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Generic Top Level Domain Name (gTLD) Decisions |
Discount Tire Co., Inc. v. Jeff Tezer
Enterprises
Claim Number: FA0204000112506
PARTIES
Complainant
is Discount Tire Co. Inc.,
Scottsdale, AZ (“Complainant”) represented by Craig Cardon, of Squire
Sanders & Dempsey LLP.
Respondent is Jeff Tezer
Enterprises, Oceanside, CA (“Respondent”).
The
domain name at issue is <tire.biz>,
registered with NameScout.com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
David
S. Safran as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 27, 2002; the Forum
received a hard copy of the Complaint on
April 27, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 20, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum
appointed David S. Safran as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The Complainant has alleged
that the domain name at issue, <tire.biz>,
is identical in sight, sound and spelling to the trademark and service mark in
which Complainant has rights as the owner of the
trademark and service mark TIRE.COM for automobile tires, wheels and tire
accessories; retail store and distributor services in the field of automobile
tires, wheels and
tire accessories; advertising in the sale and promotion of
tires, wheels and tire accessories. Complainant also
alleges that it has been continuously using the trademark TIRE.COM on the
above-identified goods and services in
U.S. commerce since at least as early as
1995, and that, as a result of such use and due to nationwide
advertising and marketing of Complainant’s products
and services under the mark TIRE.COM, TIRE.COM has
become distinctive as applied to Complainant’s goods and services.
Complainant alleges that
Respondent has no rights or legitimate interest in respect of the domain name
because the Respondent is not
the owner or beneficiary of a trademark or
service mark that is identical to the domain name <tire.biz>, that Respondent has not made any use or
preparation to use the <tire.biz>
domain name or a name corresponding to the domain name in connection with the
offering of any goods or services, that Respondent
is not using the <tire.biz> domain name in
connection with the offering or advertising of any goods or services over the
internet or otherwise and that the web
site linked to the domain name <tire.biz> is not an
active site nor is under construction.
Furthermore, the Complainant alleges that the domain name <tire.biz> was registered and/or
used in bad faith by Respondent, the Respondent having registered the domain
name <tire.biz>
primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to Complainant or to a
competitor of
Complainant, for valuable consideration in excess of Respondent’s
documented out-of-pocket costs directly related to the domain name,
as
evidenced by Respondent having registered at least as many as ten other domain
names on behalf of itself. Complainant has also
alleged that Respondent has
registered the domain name <tire.biz>
in order to prevent Complainant from reflecting the mark in a corresponding
domain name.
B.
Respondent
The
Respondent alleges that domain name at issue, <TIRE.BIZ>, is not identical in sight, sound or spelling to
the trademark or service mark in which the Complainant has rights. The
Respondent
alleges further that that the Complainant has no rights to any
trademark or service mark that contains the word tire, there being
numerous
registered trademarks that contain the word tire and the word tire is a common
word in the English language as well as other
languages, Webster's dictionary defining tire as: A
covering for a wheel usually made of rubber reinforced with cords of nylon,
fiberglass, or
other material.
C.
Additional Submissions
Neither
party has provided additional submissions to support their allegations.
Although Complainant has provided no
documented support for its position of use of the mark, TIRE.COM, in view of
the being no claim
to the contrary, it will be assumed that Complainant has
used the mark and the associated domain in support of its business of selling
automobile tires, wheels and tire accessories since 1995. Other than Complainants allegations based on
“information and belief,” no evidence has been provided to show that Respondent
has no
rights in the mark or that the Respondent registered the domain name at
issue in bad faith.
“Tire” is a generic when used with
respect to automobile tires, wheels and tire accessories and the Complainant
did not demonstrate
an identification of its mark such that there would be
recognition among Internet users that the TIRE.COM mark identified goods or
services unique to the Complainant. As
a result, it is held that Complainant has no protectable rights in the mark and
it is unnecessary to determine whether Respondent
has no rights in the mark or
the Respondent registered the domain at issue in bad faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name
is identical to a trademark or service mark in which the Complainant has rights;
and
(2) the Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
As
evidenced by the dictionary definition of the word “tire” and Complainant’s use
of the term “tire” in its own description of the
goods and services with which
its purported mark is used, it is unquestionable that the term “tire” is
descriptive when used in connection
the sale of automobile tires, wheels and
tire accessories and retail store and distributor services in the field of
automobile tires,
wheels and tire accessories.
Furthermore, the Lanham Act, 15, U.S.C. § 1052(e) precludes registration
of marks that are descriptive of the goods with which the
mark is used and an
application for the similar TIRES.COM
was refused by the U.S. Patent and Trademark Office on that basis (see,
U.S. Trademark Application 75784682, Filing Date August 25,
1999, Non-final action mailed December 10, 1999). Furthermore, Complainant has not demonstrated
any association of the mark by Internet users with the Complainant, while the
existence
of third party web sites for the domains <tire.net> and
<tires.net> suggest that such identification does not exist.
If
the Complainant has no rights in the mark, the Complaint must be dismissed. Fabric.com v. Song, FA 109701 (Nat. Arb.
Forum Oct. 26, 2002) (dismissing the Complaint because “fabric” is a generic
term in which no protectable rights
were demonstrated); Vietnam Venture Group v. cosmos consulting gmbh, FA 102601 (Nat.
Arb. Forum Feb. 6, 2002) (dismissing the Complaint because (1) the Complainant
did not hold a registered trademark
in VVG, and (2) the Complainant did not
demonstrate sufficiently strong identification of its mark such that there
would be recognition
among Internet users that the VVG mark identified goods or
services unique to the Complainant).
As noted above, because the mark is
generic and Complainant has not established any protectable rights in the mark,
the issue of Respondents
legitimate interests in the registration of the domain
name need not be reached. Am. Airlines
Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb. Forum Feb. 24,
2002)
Since the Complainant has failed, as
noted above, to establish protectable rights in a mark identical to the domain
name at issue,
it is not necessary to determine if the domain name <tire.biz>
was registered in bad faith. Fabric.com
v. Song, FA 109701 (Nat. Arb. Forum Oct. 26, 2002)
DECISION
The Panel finds that the Complainant has
not satisfied the requirements of Paragraph 4 of the STOP Policy, and
accordingly, orders
that the domain name at issue, <tire.biz> not be transferred to the
Complainant. Pursuant to STOP Policy
Paragraph 4(l)(ii)(3) subsequent challenges under this Policy shall be permitted.
David S. Safran Panelist
Dated: July 1, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1004.html