Majco, Inc. d/b/a Big Brand Tire Company v. Michele Moore
Claim Number: FA1202001430021
Complainant is Majco, Inc. d/b/a Big Brand Tire Company (“Complainant”), represented by Brian Kindsvater of Law Office of Brian Kindsvater, California, USA. Respondent is Michele Moore (“Respondent”), represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigbrandtires.com>, registered with Fabulous.com Pty Ltd.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2012; the National Arbitration Forum received payment on February 16, 2012.
On February 19, 2012, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bigbrandtires.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 March 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2012 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@bigbrandtires.com. Also on March 1, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on March 22, 2012.
On April 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges:
a. Complainant sells tires and related products and services under its BIG BRAND and BIG BRAND TIRES marks.
b. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its BIG BRAND mark (Reg. No. 2,195,058 registered October 13, 1998). See Complainant’s Annex B.
c. Complainant owns common law rights in the BIG BRAND TIRES mark.
d. Respondent registered the <bigbrandtires.com> domain name on November 18, 2003.
e. The <bigbrandtires.com> domain name is confusingly similar to Complainant’s BIG BRAND mark.
f. The <bigbrandtires.com> domain name is identical to Complainant’s BIG BRAND TIRES mark.
g. The <bigbrandtires.com> domain name resolves to a website that contains sponsored hyperlinks.
h. Respondent is not commonly known by the <bigbrandtires.com> domain name.
i. Respondent registered and uses the <bigbrandtires.com> domain name for the purpose of commercially gaining through Internet user confusion.
B. Respondent
Respondent contends:
a. Complainant cannot demonstrate common law rights in its alleged BIG BRAND TIRES mark.
b. Respondent’s <bigbrandtires.com> domain name is not identical or confusingly similar to Complainant’s BIG BRAND mark.
c. The disputed domain name contains generic and descriptive terms.
d. Respondent uses the <bigbrandtires.com> domain name for the legitimate purpose of offering information and hyperlinks relating to tires.
e. Complainant does not support its claim that Respondent is attempting to attract Internet users by creating confusion for commercial gain and Respondent denies doing such a thing.
Complainant has demonstrated its ownership of a registered mark, BIG BRAND. However, this is not a famous mark and is used primarily in portions of the State of California.
Respondent’s domain name, <bigbrandtires.com>, is certainly not identical. The issues are (1) whether Complainant has made a prima facie case that the name is confusingly similar or, (2) in the alternative, whether the Complainant’s use of “Big Brand Tires” has created a common law trademark for the benefit of Complainant.
Factually, there is no evidence of the possibility of confusion between the mark and the domain name. The mark, BIG BRAND, does not reference anything at all: not tires, automotive accessories, etc.. The mark could refer to clothing, groceries, or any other “big-branded” good. Therefore, the Complaint is fatally defective in this regard.
Further, Complainant has done little to demonstrate the existence of a common law mark, and nothing to demonstrate a common law mark beyond a narrow geographic area. A common law mark must be an identifier of goods or services. Evidence of any secondary meaning is missing.
Because Complainant has failed to establish a prima facie case under Policy ¶ 4(a)(i), the Panel does not need to discuss the other elements of the ICANN Policy.
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.
Clearly, the service mark, BIG BRANDS, and the domain name, <bigbrandtires.com>, are not identical. Neither are the two “confusingly similar.” The addition of the word “tires” to the two word, and two generic word, mark, constitutes the addition of a third generic word to a relatively weak mark. As prior panels have pointed out, if anything, the addition of another generic word avoids confusion. See, e.g., Primo Incense v. Spring.net, FA 96565 (Nat. Arb. Forum Apr. 12, 2001) (finding that the <primoincense.com> domain name was not confusingly similar to the complainant’s PRIMO mark despite the complainant’s business name of Primo Incense Distributing Company); see also Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
Complainant has also argued that it has acquired a common law mark, for it uses “BIG BRAND TIRES” as an alternative name or identifier for its auto parts business. The evidence Complainant provides in Complainant’s Annex D does not support common law rights because (1) the “awards” use Complainant’s company name and not the alleged mark; (2) the customer review only contains one entry and does not show who wrote it; (3) the Google search was limited to the Santa Barbara area; (4) the Facebook page does not support public recognition because anyone can create a Facebook page; (5) the video was a self-promotional piece done by Complainant; and, (6) the AdSense information only shows the popularity of the terms of Complainant’s alleged mark. See Respondent’s Annexes 4 and 5. Respondent further avers that Complainant attempted to register the BIG BRAND TIRE mark with the USPTO and that Complainant’s trademark application was rejected based on descriptiveness. See Respondent’s Annex 6. The Panel agrees with Respondent’s evidence and allegations, and concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the BIG BRAND TIRES mark and/or the disputed domain name is not confusingly similar to the BIG BRAND mark.
Having reached this conclusion, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (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)).
The Panel did not reach this issue.
The Panel did not reach this issue.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bigbrandtires.com> domain name REMAIN WITH RESPONDENT.
R. GLEN AYERS, Panelist
Dated: April 16, 2012
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