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David Taylor Cadillac/Buick Co. v. Steve Thumann Spider Webs Ltd. [2000] GENDND 1851 (30 December 2000)


National Arbitration Forum

DECISION

David Taylor Cadillac/Buick Co. v Spider Webs Ltd.

Claim Number: FA0010000095832

PARTIES

The Complainant is David Taylor Cadillac/Buick Co., Houston, TX, USA ("Complainant") represented by James L. Jackson, Mayor, Day, Caldwell & Keeton, L.L.P. The Respondent is Steve Thumann Spider Webs Ltd., Houston, TX, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is davidtaylorcadillac.com, registered with Network Solutions.

PANELIST

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, and has no known conflict in serving as the panelist in this proceeding.

John J. Upchurch is serving as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 17, 2000; The Forum received a hard copy of the Complaint on October 19, 2000.

On Oct 20, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name davidtaylorcadillac.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 26, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 2000 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@davidtaylorcadillac.com by e-mail.

On November 20, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed John J. Upchurch as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

    1. Complainant

      2. A major portion of the Business Name DAVID TAYLOR CADILLAC/Buick Co. of Complainant, David Taylor Cadillac/Buick, is identical to Respondent’s Domain Name Registration, DAVIDTAYLORCADILLAC.COM. Respondent has established a domain name registration using a major portion of Complainant’s business name for the purpose of diverting internet inquiries intended for David Taylor Cadillac/Buick Co. to a different and totally unrelated web site owned and controlled by Respondent, thus causing significant damage to the business of Complainant.

    2. Respondent
    1. Respondent is engaged in consumer advocacy, and links the domain address in dispute with numerous other addresses that were registered from the Summer of 1999 through the present time. An internet user accessing the disputed address will be directed to a site that provides a variety of useful information to consumers in connection with numerous products. Free forums for exchange of information on consumer topics are available. Respondent has also linked the site to another consumer advocacy entity that provides tips on buying automobiles and pricing information.
    2. Respondent has never competed with Complainant, and does not sell automobiles. No effort has been made to divert customers from Complainant. There is no basis for the contention that Respondent is trying to "prey on" Complainant’s trade name, if there is any such trade name.
    3. Respondent has never offered the disputed site for sale to Complainant or any other party.
    4. Complainant is not a registered owner of a trademark that incorporates any form of the letters "davidtaylorcadillac". In fact, the only party that appears to have registered the name David Taylor is a clothier.
    5. Respondent is conducting a legitimate, consumer advocacy enterprise of use to the general public, and has never demonstrated any ill will or engaged in unfair competition with Complainant.

FINDINGS

    1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights under ICANN Policy ¶ 4(a)(i); and
    2. The Respondent has no rights or legitimate interests in respect of the domain name under ICANN Policy ¶ 4(a)(ii); and
    3. The domain name has been registered and is being used in bad faith under ICANN Policy ¶ 4(a)(iii).

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
    2. the 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

Clearly, the domain name at issue, davidtaylorcadillac.com is identical to Complainants trade name DAVID TAYLOR CADILLAC. The only question is whether Complainant has sufficient ‘rights’ in DAVID TAYLOR CADILLAC under the ICANN Policy.

Complainant has been doing business under the trade name DAVID TAYLOR CADILLAC for 25 years. Continuous use infers that Complainant’s trade name has acquired secondary meaning and is protectable under the ICANN Policy. The ICANN 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 as unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, §25:74.2, Vol. 4(2000). See e.g. Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark "fishtech" which it has used since 1982.).

Rights or Legitimate Interests

Respondent is not commonly known as davidtaylorcadillac.com. See ICANN Policy 4(c)(ii). Respondent is not using the domain name davidtaylorcadillac.com in connection with a bona fide offering of goods or services. See ICANN Policy 4(c)(i). Even if Respondent is making a noncommercial or fair use of davidtaylorcadillac.com, such use will misleadingly divert consumers and will tarnish Complainant’s mark. See ICANN Policy 4(c)(iii).

Registration and Use in Bad Faith

Respondent and Complainant both reside in the Houston, Texas area. Therefore, at the time of registration, Respondent is charged with actual or constructive knowledge of Complainant’s mark. Such knowledge at the time of registration violates ICANN Policy 2(b) and is evidence of registration in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17,2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Complainant argues that Respondent registered and is using the domain name davidtaylorcadillac.com in order to divert and interfere with Complainant’s business by confusing and misdirecting consumers who are seeking Complainant’s online location. The ICANN Policy prohibits Respondents from registering and using a domain name to

"intentionally attempt to attract, for commercial gain, internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location."

This confusion can result regardless of whether the content on Respondent’s web site is commercial or noncommercial. See State Farm Mutual Automobile Insurance Company v. Kyle Northway, FA 95464 (Nat. Arb. Forum Oct. 11,2000) (finding that the Respondent registered the domain name statefarmnews.com in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant, despite Respondent’s argument that it intended only to provide objective news about State Farm Insurance).

Respondent admits that consumers who access davidtaylorcadillac.com will have prior knowledge of complainant’s business, and will most likely be shopping for a car. In fact, Respondent states that "it should be patently obvious that any person who visits davidtaylorcadillac.com would have a prior knowledge of the name DAVID TAYLOR CADILLAC, if, in fact, he or she was shopping for a car."

DECISION

The domain name davidtaylorcadillac.com shall be transferred from the Respondent to the Complainant.

Honorable John J. Upchurch

Retired Judge

Arbitrator

Dated: November 30, 2000

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