Andy Mohr Nissan, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1403001548518
Complainant is Andy Mohr Nissan, Inc. (“Complainant”), represented by Michael P. Shanahan of Harrison & Moberly, LLP, Indiana, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <andymohrnissan.com>, registered with Internet.bs Corp.
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 March 13, 2014; the National Arbitration Forum received payment on March 17, 2014.
On March 16, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <andymohrnissan.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2014 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@andymohrnissan.com. Also on March 21, 2014, 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 April 15, 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 common law trademark rights in ANDY MOHR NISSAN and alleges that the disputed domain name is 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 discussion and decision which follow are:
1. Complainant has used the name ANDY MOHR NISSAN since 2005 in association with an automobile dealership in Indiana.
2. The domain name was registered on October 17, 2005.
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.
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.
Complainant acknowledges that it does not own a trademark registration for ANDY MOHR NISSAN. Nevertheless, as it correctly states, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. In this case Complainant asserts unregistered trademark rights in the name ANDY MOHR NISSAN by reason of use of that name over the nine years since incorporation of Complainant. Unregistered or so-called common law trademark rights can arise through use and reputation if there is adequate proof of secondary meaning (see, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
The asserted trademark comprises a personal name, Andy Mohr, together with an automobile manufacturer’s name, Nissan. The facts before the Panel are much like those in a case decided earlier this year by this Panel, Jack Ingram Nissan v. Domain Admin / Protected Whois, NAF Case No. FA1312001532729 (January 9, 2014). Once more it is observed by the Panel that the owner of the NISSAN trademark is not a party to the proceedings, nor is there any direct evidence that Complainant has been licensed or authorized to use the NISSAN trademark. As this Panel wrote in the Jack Ingram Nissan v. Domain Admin / Protected Whois case:
“… 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.
…. there is nothing to cause Panel to think that Complainant is anything other than an authorized user of the NISSAN trademark.
However, even assuming Complainant’s entitlement to use the NISSAN trademark, Complainant must still show common law trademark rights in the composite name ANDY MOHR NISSAN.
Largely restating what was written in the Jack Ingram Nissan v. Domain Admin / Protected Whois case, there is no single definition of common law or unregistered trademark rights. It has clear that a reputation in the asserted trademark must be proved as shown by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview”) which 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.”
Putting to one side bald assertions of reputation made in the Complaint to which the Panel cannot attach any weight, the relevant evidence comprises a copy of the certificate of incorporation of Complainant in the States of Indiana on March 29, 2005, together with a screenshot from Complainant’s website from March 2014 showing nothing of special interest in terms of the material necessary to prove reputation (and seeming to indicate that the business is confined to a single showroom in Indianapolis), plus a screenshot from March 2014 of a reference of Complainant’s business on <cars.com>, and a March 2014 screenshot of miscellaneous “tweets”, again neither being of real assistance to the Panel in terms of showing secondary meaning.
Guided by the statements from the WIPO Overview, the evidence before the Panel does not go far enough to prove common law trademark rights in the name ANDY MOHR NISSAN and so Panel finds that Complainant has not established the paragraph 4(a)(i) of the Policy.
Accordingly, it becomes unnecessary for the Panel to look to the other aspects of the Complaint or the Policy (see, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538).
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <andymohrnissan.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 26, 2014
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