National Automotive Experts, L.L.C. v. Domain Administrator / Vertical Axis Inc.
Claim Number: FA1502001603505
Complainant is National Automotive Experts, L.L.C. (“Complainant”), represented by Andrew J. Seger, Ohio, USA. Respondent is Domain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nae.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.
Ho-Hyun Nahm and Diane Thilly Cabell as Panelists, and Sandra J. Franklin as Panelist and Chair of the Panel.
Complainant submitted a Complaint to the Forum electronically on February 5, 2015; the Forum received payment on February 5, 2015.
On February 5, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <nae.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 February 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2015 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@nae.com. Also on February 9, 2015, 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.
A timely Response was received and determined to be complete on March 3, 2015.
Complainant submitted a timely Additional Submission on March 6, 2015.
On March 10, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ho-Hyun Nahm and Diane Thilly Cabell as Panelists, and Sandra J. Franklin as Panelist and Chair of the Panel.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <nae.com> domain name is confusingly similar to Complainant’s NAE mark.
2. Respondent does not have any rights or legitimate interests in the <nae.com> domain name.
3. Respondent registered and uses the <nae.com> domain name in bad faith.
B. Respondent
1. Complainant does not have a monopoly on the three letters NAE.
2. Respondent has rights and legitimate interests in the <nae.com> domain name.
3. Respondent registered the <nae.com> domain name several years before Complainant used the NAE mark and Respondent does not use the domain name in bad faith.
4. The doctrine of laches should preclude Complainant from prevailing in this case, and Complainant should be found to be reverse hijacking the <nae.com> domain name.
C. Complainant’s Additional Submission
1. The doctrine of laches is not a defense in a UDRP case.
2. Respondent has offered the <nae.com> domain name for sale, and uses the domain name for pay-per-click links, both of which indicate that Respondent does not have any rights or legitimate interests in the <nae.com> domain name, and that Respondent uses the domain name in bad faith.
3. Respondent’ s renewal of the <nae.com> domain name after Complainant’s use of the NAE mark also indicates bad faith.
Complainant has not established the exclusive right to NAE as a trademark, and did not have any rights in NAE at the time Respondent registered the <nae.com> domain name.
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.
Complainant alleges that it has used NAE, an abbreviation for its name, National Automotive Experts, to promote automotive warranty products throughout the United States continuously since April 2006. Complainant argues that it has common law rights in NAE, and has recently applied to register the mark with the United States Patent and Trademark Office ("USPTO").
The Panel notes media coverage in the last few years referring to Complainant as NAE, and also notes the Declaration of Kelly J. Price, Complainant’s President. The latter states that Complainant has used the NAE mark for more than 8 years and has spent more than $2,000,000 advertising under the mark.
The Panel declines to find that Complainant has rights in the NAE mark for several reasons. As Respondent points out, NAE is the combination of three letters in the English language, which can be an acronym for more than one entity. While the Panel acknowledges that Complainant and others may refer to Complainant as NAE, it notes that the USPTO has not yet declared that Complainant has the right to monopolize the three letters NAE. Thus, the Panel declines to find that Complainant has trademark rights in the acronym NAE.
Further, the Panel notes that, whether or not the USPTO eventually accepts Complainant’s evidence of secondary meaning and registers the NAE mark, Complainant does not even claim to have rights in NAE prior to 2006, approximately 6 years after Respondent registered the <nae.com> domain name.
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i) and therefore 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)).
Reverse Hijacking
Although the Panel finds that Complainant has failed to satisfy its burden under the Policy, the Panel does not find that Complainant is acting in bad faith by attempting to reverse hijack the <nae.com> domain name. Complainant is trying to establish its right to monopolize NAE as a trademark with the USPTO, and has made bona fide arguments here under all three elements of the Policy. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nae.com> domain name REMAIN WITH Respondent.
Ho-Hyun Nahm, Panelist
Diane Thilly Cabell, Panelist
Sandra J. Franklin, Panelist, Chair of the Panel
Dated: March 17, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page