National Arbitration Forum




David Hall Rare Coins v. Texas International Property Associates

Claim Number: FA0702000915206



Complainant is David Hall Rare Coins (“Complainant”), represented by Keith A. Attlesey, of Attlesey & Thomlinson, LLP, 2252 Walnut Ave., Suite 100, Tustin, CA 92780.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370.



The domain name at issue is <>, registered with Compana, 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.


Darryl C. Wilson as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2007.


On February 15, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 February 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2007, 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 by e-mail.


A timely Response was received and determined to be complete on March 12, 2007.


On March 19, 2007, an Additional Submission was timely filed by the Complainant in accordance with Supplemental Rule 7 and was duly forwarded to the panel.


On March 19, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.



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



A.     Complainant


Complainant, David Hall Rare Coins & Collectibles, contends that it was created in 1991 and has continuously operated since that time as one of the nation’s largest rare coin dealers and has established common law trademark rights in the name DAVID HALL RARE COINS.  Complainant asserts that Respondent’s registered domain name, <>, is identical to Complainant’s mark and that Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not presently, nor has ever been commonly know by the name.  Complainant further asserts that Respondent registered and used the domain name in bad faith.


B.     Respondent


Respondent, Texas International Property Associates, contends that Complainant has not established or substantiated any trademark rights in the mark DAVID HALL RARE COINS, thus the domain name in dispute can not be identical or confusingly similar to any mark held by Complainant.  Respondent also states “Respondent has rights and legitimate interests in domains comprised of generic and/or descriptive terms, not associated with the Complainant’s business, and Respondent herein . . . used the disputed domain name in connection with a bona fide offering of services pursuant to ICANN Policy.”  Respondent further states that Complainant’s mark is unprotectable because “David” and “Hall” are unprotectable surnames and that the words “rare” and “coins” are unprotectable generic terms. Respondent also contends that Complainant is wrongfully trying to protect a trade name which is not entitled to the protection afforded a trademark or service mark.  Respondent further asserts that it has not used the disputed domain in bad faith.


C.     Additional Submissions


Complainant timely filed an Additional Submission where Complainant reasserted its common law rights to the mark DAVID HALL RARE COINS, contending that it provided direct evidence of the same based on acquired secondary meaning.  Complainant also further disputed the nature of Respondent’s business and argued that Respondent’s intentional diversion of Complainant’s potential customers to Respondent’s website for commercial gain indicates Respondent’s bad faith.


Respondent filed a “surreply” in which Respondent objected to Complainant’s Additional Submission on procedural grounds as being beyond the scope of the UDRP rules and the NAF rules.  Respondent reiterated its prior substantive objections to Complainant’s case based on the alleged generic nature of Complainant’s mark.



Complainant, David Hall Rare Coins & Collectibles, has been established at least since 1991, engaging in the business of dealing in rare coins.  Complainant purchases and sells rare coins and assists clients in building coin sets, conducting rare coin searches and providing price information.  In 1996 Complainant registered <> as its domain name to facilitate its online business and it continues to use that domain name at present.  In 2000 Complainant dropped “& Collectibles” and has operated since that time as David Hall Rare Coins.  Complainant does not hold a federal registration for a mark but claims common law rights in the name DAVID HALL RARE COINS based on evidence of secondary meaning.  Complainant has used the mark in its present or closely related form in excess of fifteen years, has engaged in extensive advertising of its business and is cited by various trade publications as an expert in the rare coin business.


Respondent created the disputed domain <> on February 4, 2005, and states that a search of the relevant section of the United States Trademark website would not have shown a registration for Complainant’s mark at that time.  Respondent states that it registers thousands of names that it feels are commonly used, generic or descriptive terms to which no party has exclusive rights.  Respondent claims to be in the business of providing locator services and claims to use the disputed domain name for a website that is an advertising portal access to a broad range of services.  Respondent states, “the fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.”  Respondent also states that in order . . . “to have been acting in bad faith, it would have had to anticipate with absolutely no notice or communication . . .  that a coin dealer in Santa Ana, California . . . would claim a common law trademark.”



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.


Identical and/or Confusingly Similar


Complainant does not hold a federally registered trademark for the mark in which it claims common law rights, namely DAVID HALL RARE COINS.  However the UDRP does not require a federal registration for a party to establish rights in a mark.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).  A Complainant may establish common law rights in a mark through evidence of secondary meaning.  See Hiatt v. Pers. Fan & Official Site Builders: We Build Great Sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established.”).  Complainant submitted evidence of extensive use of the claimed mark since 2000.  Complainant’s sales, advertising, and overall commercial use establishes sufficient common law rights in the DAVID HALL RARE COINS mark.  See, Inc. v. Quo, D2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).  The disputed domain is identical to Complainant’s mark since the removal of spaces and addition of the generic top-level domain “.com” is insufficient to differentiate <> from the mark DAVID HALL RARE COINS.  See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <> to be identical to complainant’s mark because “simply eliminate[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).


Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.  Respondent’s assertion that a trade name can not be protected to the same degree as a trademark is at odds with both trademark law and the realities of today’s commercial environment.


Complainant has established this element.


Rights or Legitimate Interests


Respondent is not commonly known by the domain name <> at least insofar as identified by WHOIS which list Respondent as “Texas International Property Associates.”  Respondent has tendered no evidence to indicate that it is presently, or was ever known by the disputed domain name thus indicating that Respondent is without any rights or legitimate interests in the 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 <> and <> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).  Respondent also admits to using the website designated by the disputed domain name as a locator service for various goods and services.  Complainant notes that the goods and services advertised by Respondent compete with Complainant’s own products.  Respondent’s use in such a manner does not constitute a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate non-commercial or fair use under Policy ¶4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2004) (“Respondent’s appropriation of the SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).  Respondent’s efforts to establish rights or legitimate interests based on the common nature of Complainant’s mark are misguided.  The analogy of Complainant’s mark to past disputed domains such as, and is unpersuasive as those domains were singular, common, generic words as compared to Complainant’s mark in the instant case which makes use of multiple words which together have acquired secondary meaning in a specific marketplace. 


Furthermore, an improper enterprise is not made legitimate by the fact that it generates positive cash flow.  Respondent’s use of the domain name as a portal to advertise rare coin goods and services that directly compete with Complainant’s business is not legitimized by its generation of advertising revenue.


Complainant has established this element.


Registration and Use in Bad Faith


Respondent’s use of the domain name in dispute to advertise its goods and services of Complainant’s competitors disrupts Complainant’s business by diverting potential customers of Complainant to Respondent’s website.  Respondent’s registration and use in this manner is in bad faith pursuant to Policy ¶4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <> in bad faith where the respondent has used the domain name to promote competing auction sites).  Competitors may be confused as to the affiliation, endorsement, or sponsorship of the rare coin products and services on Respondent’s website due to the <> domain name.  See Perot Sys. Corp. v., FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).  Respondent is in violation of to Policy ¶4(b); Complainant’s mark is protectable under common law, so Respondent’s registration and use is in bad faith under Policy ¶4(b)(iii).  Although Respondent contends that Complainant’s mark was not federally registered at the time Respondent adopted the domain name <> and thus Respondent lacked notice of Complainant’s claim to common law rights in the mark DAVID HALL RARE COINS, Respondent should have known of Complainant’s existence and inquired further regarding its potential use of the name.  A simple internet search at the time of Respondent’s adoption of the disputed domain would have undoubtedly returned responses directed at Complainant’s ongoing business by reference to the common law mark DAVID HALL RARE COINS as identified by various other websites and/or via Complainant’s own website <>.


Complainant has established this element.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant. 




Darryl C. Wilson, Panelist
Dated: April 9, 2007







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