National Arbitration Forum

 

DECISION

 

Meguiar's, Inc. v. Target Online Inc

Claim Number: FA0503000435003

 

PARTIES

Complainant is Meguiar's Inc. (“Complainant”), represented by Richard H. Zaitlen, of Pillsbury Winthrop, LLP, 725 S. Figueroa Street, Suite 2800, Los Angeles, CA 90017.  Respondent is Target Online Inc (“Respondent”), represented by Herbert M. Korn, 22 Park Place, Third Floor, Morristown, NJ 07960.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <carcrazy.com>, registered with Dotster.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

           

            Jeffery M. Samuels, David A. Einhorn and Steven L. Schwartz as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2005.

 

On March 7, 2005, Dotster confirmed by e-mail to the National Arbitration Forum that the domain name <carcrazy.com> is registered with Dotster and that the Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 March 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 28, 2005 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@carcrazy.com by e-mail.

 

A timely Response was received and determined to be complete on April 18, 2005.

 

Additional submissions were timely received from Complainant and from Respondent.

 

On April 29, 2005 pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffery M. Samuels, David A. Einhorn and Steven L. Schwartz as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.  Complainant

 

Complainant states that is has federally registered and incontestable marks in the following which have been in use by Complainant and/or its predecessor in interest beginning at least as early as 1993:   

1.  CAR CRAZY, U.S. Registration No. 1867841, in International class 42 and U.S. Class 100, covering goods and services relating to retail automotive stores, registration date December 13, 1994, first use June 10, 1993; and

2.  CAR CRAZY AND DESIGN, U.S. Registration No. 1985210, in International Class 42 and U.S. classes 100 and 101, covering goods and services relating to retail automotive stores registration date July 9, 1996, first use June 10, 1993.

 

The above marks were acquired by Complainant by assignment accepted and recorded December 14, 2004 from the original registrant Richard Tabas on behalf of Car Crazy, Inc., a Pennsylvania corporation.

 

Complainant further states that it has common law rights in and to the CAR CRAZY marks with regard to additional goods and services, including as evidenced by the following pending applications for federal registration:

 

3.  CAR CRAZY, Application Serial No. 76627273, in International Class 41 and U.S. Classes 100, 101, and 107, covering educational and entertainment programming, including via the Internet, television, radio, and trade shows, relating to matters of interest to vehicle enthusiasts and hobbyists; and

4.  CAR CRAZY AND DESIGN, Application Serial No. 76627272, also in International Class 41 and U.S. Classes 100, 101, and 107, and covering educational and entertainment programming, including via the Internet, television, radio, and trade shows, relating to matters of interest to vehicle enthusiasts and hobbyists.

 

Complainant describes its business as having begun more than 100 years ago as a furniture polish laboratory and plant. Complainant states that is has grown to become one of the world's leading surface care products companies, providing highly specialized products for almost every conceivable type of surface. From its inception, Complainant has also been an active participant in the car collecting and preservation hobby, and markets and sells a leading product line for automotive care and polishing products.  Complainant’s products are used by professional detailers, body shops, show-car owners and serious auto care enthusiasts worldwide. Complainant now manufactures more than 300 different cleaners, polishes, waxes, conditioners, and protectants for homes, cars, boats, trains and planes, and almost every other type of surface.  Complainant’s products are marketed and sold worldwide, through outlets in more than 14 different countries

 

Under the banner of its CAR CRAZY name and mark, Complainant also provides automotive collector and hobbyist news and advice. This service is provided on the Internet via Complainant’s <carcrazycentral.com> web site, in addition to being broadcast nationwide on television and radio.  Complainant states that its Car Crazy TV program is an award-winning program that currently appears on the SPEED Channel network and that it also has a nationally syndicated Car Crazy Radio Show that is broadcast weekly. Complainant also takes its “Car Crazy” show on the road, presenting at hundreds of collector shows, convention, and annual tours.

 

Complainant, itself and via its predecessor in interest, has been using its CAR CRAZY mark since at least 1993.  Over the years, and beginning at least as early as 1993, Complainant and its predecessor in interest have expended substantial amounts of time, effort, and money promoting its CAR CRAZY mark and its related goods and services.  Complainant claims that its CAR CRAZY mark has become internationally recognized and famous, associated by consumers with the quality services, information, and products, offered by Complainant in conjunction with the mark.  Complainant has created extensive goodwill in its CAR CRAZY mark. 

 

Complainant desired to, and continues to desire to, utilize its CAR CRAZY mark in connection with its educational and professional services, and to make it easier for hobbyists and potential customers to locate CAR CRAZY on the Internet.   Complainant discovered that Respondent had already registered the <carcrazy.com> domain and as a result, Complainant was barred from making such use of its name and mark.  At present, Complainant states that it utilizing an alternative domain <carcrazycentral.com> which it feels is more user-cumbersome. 

 

Complainant’s representative attempted to contact Respondent to acquire the <carcrazy.com> domain and to offer to compensate for what may have been Respondent’s direct costs, and in the hope of alleviating the need for a costly dispute resolution proceeding, Respondent was offered a reasonable sum.  In reply, Respondent’s representative, President Shelley Brooke, rejected the offer, stating that Complainant should “do the math” as Respondent had paid $200 per year when it registered the domain and had last turned down an offer for $18,500.

 

Complainant seeks transfer of the domain based upon its claims of long-standing, incontestable right to exclusive use of the CAR CRAZY mark and because: (1) Respondent has registered the <carcrazy.com> domain name which is identical and/or confusingly similar to the CAR CRAZY trademark and service mark in which Complainant has exclusive rights, (2) Respondent has no rights or legitimate interests in the <carcrazy.com> domain name, and (3) Respondent has registered and is using the <carcrazy.com> domain name in bad faith.  Complaint’s three arguments in support of its requested relief are as follows:

 

(1)  Respondent’s Domain Name Is Identical and/or Confusingly Similar to Complainant’s Registered Mark.

 

Complainant contends that because its CAR CRAZY mark was first used in 1993, and federally registered by December 1994, Respondent had either actual or constructive notice of Complainant’s rights when it registered the <carcrazy.com> domain name March 11, 1996. 

 

Complainant contends that the disputed domain name is also not merely confusingly similar, but is identical to the CAR CRAZY mark because respondent has fully incorporated Complainant’s mark and merely added the generic top-level domain “.com.”  The addition of a generic top-level domain (“.com” “.org” or “.net”) is irrelevant in determining whether, as here, a domain name is identical to another’s mark.  Finally, the finding of confusing similarity is also possible, regardless of the relationship between the goods and services of Complainants and Respondent.  The offending <carcrazy.com> domain name is, therefore, identical and confusingly similar to Complainant’s registered and common law mark.

 

(2)  Respondent Has No Legitimate Rights Or Interests In Respect To The <carcrazy.com> Domain Name.

 

Respondent has no legitimate rights or interests with respect to the <carcrazy.com> domain because Respondent: (a) has made no use, or shown any demonstrable preparation to use, the domain or corresponding name in connection with a bona fide offering of goods and services; and (b) Respondent is not commonly known by the domain name.  Respondent is not using the domain to offer any goods or services, bona fide or otherwise.  When a user enters the domain name in their web browser, no active page materializes.  The domain is merely “parked,” operating solely as a means to prevent Complainant from reflecting its incontestable mark as its domain.  There is also no evidence that Respondent has made use of the domain, bona fide or otherwise, since registration in 1996.  

 

It is further argued that Respondent is not commonly known by the CAR CRAZY name, mark, or domain name, and could not, under any circumstances, acquire trademark or service mark rights in and to the name.  Respondent is neither a licensee of Complainant nor otherwise authorized to use the CAR CRAZY mark.  Respondent was not authorized to register the <carcrazy.com> domain name or any other domain names incorporating Complainant’s mark or name.    Rather, Respondent is known as and conducts business as “Target Online.”  Therefore, use of a domain name such as in the manner at issue here is illegitimate. 

 

(3)  Respondent Has Registered And Is Using The <carcrazy.com> Domain Name In Bad Faith.

 

Complainant argues that despite Respondent having actual or constructive knowledge of Complainant’s mark and exclusive rights, it registered a domain identical to Complainant’s mark and merely “parked it.”  The result of Respondent’s wrongful conduct is that consumers looking for Complainant who take the natural step of entering its famous CAR CRAZY mark into their web browser followed by the ubiquitous “.com” are left to believe Complainant has no active web site.  Some may look further, but many will not, costing Complainant substantial goodwill and customers.

 

Based on circumstances as described by Complainant, bad faith can be inferred from Respondent’s registration of the <carcrazy.com> domain name for one of the following purposes: (1) for the purpose of selling, renting, or otherwise transferring the domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain names; (2) to capitalize on the fame of Complainant’s mark; and/or (3) for the purpose of preventing Complainant from using its trademark in such domain name, which purpose Respondent is in fact accomplishing by neither using nor releasing the domain name.  Given Complainant’s exclusive rights, any conceivable use of the domain by Respondent would presumably be for the purpose of attracting, for commercial gain, Internet users to the infringing web site by creating a likelihood of confusion with Complainant’s mark. 

 

It is also argued that Respondent’s passive holding of the domain name under the circumstances is itself evidence of bad faith and especially true when, as here, such passive holding is combined with Respondent’s actual or constructive knowledge of Complainant’s rights.  Such passive holding also demonstrates Respondent’s lack of any legitimate interest in exploiting the domain for lawful ends.

 

According to Complainant, bad faith is further shown by Respondent’s attempt to obtain an exorbitant sum for sale of the domain.  When contacted by Complainant’s representative, Respondent rejected Complainant’s reasonable offer by responding that it had ‘last turned down $18,500’ for the domain.  This is evidence that the Respondent registered the domain name for the purpose of selling it for valuable consideration in excess of out of pocket costs associated with the domain name. 

 

Finally, bad faith is further presumed from Respondent’s adoption of a domain name identical to Complainant’s famous mark.  With Complainant’s use dating at least as far back as 1993, national use and recognition in the industry on television, radio, and an incontestable federal registration, Respondent’s bad faith is self evident. 

 

B.   Respondent

 

Respondent describes itself as an Internet company based in Morristown, New Jersey, incorporated in 1995.  Its primary Internet business site is <target-online.com> which has been doing business since incorporation.  Respondent’s business, conducted via the primary site and others that it owns and operates, focuses on website design, advanced online production, graphics, marketing and advertising, classified ads as well as interaction between the residents of local communities with a unique emphasis on civic information disseminated to the population of Northern New Jersey and more specifically Morris County, New Jersey.

 

In addition to the primary site of <target-online.com> Respondent has created, owns and actively operates and disseminates on a daily basis, public information on the <morristown.com> website. This site is a not-for-profit site funded by Respondent and primarily dedicated to keeping the residents of Morris County, N.J. abreast of local functions and events such as little league games, local school sport schedules, church events, home sales, entertainment, classified ads, restaurant reviews, "local chats" and other civic-minded events in the area. (See <morristown.com>).  Finally, Respondent has created and operates a number of "teenage sports" cites that caters to that generation in terms of up to date events, fashions and trends.

 

Respondent states that upon entering the Internet market in the mid 1990's, it designed a business model which included the registration of numerous “common phrases” and was not aware of Mr. Richard Tabas' (the original trademark registrant), his auto store in Narberth, Pennsylvania or of his registered mark, CAR CRAZY. Respondent's business design and intention was to create an "Internet classified site" for the immediate geographical area which it states has been done incorporating many of its initial ideas in <morristown.com>.

 

In addition to the domain name in question, <carcrazy.com>, Respondent has registered numerous domains during the mid-1990's for its business projects including, but not limited to the following:

 

a.                   <morristown.com>

b.                  <parsippany.com>

c.                   <morrisCountySports.com>

d.                  <morriscountybusiness.com>

e.                   <morriscountyclassifieds.com>

f.                    <morriscountygaragesale.com>

g.                   <nj-classifieds.com>

h.                  <dollshop.com>

i.                    <oldtrains.com>

j.                    <toychest.com>

k.                  <xtremecentral.com>

l.                    <bladegirlz.com>

m.                <hotrails.com>

n.                  <piercedpark.com>

o.                  <windchillfactor.com>

p.                  <mangledmansion.com>

q.                  <ripping.com>

 

Respondent's position is that the words "car crazy" are common and generic words put to a descriptive use, and thus Complainant has no enforceable trademark rights under the UDRP. In addition, Respondent maintains it has a legitimate interest in the Domain Name since it developed a business plan for a bona fide use prior to notice of this dispute, and for that matter, prior to any knowledge of the CAR CRAZY trademark, initially registered by Richard Tabas in 1994 and assigned to the Complainant in 2004.  The Respondent also asserts that the Complainant did not own nor use the name prior to the Respondent's registering the name. Finally, the Respondent argues that it did not register nor use the disputed name in bad faith and accuses the Complainant of reverse domain name hijacking. 

 

More specifically Respondent replies to Complainant’s allegations and affirmatively argues in its own behalf as follows:

                 

1. Complainant Has Neither A Famous Nor Incontestable Right To The Car Crazy Mark And The Words Car Crazy Are Common And Generic Words Put To A Descriptive Use.

 

Respondent rejects Complainant’s allegation that registration of CAR CRAZY on December, 13, 1994 results in an “incontestable mark beginning at least as early at 1993." Complainant only became the owner of the mark on December 14, 2004 upon the USPTO registration assignment of the mark, “CAR CRAZY” from, Car Crazy Inc., the automotive car care, accessory, multi-gadget retail store in Narberth, Pennsylvania, owned by Mr. Richard Tabas. It cannot be said, therefore, that Complainant had expended substantial amounts of time, effort, and money promoting its CAR CRAZY mark and its related goods and services and making it nationally and internationally known and famous.  Nor does there appear to be any evidence that Mr. Tabas expended such efforts in developing the name either.

 

Respondent contends that Complainant did not have any rights or even a remote connection with the <carcrazy.com> domain name, or for that matter, the trademark, prior to March 11, 1996, when Respondent registered its domain. It is further argued that there is no evidence that Mr. Barry Meguiar used the name prior to the year 2002, when Complainant began broadcasting a TV show called Car Crazy TV.

 

Rather, Respondent contends that Complainant’s CAR CRAZY mark did not become “internationally recognized and famous, associated by consumers with quality services, information, and products, offered by the Complainant in conjunction with the mark Complainant has created extensive goodwill in its car crazy mark,” until after Complainant acquired Mr. Tabas’ trademark by assignment in 2004. 

 

Respondent opposes Complainant's argument that the latter’s use of the CAR CRAZY mark for domain name registration purposes should relate back to 1994 when Mr. Tabas federally registered the name in December 1994. Respondent contends this is a “bootstrapping” argument in which Complainant is attempting assert prior use of the trademark name prior to Respondent's integrating it into its business plan and registering it as a domain.

 

Furthermore, Respondent rejects the Complainant’s argument that it has exclusive rights to the domain because it is not merely confusingly similar, but it identical to the “CAR CRAZY" mark and fully incorporates Complainant’s mark with the generic top level domain “.com.”  Rather, Respondent contends that the name is basically a combination of two ordinary and generic dictionary terms – “car” and “crazy” -- and are combined  for the purposes of classified advertisements and/or other legitimate business purposes

 

2.  Respondent Has Established Rights To And Legitimate Interests In The Domain Name.

 

Respondent contends that its use of <carcrazy.com> in its business model is a legitimate right or interest based upon the clear proofs as set forth in the emails and affidavit set forth in the Respondent’s Exhibits.  Respondent contends that so long as the domain name is part of a business model and was intended and remains intended to be used in an ongoing business venture, Complainant cannot prove that Respondent has no legitimate rights or interests in the name.

 

Respondent argues that it is indisputable that it registered the <carcrazy.com> domain name long before she was aware of any trademark by anyone, much less the Complainant. Respondent owns and operates websites such as <morristown.com>, <bladegirlz.com>, <hotrails.com>, <piercedpark.com>, <mangledmansion.com>, <xtremecentral.com>, <parsippany.com>, all of which where registered to fit into the Respondent's business plan and compares these names and their uses with that of <carcrazy.com> as being composed of municipality names or generic, dictionary names. 

 

3.  Respondent Has Registered And Is Using The Domain Name <Car Crazy.com> In Good Faith                                                                                                   

 

Respondent rejects Complainant’s claim that it had "actual or constructive knowledge of Complainant's mark and exclusive rights . . . and merely parked it," arguing that there is no proof whatsoever to support this claim. Rather, Respondent contends that it is evident from the nature of Respondent's business plan and actual business activities that when registering the <carcrazy.com> domain name, it did not do so to divert business away from Mr. Tabas’ Narberth, Pennsylvania "auto parts store" nor register it for the purpose of resale.

Respondent states that it had no knowledge whatsoever of Mr. Tabas’ business or trademark.  Consequently, Respondent cannot be found to have engaged in bad faith registration of Complainant’s mark if it had never heard of Complainant's mark at the time of the registration.

 

Additional Submissions

 

Complainant

 

Complainant asserts that Respondent has admitted to knowledge of the CAR CRAZY trademark at the time of its domain registration; and that Respondent’s business “plans” show an intent to infringe by marketing automotive products; and that Respondent has admitted that the domain is confusingly similar to the mark.  Based upon these “admissions,” Complainant concludes that Respondent has no legitimate interest in the domain and registered and used the domain in bad faith.

 

Complainant also contends that it is entitled to a heavy presumption of validity of the mark and that Respondent cannot overcome this presumption.  Furthermore, it states that the use of the name in relationship to automotive retail stores, care products and industry news and events contributes to making it suggestive and distinctive and not generic.

 

Furthermore, Complainant claims that Respondent has not shown evidence of demonstrable planning, and did not use the domain until 2003. Then, once use commenced, it was for the competitive purpose of offering identical and/or confusingly similar goods and services to those of Complainant.  Accordingly, this demonstrates Respondent’s bad faith and lack of legitimate interests. 

 

Complainant argues, as well, that it is entitled to the trademark priority date of June 10, 1993, which precedes Respondent’s domain registration. Complainant also contends that it is entitled to both the goodwill accumulated prior to obtaining ownership of the trademark.  Complainant also states that it is entitled to the goodwill and notoriety arising from its own use of the term “crazy cars” for the years after Mr. Tabas’ registration but prior to obtaining ownership by way of assignment from Mr. Tabas.  Furthermore, Complainant argues that Respondent has conceded notice of the mark and of Complainant’s nationwide use prior to obtaining any ownership rights thus constituting at least constructive if not actual notice.

 

respondent’s Additional Submission

 

Respondent concedes that the domain is identical or confusingly similar.  It goes on to state, however, the real issues are whether Respondent has legitimate interests and whether registration and use has been in bad faith.

 

In addressing the issue of legitimate interests, Respondent rejects Complainant’s contention that the nature of its business is the marketing of automotive products thus demonstrating an intent to infringe on the mark. 

 

Respondent describes its business as a small Internet business with an emphasis on municipal information to a very small base with a business plan of enlarging the base to Northern New Jersey and the entire state.  Contrary to Complainant’s contention, Respondent states that its business is not to sell automotive products but to sell advertising and runs ads on municipal sites.

 

Respondent further contends that its lack of knowledge of Mr. Tabas, Mcguiar or the use of the term car crazy is legitimate and truthful and that under the circumstances unless one was familiar with the classic automotive industry, such names would not necessarily be known.

 

Respondent points out that Complainant operates an additional website entitled <carcrazy.net>.

 

Lastly, Respondent affirms that it has never sought to sell the domain name registration even when approached by others including Complainant as further evidence that no bad faith is involved in its registration and use of the domain.

 

FINDINGS and discussion

 

The Panel makes the following findings:

1.  CAR CRAZY, is a trademark registered by Richard Tabas, U.S. Registration No. 1867841, in International class 42 and U.S. Class 100, covering goods and services relating to retail automotive stores, registration date December 13, 1994, first use June 10, 1993.

2.  CAR CRAZY AND DESIGN, is a trademark registered by Richard Tabas, U.S. Registration No. 1985210, in International Class 42 and U.S. classes 100 and 101, covering goods and services relating to retail automotive stores registration date July 9, 1996, first use June 10, 1993.

 

3.      <carcrazy.net> was registered through Network Solutions and later transferred to Dotster, Inc. by Richard Tabas starting on December 31, 1996.

 

4.      <carcrazy.com> was registered by Respondent on March 11, 1996.

 

5.      CAR CRAZY trademark was assigned by Richard Tabas to Complainant on December 14, 2004.

 

6.      <carcrazycentral.com> was registered by Complainant on September 17, 2001.

 

7.      Complainant has used the term “car crazy” in connection with its business starting sometime in 2002 prior to obtaining trademark rights in the mark previously registered by Richard Tabas and subsequent to December 14, 2004 at which time it acquired all rights in the mark by assignment from Richard Tabas. 

 

8.      Complainant has been long involved in the business of surface care products initially in the furniture field and now manufactures and markets numerous cleaners, polishes, waxes and related products nationally and worldwide.  Complainant has been active, as well, in the car collector and preservation hobby field offering a product line of automotive care and polishing products.

 

9.      Respondent is an Internet company based in Morristown, New Jersey incorporated in 1995.  Its primary Internet business site is <target-online.com> which has been doing business since incorporation. 

 

10.  Respondent’s business, conducted via the primary site and others that it owns and operates focuses on website design, advanced online production, graphics, marketing and advertising, classified ads as well as interaction between the residents of local communities with an emphasis on civic information disseminated to the population of Northern New Jersey, and more specifically Morris County, New Jersey.

 

11.  Respondent also funds and operates a not-for-profit site primarily dedicated to keeping the residents of Morris County, N.J. abreast of local functions and events such as little league games, local school sport schedules, church events, home sales, entertainment, classified ads, restaurant reviews, "local chats" and other civic-minded events in the area.

 

12.  Respondent has also created and operates a number of "teenage sports" sites that cater to that generation in terms of up to date events, fashions and trends.

 

13.  Respondent was not aware of Mr. Richard Tabas' “car crazy trademark nor of his auto store in Narberth, Pennsylvania.”

 

14.  Respondent is not in the business of manufacturing, marketing or selling automotive parts or supplies including the items manufactured, marketed and sold by Complainant.

 

15.  Respondent was not aware of Complainant until the latter contacted it and offered to purchase Respondent’s domain name at issue.

 

16.  Respondent registered the domain at issue as part of its overall business plan but did not actively begin to employ the domain as part of its classified advertising business until sometime in 2003.

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

1.                  That the disputed domain name is identical or confusingly similar to its trademark;

2.                  That respondent has no rights or legitimate interest in the domain name; and

3.                  The domain name was registered and is being used in bad faith.

 

(Policy, ¶¶ 4(a)(i)-(iii).)  Complainant bears the burden of proof as to each element of its claim.  (Policy ¶ 4(a).)  Each of these components is discussed below and the Panel’s conclusions provided in the order above.

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant asserts rights in the CAR CRAZY mark.  Complainant’s predecessor-in-interest registered the mark with the United States Patent and Trademark Office on December 13, 1994 (Reg. No. 1,867,841).  The mark has been used in connection with retail automobile store services since 1993.  Complainant has established a presumption of rights in the CAR CRAZY mark as the result of the ownership of the federal registration of the mark that it obtained by assignment from Richard Tabas.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

 

Complainant asserts that the disputed domain name, <carcrazy.com>, is identical to Complainant’s CAR CRAZY mark.  The Panel finds that the domain name is identical to the mark; the addition of the generic top-level domain “.com” is immaterial under Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  The Panel, therefore, finds that Complainant has met its burden of proof regarding this Policy requirement.

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Respondent is engaged in a legitimate, non-competitive business involving website design, advanced online production, graphics, marketing and advertising, classified ads as well as interaction between the residents of local communities with an emphasis on civic information. Respondent contends that the disputed domain name was registered for purposes related to these business activities although not implemented until 2003 as part of its overall business development. 

 

The Panel finds demonstrable evidence sufficient to conclude that Respondent has a right or legitimate interest in the domain name.  See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (“Respondent has shown demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The fact that Respondent has not yet actually made any use of the domain name does not undermine the fact that Respondent has shown demonstrable preparations to use the domain name.”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where Respondent sought to develop a bona fide business use for the domain name); see also Easygroup Ltd v. Easymaterial.com Ltd, D2000-0711 (WIPO Sept. 7, 2000) (finding that Respondent has demonstrated that he has a legitimate interest in the domain name where he has produced a business plan and five letters from independent parties confirming that, prior to any notice of the dispute, preparations were made to use the domain name).

 

Complainant has forcefully argued that the lapse of time between Respondent’s registration of approximately eight years and its commencement of use should be persuasive evidence of a passive holding insufficient to establish rights and interests on Respondent’s part.  The Panel believes, however, that while Respondent’s lack of active use of the domain may give rise to an evidentiary inference of passive holding, without more evidence that Respondent has insufficient rights and interests in the domain, such an inference, standing by itself, does not carry Complainant’s burden.  Furthermore, Complainant’s citation to Pac. Inv. Mgmt. Co. LLC v Szabo, FA 95614 (Nat Arb. Forum Oct. 18, 2000) is inapposite.  In that case, the respondent failed to respond to the complaint and the panel decided the case based upon the undisputed evidence submitted in the complaint. Finally, even if the Panel were to conclude that passive holding was present here, this would not be dispositive in favor of Complainant’s claim for transfer in light of our conclusion adverse to Complainant on the third element of the ICANN Policy. (The domain name was not registered and is not being used in bad faith.)

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent did not violate Policy ¶ 4(b)(i) because Respondent not only rejected Complainant’s offer, but also previously rejected an even higher offer.  The Panel considers this admitted fact to support the notion that Respondent never attempted to sell the domain name registration to anyone, let alone Complainant.  Moreover, the Panel has considered the fact that it was Complainant who initiated discussions to purchase the domain name registration.  It may be argued that, under Complainant’s reasoning, bad faith registration and use could be imputed to any respondent who rejected even the most extravagant offers regardless of a respondent’s desire to keep the domain name registration.  This argument, however, has been rejected by many ICANN panels. 

 

See PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not register the domain names in bad faith where there is no evidence that Respondent intended to sell the domain name or disrupt Complainant’s business); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding no bad faith where “the Complainant offers the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum”); see also General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding it significant that Complainant, and not Respondent had initiated contact, inquiring about purchasing the domain name <craftwork.com>, and that this fact tended to weigh against a finding of bad faith); see also Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where Respondent did not contact Complainant first, but rather, Complainant first contacted Respondent about purchasing the domain name).

 

There is no evidence that Respondent had actual knowledge of the CAR CRAZY mark at the time it registered the disputed domain name.  “Furthermore it is clear from not only the Respondent’s affidavit, but the use of common sense that Respondent, when registering the domain name <carcrazy.com>, did not do so to divert business away from an ‘auto parts store’ in Pa. owned by the original holder of the mark.”  Response at 8.  See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from Complainant or for any other purpose prohibited by UDRP Rules); see also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d)(1)(B)(ii) ("Bad faith intent … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”).  Respondent’s registration cannot have been in bad faith if, at the time, it had not heard of Complainant, DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration if respondent had not heard of complainant’s mark at time of registration)

 

The Panel rejects Complainant’s argument that knowledge of its mark and its common law rights in the mark was well known for several years even before it was assigned the CAR CRAZY mark and registration.  If Complainant had no rights in the mark prior to acquiring it from Tabas, it has no claim that Respondent’s domain registration was done in bad faith in violation of such nonexistent rights.  Indeed, for all practical purposes, it may be said that Complainant did not even exist at the time because it had no rights in the mark to assert at the time of Respondent’s domain registration.  Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (it is impossible for Respondent to register a domain name in bad faith if Complainant’s company did not exist at the time of registration); E-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001); Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).

 

Complainant argues that because of Respondent’s wrongful act, “…consumers looking for Complainant, and who take the natural step of entering the famous CAR CRAZY mark into their web browser followed by the ubiquitous ‘.com,’ are left to believe Complainant has no active web site. (Complaint, p. 8)  No evidence has been introduced that this has occurred, however.  Nor has any evidence been introduced that business has been diverted from Complainant to Respondent by virtue of the domain.  In fact, the evidence shows that the businesses of the two disputants are entirely different and that Respondent is neither an active competitor nor has it demonstrated any intention of becoming a competitor.

Complainant has cited the case of Telstra v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) as precedent for its requested relief under the circumstances of this case.  The Panel finds this case to be inapposite.  In that case, unlike this case, the respondent’s domain did not resolve to a web site or other on-line presence.  Moreover, there the respondent evaded identification and location.  Finally, in Telstra the respondent did not file a response to the complaint and the panel accepted the complainant’s allegations as undisputed.

Complainant has cited the case of Video Direct Distribs., Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) for the proposition that constructive notice of the domain by virtue of the trademark registration.  While in some cases, constructive notice can be a factor in awarding a domain transfer, typically such cases involve additional elements of clear bad faith.  Indeed, in Complainant’s cited case, the respondent’s use of the domain name was held to be confusing and likely to lead consumers into believing that the complainant is either in the business of sexually explicit materials or affiliated with that business in some way.  Moreover, that case concluded that contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iv), the respondent, without any provable or ascertainable business purpose, registered the domain name <videodirect.com> to attract Internet users to its website by creating a likelihood of confusion with the complainant’s name.  Such obvious improper intent is not present in this case.

            

Complainant’s reliance upon Expressdata Corp. v. MSM Express Data Servs., FA 94721 (Nat. Arb. Forum June 20, 2000) is also misplaced.  In that case, again unlike the facts presently before the Panel, constructive notice was a factor because of the unique circumstances:  The respondent was not a legal business entity, had no active web site and no active business; nor was there any credible evidence that the respondent (owned by a former employee of the complainant and had registered some 150 other domain names) ever intended to conduct any business.

 

Complainant’s reliance upon Samsonite Corp. v Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) also is unpersuasive.  At the time of Respondent’s domain registration, Mr. Tabas’ mark was not commonly known as was the case in Samsonite where the Panel concluded that registration and use in bad faith were present. There, the Panel held that the primary purpose for registering the domain name <samsonite.org> was to disrupt the business of the complainant for the personal gain of the respondent. Samsonite is also well known for its erudite discussion of the requirement that bad faith must be found in both the registration and use of the domain. In the context of that discussion, even if Respondent’s delayed use of the domain were to be suspect, there can be no legitimate argument that at the time of its registration there was any improper conduct nor that Complainant was even in the picture as a potential interested party to the domain.

 

Indeed, the Panel considers that the failure of both Richard Tabas’ and Complainant to initiate a claim to the domain name for a period of over eight years (or six years since the Policy was adopted) is relevant in determining whether Complainant actually thought business was being diverted.  See New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion); see also Bosco Prod., Inc. v. Bosco email Serv., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute]”).

 

 

DECISION

 

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 <carcrazy.com> domain name NOT BE TRANSFERRED from Respondent to Complainant.

 

 

 

 

Steven L. Schwartz, Panelist

                                                                         (Writing for the Majority)

 

 

                                                                         Jeffery M. Samuels, Panelist
                                                                           Dated: May 20, 2005

 

 

 

 

 

National Arbitration Forum

DISSENT

Meguiar's, Inc. v. Target Online Inc

Claim Number: FA 435003

 

 

Panelist David A. Einhorn dissenting:

 

I dissent from the ruling of my co-panelists that Complainant has failed to establish the  requirements of Policy § 4(a)(iii).  I believe that the record before this Panel supports findings of bad faith registration and usage by Respondent.

There is a long line of arbitration decisions finding that panelists may infer constructive knowledge of federal registrations existing at the time of registration of a domain, especially when the domain is identical to Complainant’s mark.  In fact, a case standing for this proposition was decided even as of yesterday.  (See MIPS Techs., Inc. v. Int’l Cyber Bus. Servs., Inc. FA 463134 (Nat. Arb. Forum May 19, 2005) (“Respondent’s registration of the disputed domain name, which is identical to Complainant’s mark, suggests that Respondent knew of Complainant’s rights in the MIP TECHNOLOGIES mark.  Additionally, Complainant’s trademark registration on the Principal Register of the United States Patent and Trademark Office gave Respondent constructive notice of Complainant’s mark.”)).  This is particularly true with respect to domain disputes between companies in the same field of goods and/or services.  See, SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum, Jan. 4,, 2001) (“Looking at the totality of the circumstances, the record shows that Respondent registered domain names that are identical or confusingly similar to Complainant’s trademarks.  Complainant  and Respondent belong to a group of a relatively small number of companies that offer specific automobile racing services.  Given the competitive relationship between Complainant and Respondent, the Panel finds that Respondent was aware of Complainant’s mark before registering the domain names.”)).   Also see, Kelley Blue Book Co., Inc. v. South EastEnterprise, Inc., Case No. D2004-0499 (WIPO Aug. 23, 2004) (finding the similarity in services offered by the parties as constituting circumstantial evidence supporting a finding of bad faith registration and use). 

 

Respondent in the present case intends to use the domain for a classified car web site.  Complainant’s registration is for retail automobile store services.  Given the competitive relationship between Complainant’s and Respondent’s services, Respondent should have been aware of Complainant’s registration(s) before registering its domain name.  Thus, I am of the opinion that Respondent registered the domain name in bad faith.  I am also of the belief that Respondent’s use of the domain name has been in bad faith.

Respondent’s passive holding of the domain name for over seven years is itself evidence of both bad faith registration and use.  See Caravan Club v. Muggale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that passive holding of a domain name permits an inference of registration and use in bad faith).

Further, the fact that Respondent did not commence preparation for active use of a web site until over seven years after the registration of the domain name constitutes circumstantial evidence of bad faith use.  Respondent registered its domain name in March 1996.  However, it did not begin preparation for a web site until September 2003.  Significantly, this commencement toward active activity occurred a mere two months after the assignment of the registration(s) to Meguiar.  Complainant (Meguiar) has provided documentary evidence of its heavy usage of the mark.  The timing of Respondent’s commencement of actual preparations to use the mark as a web site immediately following Meguiar’s apparent increased usage of this mark constitutes further circumstantial evidence upon which this Panel could have based a finding of bad faith use.

I concur with my co-panelists that Complainant has established the requirements of Policy §§ 4(a)(i) and 4(a)(ii).   Further, since I also believe that Complainant has satisfied the requirement of § 4(a)(iii) of the Policy, I am of the view that Complainant’s request for transfer of the domain name should have been granted.

 

                                                 

 

David A. Einhorn, Panelist

(Chairperson)
Dated: May 20, 2005

 

 

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