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Morgan Tire & Auto v. Orthogonal Technologies [2000] GENDND 724 (19 July 2000)

National Arbitration Forum

DECISION

Morgan Tire & Auto, Inc. v Orthogonal Technologies

Claim Number: FA0006000094961

PARTIES

The Complainant is Morgan Tire & Auto, Inc., Clearwater, FL, USA ("Complainant"). The Respondent is Orthogonal Technologies, Inc., Madeira Beach, FL, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "DONOLSON.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

The Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/05/2000; The Forum received a hard copy of the Complaint on 06/05/2000.

On 06/12/2000, NSI confirmed by e-mail to The Forum that the domain name "DONOLSON.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/13/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/05/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 7, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed The Honorable Paul A. Dorf (Ret.) as Panelist.

The following documents were also filed in this proceeding and received and reviewed by this Panelist::

July 10, 2000 - Complainant’s Reply to the Response of Orthogonal Technologies, Inc. to the Complaint of Morgan Tire and Auto, Inc. Involving the Domain Name Don Olson.Com..

July 10, 2000 - Additional information submitted by Respondent in response to Complainant’s’s Reply to Response

July 11, 2000 - Complainant’s Reply to the Second Response of Orthogonal Technologies, Inc. to the Complaint of Morgan Tire and Auto, Inc. Involving the Domain Name Donolson.com

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent, by obtaining and using the domain names that are the subject of this Complaint, has created confusion among potential customers as the domain names are identical or confusingly similar to the Complainant’s trade name.

B. Respondent

The Respondent contends that they did not register the domain name don-olson.com to disrupt the Complainant’s business and that they did not acquire the domain name in bad faith.

FINDINGS

The Complainant is the owner and operator of 205 Don Olson Tire & Auto Center and Olson Tire Total Car Care tire and auto repair stores in Florida, Georgia, South Carolina and Nevada. Its predecessor interest began doing business in 1972 at Don Olson Firestone and in February of 1991 when the Complainant purchased the business, it began changing the name of the stores to Don Olson Tire and Auto Center, and operates stores under this name at the present time. On May 17, 1998, Complainant also began to use the name Olson Tire Total Car Care as the name of some of its stores, and still uses the service mark and trade name Don Olson in connection with those stores, as well as the Don Olson Tire & Auto Center Stores.

The Complainant has used the name "Don Olson" in connection with its businesses since acquiring the business in February 1991. Prior to Complainant’s purchase of the businesses, the name "Don Olson" was in use and had been in use since its predecessor in interest began doing business in 1972.

The Respondent states that they did not set out to interrupt the Complainant’s business, and that when the name "donolson.com" was registered in 1996 it was done so on behalf of one of the Respondent’s business acquaintances, because he wanted to set up an internet site for himself. At that time the Respondent, due to his Swedish heritage, also registered other common Swedish names. As Mr. Olson never paid for donolson.com, the name became the property of the Respondent.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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 Complainant’s business has been associated with the name "Don Olson" since 1972, and uses this name as its service mark and trade name in connection with its business.

The Respondent, Orthogonal Technologies, Inc. (now known as Rask, Inc.) owns the domain names donolson.com and don-olson.com. These domain names are the root of the Complainant’s business name, and could cause customer confusion when attempting to find Complainant’s web site. In fact, when the name donolson.com is entered, a link is established directly to one of the Complainant’s principal competitors, Tire Kingdom, Inc.

The Complainant and its predecessor have used the name "Don Olson" in its trade name and service mark since 1972.

The Respondent has failed to provide any evidence that it has a right or legitimate interest in the domain name donolson.com.

The Defendant leased the domain names donolson.com and don-olson.com (see companion case number FA#94962) to one of Complainant’s principal competitors, Tire Kingdom, Inc. The domain names were then linked to Tire Kingdom’s web site. The fact that this link exists proves that Rask and Tire Kingdom are trying to divert potential customers of Complainant to Tire Kingdom. Neither the Respondent nor Tire Kingdom have ever used the domain names in connection with an offering of goods or services of any kind, have never been known by the domain names, nor are they making a legitimate noncommercial or fair use the domain names, but instead are misleadingly diverting customers of Complainant to its competitors web site.

Also, the Respondent has registered both don-olson.com and donolson.com, in order to prevent the Complainant from registering any form of the name "Don Olson" to reflect its trade name or service mark.

These actions, either alone or combined, are evidence of Respondent’s registration and use of the domain name donolson.com in bad faith pursuant to Section 4.b.

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "donolson.com" be transferred from the Respondent to the Complainant.

The Honorable Paul A. Dorf, (Ret).

Dated: July 19, 2000