demonstrated rights or legitimate interests in the domain names in accordance with Policy 4(c)(i).
The Complaint fails to show that Respondent registered and used the domain name in bad faith. In its Complaint, Complainant’s discussion of bad faith baldly states that Respondent has attempted to attract Internet users to its site. Complainant then mistakenly reasons that this creates an inference that Respondent thereby intended to divert traffic from Complainant’s website to Respondent’s website --an express indication of bad faith under the Policy. This is not enough. To show bad faith, Complainant must point the Panel to the particular facts and circumstance supporting its allegations. Because it does not, the Complaint fails on this prong of the Policy.
Having failed to establish all three elements required under ICANN Policy, the Panel concludes that relief shall be DENIED.
Diane Cabell, Paul M. DeCicco and Bruce
Dated: June 2, 2003
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Respondent’s failure to identify Complainant’s trademark rights likewise does not establish bad faith. For example, because registration of a trademark is not required to enforce common law trademark rights under United States law, the failure to detect an unregistered mark is ordinarily not a defense to infringement.