Generic Top Level Domain Name (gTLD) Decisions

Quirk Nissan, Inc.
COMPLAINANT,

vs.

Michael J. Maccini
RESPONDENT.

DECISION
Claim Number: FA0006000094959

PARTIES

The Complainant is Quirk Nissan, Inc., East Braintree, MA, USA (“Complainant”). The Respondent is Michael J. Maccini, Randolph, MA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “QUIRKNISSAN.COM,” registered with Register.com.

PANELIST(s)

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”) electronically on 06/05/2000; The Forum received a hard copy of the Complaint on 06/05/2000.

On 06/06/2000, Register.com confirmed by e-mail to The Forum that the domain name “QUIRKNISSAN.COM” is registered with Register.com and that the Respondent is the current registrant of the name. 

On 06/06/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of 06/26/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On June 26.2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Ralph Yachnin, as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant and its affiliated corporations operate nine automobile dealerships in the Boston, Massachusetts area and is the owner of the trademark “Quirk Nissan.”  In February, 2000 Respondent entered into an agreement to purchase a Nissan car from Complainant, but when the deal was not consummated, Respondent’s money was returned on February 25^th.  On February 29^th Respondent registered the subject domain name, which is Complainant’s name and trademark, followed by the “,com.” (i.e., “quirknissan.com”) Respondent posted on this site a copy of a letter he sent to Complainant relative to the Nissan deal. 

Thereafter, Respondent wrote a “Memorandum” which was addressed  “To File” and on the next line had “CC: Tom Quirk - Quirk Works, Inc.”  It was delivered to Tom Quirk who is the General Manager of the Quirk Ford dealership. The Memorandum stated that the subject domain name “will receive.  . . 1,000 hits a month, largely resulting from individuals without prior knowledge of the exact website name.”

On April 14^th, Respondent delivered to Mr. Quirk a second memorandum wherein he referred to eight domain names he registered, each with the word “quirk” preceding an auto name, and among them was the subject domain name, and added “. . .  I would consider a fair and equitable offer at this time for the purchase of these valuable assets, if you so desire.

The “Quirk” marks, were first used by the Complainant in 1977.  Thereafter other “Quirk” marks including “Quirk Nissan” were used.  They are not federally registered, but Complainant claims them as a common law trademark.

The domain name registered by Respondent is “www.quirknissan.com” and the Complainant’s common law trademark is Quirk Nissan.

Complainant does not dispute Respondent’s right to publish accurate information, but does claim that Respondent may not use a domain name that is designed to cause others to think they are visiting Complaint’s web site.    

Respondent

Respondent entered into a contract to purchase an automobile from Quirk Nissan, one of Complainant’s auto dealers.  Certain defects in the car were not related to him prior to the agreement and after unsuccessful attempts and empty promises by Complainant’s representative to resolve the situation Respondent canceled the contract, and filed a complaint with the Massachusetts Attorney General’s Office.  In an effort to counter consumer abuse of this nature, Respondent registered eight domain names, each starting with “Quirk” and followed by an auto name, such as the subject domain name:

“quirknissan.com,”  “quirkchevolet.com,” etc.,  plus “quirkautos.com” and “quirkmotors.com.”  His purpose in doing this was “to educate the consumer. .  .”  The site was overwhelming in response.

Respondent obtained  a federal trademark search of “quirk” which failed to reveal any by the Complainant.

Respondent denies that the domain name is identical or similar to any other domain name associated with Quirk.

Respondent denies that the domain names were registered in bad faith and were registered for the non-commercial use of providing information over the internet.  Respondent does not intend to compete with the Complainant’s business.

FINDINGS

1.   In 1977 Complainant first commenced using the “Quirk” marks.  Thereafter “Quirk Nissan” was used.

2.   Complainant, a Nissan dealer, and Respondent entered into an agreement for the purchase of a car by Respondent from Complainant.  Due to an allegation that Respondent was not told about certain defects in the car prior to the agreement, the contract was canceled and Respondent’s money refunded.  Respondent saw this as a consumer abuse and wanted others to be forewarned about doing business with Complainant. 

3.   Respondent thereupon registered eight web sites, among which is the domain site in issue: “www. quicknissan.com,” and proceeded to, in Respondent’s words, “educate the consumer and provide valuable information. .  . develop a means of communicating with the consumer to provide for his/her individual needs. . .Respond to individual inquires as required.”  It was a site where Respondent and those who had a bad experience with the Complainant could, and did relate their bad experiences about dealing with Complainant.  The subject domain site was registered on February 29, 2000 and is Complainant’s name and common law, ( not federally registered)  trademark followed by “.com”.

4.   The domain site attracts many visitors, most with bad experiences that they relate on the site, about doing business with the Complainant.

5.   Respondent offered to sell the site to Complainant for a “fair and reasonable” price.

6.   Complainant does not dispute the right of Respondent to have a web site wherein people can vent their business dealing about Complainant, but claims  the subject web site name is designed to cause visitors to think they are on the Complainant’s web site.

.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled 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; and

(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

An examination of the domain name registered by the Respondent clearly shows that it is identical to or confusingly similar to the common law trademark in which the Complainant has rights.

Rights or Legitimate Interests

Even though the Complainant had no registered federal trademark to the “Quirk” name, it had been known by that name for many years prior to the registration by Respondent of the domain name and has a common law trademark to it.  The Respondent has no right or legitimate interest with respect to the domain name.

Bad Faith

Respondent registered the domain name and is using it primarily for the purpose of having those who sort to contact the Complainant’s web site for business purposes, instead be located at a site which causes Complaint to be disparaged and lose business.  The domain name was registered by Respondent and is being used in bad faith.

DECISION

___________________________________________________

Judge Ralph Yachnin

Supreme Court, New York (Ret.)

Arbitrator

Dated: June 29, 2000