Wingstuff Inc. v. Tony Bell d/b/a
Spectrum Motorsports
Claim
Number: FA0312000221149
Complainant is Wingstuff Inc. (“Complainant”), represented
by Patrick W. Fletcher, of Fletcher Law Offices,
2600 Michelson Dr., 17th Floor, Irvine, CA 92612. Respondent is Tony Bell d/b/a Spectrum Motorsports (“Respondent”), 45 Oldfield, Irvine, CA 92618.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cyclegiant.net>, registered with Core-51.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 19, 2003; the Forum received a hard copy of the
Complaint on December 29, 2003.
On
January 5, 2004, Core-51 confirmed by e-mail to the Forum that the domain name <cyclegiant.net>
is registered with Core-51 and that Respondent is the current registrant of the
name. Core-51 has verified that Respondent is bound by the Core-51 registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
January 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 26, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@cyclegiant.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
February 9, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 makes the following assertions:
1. Respondent’s <cyclegiant.net>
domain name is identical or confusingly similar to Complainant’s CYCLEGIANT.COM
mark.
2. Respondent does not have any rights or
legitimate interests in the <cyclegiant.net> domain name.
3. Respondent registered and used the <cyclegiant.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wingstuff Inc., has been using the CYCLEGIANT.COM mark in commerce for retail
motorcycle parts and accessories stores since February 1, 2003. It was on
November 25, 2003, that the <cyclegiant.com> domain name was first
registered by Complainant, for use in the online sale of motorcycle parts and
accessories. Complainant is in the process of applying to the U.S. Patent and
Trademark Office for registration of the CYCLEGIANT.COM mark (U.S. Ser. No.
78/342648).
Prior to the
commencement of this dispute, Complainant was an employee of Spectrum
Motorsports, as the manager of its parts and accessories department. On
approximately February 12, 2003, Complainant terminated its employment
relationship with Respondent and started its own buisness, the above-mentioned
CYCLEGIANT.COM enterprise.
Respondent, Tony
Bell d/b/a Spectrum Motorsports, registered the <cyclegiant.net>
domain name on May 29, 2003. Respondent uses the disputed domain name to
redirect Internet users to its commercial website at the
<spectrumhonda.com> domain name, where it offers motorcycle parts and
accessories to Internet users.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
The Panel finds
that Complainant has established rights in the CYCLEGIANT.COM mark through use
of the mark in commerce since February 1, 2003, as stated in its trademark
application to the U.S. Patent and Trademark Office. While Complainant has not
yet obtained registration of the CYCLEGIANT.COM mark, Complainant has supplied
the Panel with irrefuted evidence that the CYCLEGIANT.COM mark is
source-identifying among Internet users, and that it has established secondary
meaning in the relevant market, at least in Irvine, CA, where both Complainant
and Respondent are domiciled. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi
(Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain
name was identical or confusingly similar to Complainant’s pending service mark
application); see also Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established).
Respondent’s <cyclegiant.net>
domain name is identical to
Complainant’s CYCLEGIANT.COM mark. For the purposes of Policy ¶ 4(a)(i), and
trademark law in general, top-level domains such as dot-com and dot-net are not
source-identifying, and thus the dominant feature of Respondent’s domain name
is identical to the dominant feature of Complainant’s mark, the CYCLEGIANT
portion of the mark. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Elder Mfg. Co.
v. Recker, FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar
it is beyond refute that Respondent’s domain names are virtually identical, and
thus confusingly similar to Elder’s trademarks. Any superficial differences
between the domain names and the Elder trademarks are de minimis and of no
legal consequence.”).
Accordingly, the
Panel finds that the <cyclegiant.net> domain name is identical to Complainant’s CYCLEGIANT.COM mark under
Policy ¶ 4(a)(i).
Respondent has
not used the <cyclegiant.net> domain name to host a website, but is instead using it to redirect Internet
users to its own website at the <spectrumhonda.com> domain name. This
website competes directly with the services offered by Complainant at the
<cyclegiant.com> domain name.Given the close prior relationship of the
parties, Respondent must have known of Complainant and its CYCLEGIANT
operations when it chose to register the disputed domain name to compete with
Complainant. Such use of the disputed domain name cannot be considered to be a
“bona fide offering of goods or services” as contemplated by Policy ¶ 4(c)(i).
As this appears to be the only element in Policy ¶¶ 4(c)(i)-(iii) that would
bestow rights and legitimate interests in the disputed domain name upon
Respondent, Complainant prevails on this element. See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services);
compare Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution
Oct. 18, 2000) (finding that, as a
former employee, Respondent knew or should have known Complainant’s mark was in
use as an integral part of the corporate name and as a trademark and that Respondent
understood the legitimate interests and rights of Complainant and, by contrast,
its own lack of interest or right, sufficient evidence that Respondent had no
rights or interest in the domain name).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<cyclegiant.net> domain
name under Policy ¶ 4(a)(ii).
Complainant
alleges in the Complaint that the <cyclegiant.net> domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iii). To prevail on this element, Complainant
must show that Respondent is a competitor of Complainant, and that Respondent’s
primary motivation in registering the disputed domain name was to disrupt
Complainant’s business. Complainant has demonstrated both of these prongs of
4(b)(iii).
Both Complainant
and Respondent are in the business of selling motorcycle parts and accessories,
and are thus competitors, establishing the first prong of analysis under Policy
¶ 4(b)(iii). As for proving that Respondent’s intent was to disrupt
Complainant’s business, the Panel notes that Respondent’s registration of the <cyclegiant.net>
domain name on May 29, 2003, came a
little over three months after Complainant quit working for Respondent and
opened its own business. Given that both parties are from Irvine, CA, the Panel
finds it unlikely that Respondent was not aware of Complainant or its rights in
the CYCLEGIANT mark when it registered the disputed domain name. With these
facts in mind, Respondent’s use of the <cyclegiant.net> domain
name to draw Internet users to its <spectrumhonda.com> domain name is
evidence that Respondent intended to disrupt Complainant’s business at the
<cyclegiant.com> domain name.
The Panel thus
finds that Respondent registered and used the <cyclegiant.net> domain name in bad faith pursuant to Policy ¶
4(b)(iii), and that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cyclegiant.net> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch , Panelist
Dated: February 23, 2004
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