Lee A. Iacocca v Texas International Property Associates

On November 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.

RELIEF SOUGHT

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

PARTIES CONTENTIONS

A. Complainant

Complainant alleges as follows:

The domain name <leeiacocca.com> is identical or confusingly similar to Complainant’s registered, pending and/or common law trademarks LEE IACOCCA and IACOCCO, as well as IACOCCA INSTITUTE and IACOCCA Foundation.

LEE IACOCCA (U.S. Trademark Application No.77/265,573) was filed on August 27, 2007 and claims a first use date of April 1994 for “margarine spread; spread containing one or more of olive oil, canola oil, and butter; olive oil spray.”

Complainant further alleges that ownership of a trademark registration for LEE IACOCCA and IACOCCA are not required in order for Complainant to demonstrate his rights in the marks.

Complainant, through Complainant’s licensees, has used the LEE IACOCCA Mark in connection with a line of food products since at least as early as April 1994; and has used the LEE IACOCCA mark in connection with public speaking and general celebrity services since at least as early as 1980

Complainant has used the IACOCCA Mark himself, or through licensees, in connection with the provision of educational services under the IACOCCA INSTITUTE since at least as early as 1988 and in connection with the provision of charitable fund raising services under the IACOCCA FOUNDATION mark, since at least as early as 1984; has used the IACOCCA mark in connection with the provision of printed publications, namely books, since 1984; and has used the IACOCCA mark in connection with public speaking and general celebrity services since at least as early as 1980.

Complainant alleges use of these marks more than twenty (20) years prior to Respondent’s registration of the subject domain name on January 30, 2005. Moreover, Complainant alleges that Complainant, under the names of “Lee Iacocca” and “Iacocca” is a famous personality and world-renowned business icon, author and philanthropist. He is famous for being the president of Ford Motor Company, and the former president of Chrysler Corporation. Complainant has authored numerous books and began the IACOCCA FOUNDATION in 1984, which performs charitable foundation services related to researching and finding a cure for diabetes. Complainant co-founded the IACOCCA INSTITUTE with Lehigh University in 1988, which provides educational services focused on developing global leaders in the United States and abroad, and Lehigh University named IACOCCA Hall after Complainant. Complainant co-founded the Olivio Food Products Company, and in connection therewith, has appeared in a series of well-known television ads in the early 2000’s. An Internet search for “Lee Iacocca” and “Iacocca” produced thousands of responses.

Complainant alleges that Complainant has rights in the LEE IACOCCA and IACOCCA marks by virtue of Complainant’s and/or licensees long, exclusive and continuous use of the marks in commerce over the past decade and longer. To the extent that Complainant’s marks are not inherently distinctive, said use has resulted in Complainant’s marks having acquired distinctiveness.

Complainant further alleges that the above enumerated usages of the terms LEE IACOCCA and IACOCCA evidence that Complainant is a public figure, and that such public recognition proves the secondary meaning that Complainant enjoys, in both his name and surname, which is sufficient to establish common law trademark rights in Complainant’s name and surname.

The mark IACOCCA INSTITUTE (U.S. Trademark Registration No. 3,023,162, registered on December 06, 2005) claimed a date of first use of 1988 for “educational services, namely business school.”

The mark IACOCCA FOUNDATION (U.S. Trademark Application No. 77/265,579 was filed on August 27, 2007) and claims a date of first use of 1984 for “charitable fundraising services; providing educational scholarships; providing grants and fellowships to individuals and institutions for purposes of medical research.”

Complainant alleges that Respondent has no rights or legitimate interests in the subject domain name for the following reasons: Respondent has never been commonly known by the trademark or tradename “Iacocca,” either as evidenced by an Internet search, or as the registrant for subject domain. Respondent’s business name of Texas International Property Associates neither contains the disputed mark, nor carries a d/b/a containing the disputed mark. Complainant attests that Complainant has never granted Respondent any right to use Complainant’s IACOCCA mark for any reason.

Complainant alleges that the subject domain name of <leeiacocca.com> is identical to Complainant’s LEE IACOCCA mark and substantially identical to Complainant’s IACOCCA mark.

Complainant alleges that Respondent has not used the domain name either in connection with a bona fide offering of goods and services, or for a legitimate non-commercial or fair use. The disputed domain name resolves to a website that contains pop-up advertisements and banner advertisements, which link to third party websites, including numerous such advertisements which are related to automobiles, and in particular, to DaimlerChrysler related websites.

Complainant lastly alleges that Respondent registered the disputed domain name in bad faith, as evidenced by the following:

Respondent knew of, or should have known of, Complainant’s rights in the IACOCCA and LEE IACOCCA marks prior to registering the subject domain name because of Complainant's world -wide celebrity and his extensive common law use of his IACOCCA and LEE IACOCCA marks.

Respondent’s use of the subject domain name resolves to a website that contains pop-up advertisements and pay-per-click banner ads.

Respondent is using the <leeiacocca.com> domain name to re-direct Internet users seeking information on Complainant, or his goods and services, to an unrelated commercial website, displaying links to various websites, and for which Respondent likely receives referral fees, for each consumer it diverts to third party websites.

Respondent has been adjudged to be a cybersquatter by at least forty one (41) previous UDRP Panels, resulting in the transfer of the domain name registered by Respondent.

B. Respondent

Respondent contends as follows:

Respondent contends that there is no need for the Panel to determine similarity or confusion when Complainant has no registered trademarks and Complainant cannot show any rights to a common law mark.

Respondent states that Complainant has a mere pending registration to market margarine. And that it is well settled that pending trademark applications confer no rights; but that it is necessary to show use of the name as an indication of the source of goods or services supplied in trade or commerce; and that, as a result of such use, the name has become distinctive of that source. And that some decisions have required supporting evidence to support a finding of common law rights. Respondent labels the affidavit of Lee Iacocca as self-serving.

Respondent asserts that it has rights and a legitimate interest in the disputed domain name, in that the Respondent has used the disputed domain name to provide a web portal which provides users with a search function, as well as ads provided through the Google Adsense program. Respondent alleges that the advertisements and links in question are provided pursuant to Google’s terms, and are not controlled by the Respondent.

Respondent states that Respondent may fairly use descriptive or generic terms or acronyms of a commercial domain name, regardless of whether they are federally registered.

Respondent alleges that Complainant has not demonstrated that the disputed domain was registered and is being used in bad faith.

Respondent states that Complainant has failed to evidence a showing that consumers have been confused.

Respondent cites a former WIPO Panel (McMullen Argus Publ’g Inc. v. Moniker Privacy Servs. / JayBean, MDNH, Inc., D2007-0676 (WIPO July 24, 2007) for the proposition that pay-per-click websites are not, in and of themselves, unlawful or illegitimate. Respondent states that the disputed domain does not “target” a trademark, and thus the pay-per-click revenue does not constitute evidence of bad faith.

C. Additional Submissions

Complainant makes the following assertions in its timely Additional Submission:

Complainant has demonstrated that it owns common law trademarks rights in LEE IACOCCA. Use of LEE IACOCCA directly on the Olivio food product packaging unequivocally supports Complainant’s claim of common law trademark rights in LEE IACOCCA. Moreover, the substantial fame that Complainant enjoys in his persona and in the “Lee Iacocca name” only supports the conclusion that the LEE IACOCCA trademark is a strong mark, where the public is even more likely to recognize LEE IACOCCA as a trademark signifying a single source of Complainant’s goods and services.

Complainant further avers that Respondent has no rights or legitimate interest in the <leeiacoccca.com> domain name where Complainant’s LEE IACOCCA trademark is not a generic phrase or dictionary term. Rather, LEE IACOCCA is the trademark of Complainant, used for many years on, for example, packaging for Complainant’s food products and on his numerous books.

Complainant asserts that Respondent has adopted the <leeiacocca.com> domain name in bad faith, in that Respondent has inappropriately relied on prior UDRP decisions that involve domains consisting of generic or descriptive terms, as opposed to legitimate trademarks like LEE IACOCCA.

FINDINGS

Complainant has established that the domain name <leeiacocca.com> registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered and is being used in bad faith.

DISCUSSION

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

At the time of filing this Complaint, Complainant did not have a registered trademark in the mark LEE IACOCCA. Complainant’s trademark application for the mark LEE IACOCCA (Ser. No. 77/265,573) was filed with the United States Patent and Trademark Office (“USPTO”) on August 27, 2007. This filing claims a first use date of the mark of April, 1984.

Therefore, for the purpose of this UDRP proceeding, Complainant asserts common law rights in the LEE IACOCCA mark, which is also Complainant’s personal name. Complainant is a famous businessman, philanthropist, author, and celebrity who also uses the LEE IACOCCA mark in connection with charitable services, educational services, food products, published works, and public speaking services.

In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.

Here, Complainant states in his Complaint that the mark LEE IACOCCA has been used with food products since at least as early as 1984; and in connection with public speaking and general celebrity services since at least as early as 1980.

While the Panel was not particularly pleased with having to dig out supporting statistics evidencing consumer association of the name Iacocca with the source of the goods, from the Declaration and Exhibits (rather than finding such evidence extant in the Complaint, or at least in the Additional Submission) the appended evidence is exhaustive and conclusive as to the not-to-be-denied association between the marks and the source of the goods.

For example, the Declaration of Lee Iacocca in Complainant’s Exhibit 2 cites that:

“I am former President of the Ford Motor Company and former CEO of Chrysler Corporation. In 1984, I created the IACOCCAFOUNDATION, which funds cutting edge research on diabetes. I founded the Olivio Premium Products Corporation in 1993 to bring LEE IACOCCA OLIVIO olive oil based food products to the public. In 1988 I worked with my alma mater, Lehigh University, to jointly form the IACOCCA INSTITUTE, an educational program dedicated to developing future global business leaders. In 1991, Lehigh University dedicated IACOCCA HALL in my honor. I have published numerous books, including “Talking Straight” and “Where Have All the Leaders Gone”? My memoir, “Iacocca: An Autobiography” published in 1984, went on to become the best selling non-fiction hardcover book of 1984 and 1985.”

An appended Wikipedia article cites Iacocca’s creation of the Ford Mustang and the Chrysler minivan.

A Report from the 20^th Anniversary of the Iacocca Foundation (dated 2004) in its history section states that, in connection with Chrysler’s turnaround, that Iacocca personally appeared in an aggressive television advertising campaign, and that after three years (i.e. 1984), Chrysler announced a profit of $2.4 billion. This Report further states that the Foundation has contributed 20 million dollars to support innovative diabetes research over the course of 20 years, commencing in 1984, and that (in 2004) the Iacocca alumni consists of 88 fellows and 16 principal investigators, spanning the globe. This Report also states that Lee Iacocca appeared in a series of television commercials in the summer of 2005 on behalf of the Chrysler Corporation, and donated the $1.5 million proceeds to the Join Lee Now campaign for diabetes research. A news release from the Iacoccca Foundation, dated August 2, 2006, states that the Iacocca Foundation will provide 12 million dollars to multiple research projects aimed at finding a cure for diabetes.

Exhibit C of Complainant’s Complaint consists of newspaper articles. A composite of several such articles stated that Iacocca headed a four year fund-raising programs for Lehigh University, culminating in $58 million dollars and the purchase of a new 742 acre campus. Attending the dedication (in which Lehigh names campus tower for Iacocca) were representatives from federal, state and local governments, corporate leaders and Lehigh alumni, friends, students, faculty and staff. The IACOCCA INSTITUTE at Lehigh University advertises and markets to global business leaders and to future leaders through its Global Village Program.

In accordance with Exhibit G to the Complaint, Lee Iacocca’s Olivio Premium Spread sells in 68% of U.S. markets and sales have been around $7 million annually. A magazine (Calabus) article, also in Exhibit G, cites how Iacocca spearheaded a campaign for restoration of the Statue of Liberty and Ellis Island, which raised in excess of $530 million, garnered not only from corporate sponsors, but also from a grassroots outpouring of mothers, fathers and kids sending in their lunch money. Iacocca also states in this article, that he receives $75,000 for 30 minute speeches, for the Washington Speakers Bureau. Currently, Lee Iacocca has written a book, “Where Have All the Leaders Gone?” published by Scribner in hardcover in April of 2007.

The above cited recitation of media saturation of the Iacocca name and persona, as well as his high visibility in grassroots campaigns, philanthropic activities and educational institutions constitute credible evidence to establish that the LEE IACOCCA marks function as a specific identifier of Complainant’s products and services, such as to establish that the marks have a secondary meaning in the minds of consumers. The Panel therefore finds, that this secondary meaning in the LEE IACOCCA marks establishes common law rights for purposes of Policy 4(a)(i). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that a trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law.”)

As the Panel has found that find that Complainant has established common law rights in the LEE IACOCCA mark, the Panel further finds that Respondent’s <leeiacocca.com> domain name is identical to Complainant’s mark. Respondent’s disputed domain name contains Complainant’s mark in its entirety and merely omits the space separating the terms of the mark and adds the generic top-level domain “.com.” The Panel finds that neither change is sufficient to differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy & 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> 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”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).

Furthermore, the Panel finds that Respondent’s <leeiacocca.com> domain name is confusingly similar to Complainant’s IACOCCA INSTITUTE mark. Respondent’s domain name contains the dominant feature of Complainant’s mark and adds the name “lee” along with the gTLD “.com.” Thus, the Panel finds that Policy ¶ 4(a)(i) is satisfied. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademark CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”)

Rights or Legitimate Interests

Once Complainant makes a prima facie case in support of its allegations, the burden of production shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere

assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist)

Complainant offers credible evidence that Respondent is using the confusingly similar <leeiacocca.com> domain name to operate a website featuring links to various competing and non-competing commercial websites from which Respondent presumably receives referral fees. The Panel finds that such commercial use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel is also not persuaded by Respondent’s defense that Respondent “may fairly use descriptive or generic terms or acronyms of such as a commercial domain name, regardless of whether they are federally registered” as the Panel is not convinced that the IACOCCA or LEE IACOCCA marks are descriptive or generic. To the contrary, these marks only acquired secondary meaning as a result of massive advertising. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s LEE IACOCCA or IACOCCA INSTITUTE marks. The Panel finds no evidence in the record, that Respondent is either commonly known by the <leeiacocca.com> domain name, or is licensed to use the domain name, such as to satisfy the requirements of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

Registration and Use in Bad Faith

Complainant contends that Respondent is using the <leeiacocca.com> domain name to operate a website featuring links to various other commercial websites for the purpose of collecting click-through fees for each Internet user connected to another website. The Panel finds that Respondent’s use of a domain name which is identical or confusingly similar to Complainant’s marks, is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. Respondent is clearly hitching a free ride celebrity endorsement from a famous automobile tycoon to bolster the credibility of Respondent’s automobile and other diversionary websites. Such use may be found to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, 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).

Finally, this Panel finds that due to the massive amount of media advertising of the disputed marks, as well as of the federal registration of some forms of the marks, that it is only reasonable to presume that Respondent had at least constructive knowledge of the contested marks, in advance of the disputed domain name registration in 2005. This Panel further finds that Respondent’s registration of the domain name <leeiaccoca.com>, with such actual or constructive knowledge of Complainant’s rights, amounts to bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi v. DDI Sys., FA 118313 (Nat. Arb. Forum, Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

DECISION

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

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

Carol M. Stoner, Esq., Panelist Dated: November 29, 2007

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