Jack Ingram Nissan v. Domain Admin / Protected Whois
Claim Number: FA1312001532729
Complainant is Jack Ingram Nissan (“Complainant”), represented by J. Evans Bailey, Alabama, USA. Respondent is Domain Admin / Protected Whois (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jackingramnissan.com>, registered with WEB BUSINESS, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2013; the National Arbitration Forum received payment on December 5, 2013.
On December 4, 2013, WEB BUSINESS, LLC. confirmed by e-mail to the National Arbitration Forum that the <jackingramnissan.com> domain name is registered with WEB BUSINESS, LLC. and that Respondent is the current registrant of the name. WEB BUSINESS, LLC. has verified that Respondent is bound by the WEB BUSINESS, 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 December 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2013 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@jackingramnissan.com. Also on December 10, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 asserts trademark rights JACK INGRAM NISSAN and alleges that the disputed domain name is confusingly similar or identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the name JACK INGRAM NISSAN for 25 years in association with its automobile dealership in Montgomery, Alabama.
2. The disputed domain name was registered on August 23, 2008.
3. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
4. Respondent failed to answer a demand letter from Complainant prior to commencement of these proceedings.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
For reasons which follow, this case warrants treatment of the alleged trademark rights and the related question of Complainant’s standing to bring these administrative proceedings as a preliminary issue.
It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006). The Complaint does not include any evidence that JACK INGRAM NISSAN is a registered trademark.
Nevertheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant asserts trademark rights in the name JACK INGRAM NISSAN by reason of its use for more than 25 years in association with its automobile dealership in Alabama. Unregistered or so-called common law trademark rights can arise through use and reputation if there is adequate proof of secondary meaning.
Panel observes that the alleged trademark comprises a personal name, Jack Ingram, together with an automobile manufacturer’s name, Nissan. The owner of the NISSAN trademark is not a party to these proceedings, nor is there any direct evidence that Complainant has been licensed or authorized to use the NISSAN trademark. Accordingly, a question arises as to Complainant’s standing to bring these proceedings which potentially rest on a trademark owned by a third party.
Panel is aware of the great many UDRP decisions which have grappled with complaints against domain names which have consisted of a string of trademarks or brand names (most frequently from the pharmaceuticals business). Many times the complainant has only been able to lay claim to rights in one of the trademarks in the string. Sometimes the other trademarks have been owned by competitors in business to that complainant.
Earlier decisions have gone in different directions, but often panels have found that a complainant need only show rights in one of the trademarks. Other panels have required that the complainant’s trademark must comprise a significant portion of the composite domain name. Others panels still have required the complaint to be amended in some way or another.
This Panel takes the view that paragraph 4(a)(i) of the Policy must be understood pragmatically, bearing in mind the spirit and purpose of the Policy, sometimes allowing complainants a degree of latitude in their claim to trademark rights which would be lower than the expectations of a court.
In this case Complainant states that it has used the JACK INGRAM NISSAN mark for over 25 years. The evidence includes a photograph of a plaque showing that in 2003 Nissan North America Inc. congratulated Jack Ingram Motors, Inc. for having served 35 continuous years as a Nissan dealer. There is nothing to cause Panel to question the authenticity of that plaque and so, as a matter of common sense, equally there is nothing to cause Panel to think that Complainant is anything other than an authorized user of the NISSAN trademark.
Assuming then that Complainant is entitled to use the NISSAN trademark, it must still show common law trademark rights in the composite name JACK INGRAM NISSAN. Panel notes that, as a matter of law, there is no single definition of common law or unregistered trademark rights. It has been said that a complainant has common law rights if it could sustain an argument of passing off. To do so, a reputation must be proved. A reputation will depend on use and the precise extent of the use required will depend on the name used (as discussed) and the nature of the business itself.
In many cases, the injunctive or other relief for passing off granted by a court will be of national effect however passing off actions have frequently succeeded based on regional or even local reputation or goodwill. So, for example, the courts have over the years shown willingness, in the right circumstances and provided with cogent evidence, to uphold passing off claims brought by localized service providers such as restaurants, hotels, bars, builders and, relevantly, motor vehicle dealerships. These are principles which have been adopted by panelists applying this Policy and so, for example, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Gauged against those statements, the evidence before this Panel does not go any way towards proving common law rights in the name JACK INGRAM NISSAN. The aforementioned plague does not in fact name Complainant, but a corporate entity, to which there is no other reference. In any event, it provides at best an inference of long term use. Otherwise, the evidence consists only of images of three, undated, car advertisements, presumably from local newspapers to which very little weight can attach.
Panel finds insufficient evidence of trademark rights and so it becomes unnecessary for Panel to look to the other aspects of the Complaint or the Policy.
Having failed to establish trademark rights as required by paragraph 4(a)(i) of the Policy, Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <jackingramnissan.com> domain name REMAIN with Respondent.
Debrett G. Lyons, Panelist
Dated: January 9, 2014
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