Austin Strings v. Al Marabella
Claim Number: FA1608001691401
Complainant is Austin Strings (“Complainant”), Texas, United States. Respondent is Al Marabella (“Respondent”), represented by Elizabeth M. Stafki, Texas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <austinstringrentals.com>, registered with Wild West Domains, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2016; the Forum received payment on August 27, 2016.
On August 29, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <austinstringrentals.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 September 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2016 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@austinstringrentals.com. Also on September 1, 2016, 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 September 19, 2016.
An additional submission was received from Complainant on September 25, 2016, and was determined to be compliant.
An additional submission was received from Respondent on September 30, 2016, and was determined to be compliant.
On September 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name <austinstringrentals.com> be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant is a full service violin shop. They provide lessons, sales, repairs, and rentals of string instruments in Austin, Texas and surrounding areas, and have been in business continuously since April, 2002. Complainant owns common law rights in the AUSTIN STRINGS mark by virtue of its continuous use of the mark since 2002. The <austinstringrentals.com> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the domain name. Respondent’s attempt to create an affiliation with Complainant, with the goal of misleading customers, does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Compl., at Attachment C (“A division of Blackerby Violin Shop”).
Respondent acted in bad faith because when it registered the disputed domain name, it included in fine print that <austinstringrentals.com> is operated by Respondent’s violin shop, which has led people to believe that <austinstringrentals.com> is part of Complainant’s business, which it is not. Additionally, Respondent commercially gains from the consumer confusion that occurs as a result of Respondent’s use of the disputed domain name to promote a competing violin shop in the Austin, Texas area.
B. Respondent’s Contentions
Respondent addresses as a preliminary matter that the former registrant of the domain name, Al Marabella, sold the Blackerby Violin Shop, including the disputed domain name, to the current owner, Goggan Strings LLC d/b/a Blackerby Violin Shop. See Response, at Attached Ex. A.
Complainant lacks rights in the AUSTIN STRINGS mark because it does not own a registration for the mark; rather, Complainant claims common law rights in the mark, but it has not presented compelling evidence of secondary meaning or distinctiveness. Further, the AUSTIN STRINGS mark is comprised of two common dictionary words that are generic or descriptive of Complainant’s business.
Respondent has rights and legitimate interests in the domain name. Respondent’s online rental program is commonly known by the domain name. The domain name is composed of two generic terms, “Austin” and “rentals,” and a third term, “string,” which is generic or highly descriptive of Respondent’s business. Further, Respondent uses the domain name in connection with a bona fide offering of goods or services, and a legitimate noncommercial or fair use. Respondent has used the website that resolves from the domain name to promote its stringed-instrument rental services since July, 2015.
Respondent did not register, and is not using, the domain name in bad faith. While Complainant claims consumer confusion, it has provided no supporting evidence. Respondent is not attempting to pass itself off as Complainant; Complainant’s website prominently displays “Austin Strings” in a design format featuring stylized letters, and features a red-and-taupe color scheme. Respondent’s website displays “Austin String Rentals” in a unique stylization, which is presented in green, blue, and red text. Compare Response, at Attached Ex. G, with Response, at Attached Ex. F. Further, Respondent emphasizes the affiliation between it and the website at the disputed domain name; the text “A division of Blackerby Violin Shop” appears one line below “Austin String Rentals,” and the landing page of Respondent’s website notes that “Blackerby Violin Shop is staffed by professional string musicians.”
C. Additional Submissions
1. Complainant’s Additional Submission
Complainant re-asserts that it has acquired secondary meaning in the AUSTIN STRINGS mark by virtue of having done business under that name in Austin, Texas continuously for fourteen years and featuring the name on signs and placards at a physical storefront business in Austin, Texas.
The words that comprise Complainant’s mark are not generic. Further, Respondent has failed to submit any evidence that it is commonly known by “Austin String Rentals.”
It is clear that Respondent registered the domain name with actual knowledge of Complainant’s AUSTIN STRINGS mark and rights therein; Respondent and Complainant have been operating competing businesses in the same geographic area for the last fourteen years. Further, Complainant presents as evidence of consumer confusion a customer who had ordered an instrument from the disputed domain name and called Complainant in July 2016, saying that she needed to reschedule her delivery to her child’s school. The customer was confused and insisted that she had ordered from Complainant, not Respondent.
2. Respondent’s Additional Submission
Respondent in its Additional Submission, contends as follows.
Respondent asserts that Complainant fails to prove, through its proffered evidence, that it has acquired secondary meaning such as to have acquired common law rights in “Austin Strings.” Respondent cites that Complainant has failed to provide the extent of advertising, advertising dollars spent, revenue and business sales figures, number of consumers served, trademarks applications, or a consumer survey, but rather, only self-serving assertions. Further, Complainant’s assertions are silent on how the proffered evidence “caused its customers to have a distinct impression regarding the source and quality of Complainant’s goods and services.”
Respondent asserts that it has rights or legitimate interests in the domain name, in that it uses the <austonstringrentals.com> domain name in connection with a bona fide offering of goods and services.
Further the claimed mark Austin Strings is generic for, or highly descriptive of Complainant’s full service violin shop, a fact which Complainant does not dispute.
Respondent cites that it is commonly known by the domain name of <austinstringrentals.com> through its online presence. Respondent’s affiliations with the name are clearly shown through its screenshots. Additionally Respondent’s Facebook page contains numerous references to its online rental program at <austinstringsrental.com.>
Respondent asserts that none of Complainant’s bad faith arguments are persuasive. Complainant has not submitted evidence to support any of its assertions pertaining to Respondent’s actual knowledge of Complainant’s business.
Respondent disputes Complainant’s evidence of consumer confusion by offering a sale’s receipt that it had done business with the alleged confused consumer, even before the disputed domain name registration.
Respondent argues that the differences in the logos between Complainant and Respondent demonstrate that Respondent did not register and is not using the domain name to pass itself off, as Complainant.
Contrary to Complainant’s assertions, Respondent replies that its website makes it clear that Respondent is not affiliated with Complainant, because its website features the text “Austin String Rentals” and “A division of Blackerby Violin Shop” at the top of it’s web page.
Respondent denies, en masse, Complainant’s remaining assertions regarding bad faith registration and usage.
(1) The domain name <austinstringrentals.com> 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.
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’s Austin Strings violin shop has operated continuously in Austin, Texas since 2002. See complainant’s Additional Submission Exhibit G re: Original 2002 DBA filing for Austin Strings. The full service shop provides lessons, sales, repairs, and rentals of string instruments. Complainant has provided convincing evidence that it owns common law rights in the AUSTIN STRINGS mark by virtue of the continuous and extensive use of the mark, since 2002, such as to create a secondary meaning in the minds of the target audience of musicians in the Austin, Texas area. See Complainant’s
Additional Submissions, Exhibits A-E, comprised of: photographs of highway sign and storefront; longstanding web and social media presence; examples of flyers, advertising and marketing material; excerpts from area orchestra program handbooks, and correspondence from area music teachers and community organizations. A complainant’s claim of common law rights in a mark is permitted when the complainant can show a secondary meaning in the mark based on use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant’s common law rights in the AUSTIN STRINGS mark are evidenced by its strong social media presence using the mark, with a Facebook page (2009) that is actively used, promoted, and updated, as well as a business account on Yelp (2012) and Google Places/Maps (2014). See Additional Submission Annex, at Attached Exhibit B. Additionally, Complainant has evidenced an aggressive promotion of the mark in promotional flyers, marketing, and advertising materials throughout the business’s history. See Additional Submission Annex, at Attached Exhibit C. Panels have held that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). As the
Panel has concluded that Complainant has provided sufficient evidence to establish a secondary meaning in the AUSTIN STRINGS mark, it also concludes that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).
The <austinstringrentals.com> domain name is confusingly similar to Complainant’s mark. The Panel notes that the domain name includes the AUSTIN STRINGS mark in its entirety, less the letter “s,” the term “rentals,” and the generic top-level domain (“gTLD”) “.com” with the mere removal of the spaces between the words of Complainant’s mark. Panels have held that these changes do not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); se e also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, this Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark, in violation of Policy ¶ 4(a)(i) .
Rights and Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent’s use of the domain name to operate a business that directly competes with Complainant is evidence that Respondent lacks rights and legitimate interests in the domain name. Panel notes that both Claimant and Respondent operate the same type of business, that is stringed instrument sales, rentals and service, both in the same city of Austin, Texas. See Complainant’s Amended Annex at Attachment C, showing snapshot of its website at austinstrings.com taken August 30, 2016 and the competing website of <austinstringrentals.com> home page, taken August 30, 2016, at Complainant’s Amended Annex D.
Thus, they are direct competitors for the target audience of Austin music students and Austin musicians. However, Respondent has chosen to unfairly compete with his competitor, by adopting a confusingly similar domain name of a competitor, who has been using same for 14 years, impliedly in an effort to siphon off clients. A Respondent’s use of an identical and/or confusingly similar domain name to operate a business that is in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Respondent’s attempt to create an affiliation with Complainant, with the goal of misleading customers, does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Compl., at Attachment C (“A division of Blackerby Violin Shop”). Panels have held that a respondent lacks rights and legitimate interests in a domain name where it uses a domain name in an attempt to pass itself off as a complainant. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). For these reasons, Respondent has not proven that it does have rights or legitimate interests in the disputed domain name of <austinstringrentals.com>.
The Panel notes that the WHOIS information merely lists “Al Marabella” as registrant. As such, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Following Complainant’s showing of a prima facie case that Respondent lacks rights or legitimate interests in the domain name of <austinstringrentals.com>,
Respondent has not shouldered its shifted burden to prove that it does have rights or legitimate interests in the subject domain name, in accordance with Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant has proffered convincing evidence that Respondent had registered the domain name with actual knowledge of Complainant’s AUSTIN STRINGS mark and rights therein; Complainant maintains that Respondent and it have been operating competing stringed musical instrument sales, rental and
service businesses in the same geographic area for the last fourteen years. Respondent registered the confusingly similar domain name of <austinstringrentals.com> on May 11, 2015, in the name of Al Marabella, citing an address in Austin, Texas. At this point in time, Austin Strings, also located in Austin, had registered the domain name of austinstrings.com nearly 14 years earlier in 2002 and had initiated a live website in 2003. Complainant’s original DBA filing was in 2002, as per Complainant’s Additional Annex, Exhibit G. Panels have decided that a respondent demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As the Panel finds Complainant’s contention and supporting evidence sufficient to support a finding of actual knowledge, it finds that Respondent engaged in bad faith registration under Policy ¶ 4(a)(iii).
Respondent has acted in bad faith because when it registered the disputed domain name, it included in fine print that <austinstringrentals.com> is a division of Respondent’s Blackerby’s Violin Shop, which has led people to believe that <austinstringrentals.com> is part of Complainant’s business, which it is not. Complainant presents as evidence of consumer confusion a customer who had ordered an instrument from the disputed domain name and called Complainant in July 2016, saying that she needed to reschedule her delivery to her child’s school. The customer was confused and insisted that she had ordered from Complainant, not Respondent. Panels have determined that a respondent acts in bad faith where its use of a disputed domain name leads consumers to believe that the domain name is connected with a complainant. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). For this reason, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name.
Respondent commercially gains from the consumer confusion that occurs as a result of Respondent’s use of a confusingly similar name domain name to promote a competing violin shop in the same Austin, Texas area, to the same target audience of local music students and musicians. Panels have decided that a respondent’s use of a domain name to promote products and/or services that are in direct competition with a complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Accordingly, the Panel concludes that Respondent registered and is using the domain name in bad faith, in violation of Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <austinstringrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: October 11, 2016
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