Dave & Adam's Card World
LLC v. Jay Conti
Claim Number: FA0705000977209
PARTIES
Complainant is Dave & Adam's Card World LLC (“Complainant”), represented by Paul
I. Perlman, of Hodgson Russ LLP, The Guaranty Building,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daveandadamscardworld.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 7, 2007.
On
On May 11, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 31, 2007 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@daveandadamscardworld.com by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant asserts that since 1991 it has been engaged in the business
of selling sports and entertainment trading cards and memorabilia. Complainant contends that the domain name in
dispute is confusingly similar to its common law trademark. According to Complainant, as of
B.
Respondent
Respondent states that Complainant had every opportunity to purchase
the domain name in 2003 when Respondent purchased the name. Respondent accuses Complainant of making
“poor business choices.” Respondent
states that Complainant has no registered trademark or service mark, or common
law right, to “Dave and Adam’s Card
World.” Respondent states that he
is not a competitor of Complainant.
FINDINGS
Complainant Dave & Adam’s Card World LLC
has been engaged in the business of selling sports and entertainment trading
cards and memorabilia since 1991. Complainant
has no registered trademark or service mark to “Dave and Adam’s Card World.”
DISCUSSION
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 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;
(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.
Identical and/or Confusingly Similar
Respondent argues that Complainant
does not have any rights in the DAVE AND ADAM’S CARD WORLD mark in any form. Complainant acknowledges it has not registered
the DAVE AND ADAM’S CARD WORLD mark with the United States Patent and Trademark
Office. Complainant asserts, however,
that it holds a common law service mark because it has used the mark in
commerce for 16 years. Complainant has
provided the affidavit of one its owners in which he states that “Dave and
Adam’s Card World has become synonymous with providing high quality authentic
merchandise to customers throughout the
For a mark to have secondary
meaning, the mark must establish a link between the product or service and the
source of that product or service. In
other words, a mark has secondary meaning, “when, in the minds of the public,
the primary significance of the mark is to identify the source of the product
rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
529
Use of the mark alone is
insufficient to establish secondary meaning.
The “mere claim of use is not enough to establish rights. Use must be in
a manner sufficiently public to create some public awareness.” Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001); contra ZRT Laboratory LLC v.
Because the Panel concludes that Complainant does not have rights in the DAVE AND ADAM’S CARD WORLD mark according to Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Occidental Hoteles Mgmt., S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant could not satisfy Policy ¶ 4(a)(i)).
This decision should not be understood as a final determination that Complainant is unable to prove common law rights to the mark DAVE AND ADAM’S CARD WORLD. This decision is limited to finding that, on this record, Complainant has not proved that it has rights to the foregoing mark because it has not shown that the public associates the words with Complainant as the source of a particular good. See Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000).
DECISION
Having failed to establish that the domain name in dispute is confusingly
similar to a trademark or service mark in which Complainant has rights, the
Panel concludes that relief shall be DENIED.
Dated:
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum