Motor City Electric Co. v. Timo Petr
Claim Number: FA2011001920317
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mceoco.com>, registered with NameSilo, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2020; the Forum received payment on November 11, 2020.
On November 11, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <mceoco.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2020 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@mceoco.com. Also, on November 13, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has operated under the name Motor City Electric Co. and variants thereof, including MCE and MCECO, since 1969. Complainant asserts trademark rights in the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks through registration with the United States Patent and Trademark Office (“USPTO”) (MOTOR CITY ELECTRIC – Reg. No. 3,016,963, registered November 22, 2005; MOTOR CITY ELECTRIC CO. – Reg. No. 3,016,964, registered November 22, 2005). Respondent’s <mceoco.com> is identical or confusingly similar to Complainant’s marks as Respondent intentionally created the disputed domain name to confuse Complainant’s customers.
Respondent lacks rights or legitimate interests in the <mceoco.com> domain name as Respondent is using the disputed domain name to impersonate an employee of Complainant in furtherance of a phishing operation.
Respondent registered and uses the <mceoco.com> domain name in bad faith as Respondent uses the disputed domain name to impersonate an employee of Complainant in furtherance of a phishing operation.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Motor City Electric Co. (Complainant), of Detroit, MI, USA. Complainant is the owner of the domestic registration for the marks MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. which it has continuously used since at least as early as 1969 in connection with its provision of electrical systems installation and repair. Complainant claims to have used the variants MCE and MCECO since 1969 as well but provides no supporting evidence of such use since that time besides one (1) ad with a November 9, 2020 date. That ad uses Complainant’s registered MOTOR CITY ELECTRIC mark throughout, at times additionally referencing the company as MCE instead of using the full company name. Complainant also notes that is owns the domain name <mceco.com>. No other information is provided regarding that domain name. Unfortunately, the complaint as a whole reflects a simple cutting and pasting of the provider’s standard example complaint form paragraphs, merely supplementing those with a couple of self-serving sentences thereafter, none referring to any legal principles or past UDRP cases. Complainant’s contention regarding Respondent’s alleged phishing scheme is also unsupported by any evidence. Complainant provides only scant email company correspondence discussing an unidentified third party allegedly assuming the identity of one of its corporate officers.
Respondent is Timo Petr (Respondent), of Istanbul, Turkey. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <mceoco.com> domain name was registered on or about November 3, 2020.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts trademark rights in the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks through registration with the USPTO. Registration with the USPTO demonstrates a complainant’s rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Here, Complainant provides copies of its trademark registrations for the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks (MOTOR CITY ELECTRIC – Reg. No. 3,016,963, registered November 22, 2005; MOTOR CITY ELECTRIC CO. – Reg. No. 3,016,964, registered November 22, 2005). The Panel here finds that Complainant has rights in the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks per Policy ¶ 4(a)(i).
However, Complainant’s pleadings contain no assertions that Respondent is using either of its registered marks. Instead, it appears Complainant’s contentions are meant to assert common law trademark rights in the MCECO mark through Complainant’s <mceco.com> domain name. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Proof of common law rights requires evidence of acquired distinctiveness that indicates the mark in dispute has secondary meaning. See AOL LLC v. DiMarco, FA 1275978 (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.’”).
Secondary meaning generally requires evidence such as the length of the mark’s use, the number of sales under the mark, the nature and extent of advertising utilizing the mark, and proof of consumer association with the mark through surveys or media recognition. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).
Complainant provides no evidence of the type noted above. Complainant does indicate it owns the domain name <mceco.com> but says nothing more. The mere registration of a domain name does not automatically confer secondary meaning on the mark that is used in part or as the full domain name. There is no support for Complainant’s assertion that they have used MCE and MCECO since 1969. Complainant has no domestic registrations for either of those asserted marks and provides only one (1) example of the usage of the MCE mark where the date on that ad postdates the registration of the domain name in dispute.
The Panel finds that Complainant has failed to show that it has common law rights in the MCE and MCECO marks as proof of secondary meaning is lacking. Complainant has not shown that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights per Policy ¶ 4(a)(i).
The Complainant has NOT proven this element.
Because Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
See Above.
As the Complainant has NOT established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <mceoco.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
December 23, 2020
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