Pedro Richaud / Schertz Car Care Center v. Roberts Properties, Inc / Mark Roberts
Claim Number: FA1106001392248
Complainant is Pedro Richaud / Schertz Car Care Center (“Complainant”), represented by Moses Goldberg, Texas, USA. Respondent is Roberts Properties, Inc / Mark Roberts (“Respondent”), represented by Aaron Peacock of Gagnon, Peacock, Shanklin & Vereeke, P.C., Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <schertzcarcarecenter.com> and <schertzcarcarecenter.net>, registered with Gkg.net, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2011; the National Arbitration Forum received payment on June 6, 2011.
On June 6, 2011, Gkg.net, Inc. confirmed by e-mail to the National Arbitration Forum that the <schertzcarcarecenter.com> and <schertzcarcarecenter.net> domain names are registered with Gkg.net, Inc. and that Respondent is the current registrant of the names. Gkg.net, Inc. has verified that Respondent is bound by the Gkg.net, Inc. 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 June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 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@schertzcarcarecenter.com and postmaster@schertzcarcarecenter.net. Also on June 13, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 July 6, 2011.
On July 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
[a] Complainant owns the trade name Schertz Car Care Center.
[b] Respondent’s registered domain names <schertzcarcarecenter.com> and <schertzcarcarecenter.net> are confusingly similar to Complainant’s trade name.
[c] Respondent has no rights or legitimate interests in these domain names.
[d] Respondent has registered and is using these domain names in bad faith.
B. Respondent
Respondent contends that Complainant has not presented evidence that its business name has become a distinctive identifier of the goods or services or has otherwise achieved common law trademark rights.
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.
In UDRP proceedings, mere assertion by a complainant of incorporation under a trade name is insufficient to invoke “rights” in a mark pursuant to Policy § 4(a)(i). Simple evidence that a complainant owns a trade name, without evidence of trademark registration or common law rights, is not enough to establish standing under the UDRP. See, e.g., Front Range Internet, Inc. v. David Murphy a/k/a This Domain For Sale, FA 145231 (Nat. Arb. Forum April 4, 2003).
In support of its contentions, Complainant has submitted its Articles of Incorporation and copies of pictures of signs bearing its trade name. However, Complainant fails to present sales, advertising data, or other evidence that it has acquired common law rights or secondary meaning in its name. See Cyber Imprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (holding that without evidence of common law rights, mere registration of company name with the applicable secretary of state did not establish cognizable rights under Policy § 4(a)(i)).*
Thus, this Panel finds that Complainant has no enforceable rights in the trade name under Policy § 4(a)(i), and that therefore, this element of the Policy has not been satisfied.
Because the Panel has determined that Complainant has not satisfied this requirement of Policy § 4(a)(i), there is no need to determine whether Respondent has rights or legitimate interests in the domain names or whether Respondent registered or used the domain names in bad faith.
Complainant is a trade name owner who was attempting to improperly apply the Policy to a trade name for which it has demonstrated no trademark rights.
While this Panel notes that the filing of this Complaint was ill-advised, this Panel cannot find, on the record before it, that Complainant filed the Complaint in bad faith with the knowledge that it could not prove the requisite elements of the Policy. See Netro Corp. v. Koustas, FA 109723 (Nat. Arb. Forum June 12, 2002).
Having failed to establish the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <schertzcarcarecenter.com> and <schertzcarcarecenter.net> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: July 27, 2011
* The burden of proof which Complainant would have been required to satisfy would have been particularly demanding in this case because Complainant’s trade name consists solely of geographic (“Schertz”) and generic or descriptive (“car”, “care” and “center”) terms.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page