Quirk Works, Inc.
COMPLAINANT,

vs.

Michael J. Maccini
RESPONDENT.

DECISION
Forum File No.:  FA 0006000094963

  MEMORANDUM OF DECISION

            The above-entitled matter came on for an administrative hearing on July 13, 2000, before the undersigned on the Complaint of Quirk Works, Inc., hereafter "Complainant", against Michael J. Maccini, hereafter "Respondent".  Complainant appears by Gordon M. Orloff, Attorney of Boston, Massachusetts.  The Respondent appears pro se. 

PROCEDURAL FINDINGS

Domain Names: quirkmazda.com and quirkvolkswagen.com.

Domain Name Registrar: Register.com, Inc.

Domain Name Registrant: Michael J. Maccini.

Date of Domain Name Registration:  February 29, 2000.

Date Complaint Filed:  June 5, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a)^{[1] and Rule 4(c): June 1, 2000.}                                                                                            

Due date for a Response:  June 26, 2000.  Response filed is dated June 21, 2000.

Relief Sought:  Complainant requests that the domain names be transferred from Respondent to Complainant.

            After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Register.com, Inc. (Register), the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.  The Respondent responded to The Forum by memorandum dated June 21, 2000, pursuant to Rule 5(a).

            On February 29, 2000 Respondent registered the domain names “quirkvolkswagen.com” and “quirkmazda.com" with Register, the entity that is the Registrar of the domain name.  On June 6, 2000, Register verified that Respondent is the Registrant for the domain names "quirkvolkswagen.com” and “quirkmazda.com", and that further by registering its domain name with Register, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

FINDINGS AND CONCLUSIONS

1. The Complainant is a corporation that operates nine automobile dealerships in the South Shore area of Boston, Massachusetts. Two of these businesses operate under the names Quirk Volkswagen and Quirk Mazda. None of the Quirk dealership names have been formally registered as trademarks or service marks.  Complainant has been engaged in the automobile business in the Boston area since 1977.

2.         The Respondent is an individual who claims no business interest relative to the domain name in dispute. But see paragraph 14(f) below.

3. The Respondent contracted with Quirk Nissan on February 21, 2000 to purchase an automobile.  Respondent discovered damage to the subject automobile upon inspection before delivery. A dispute arose and the contract was cancelled on February 25, 2000. On or about the same date, Respondent filed a complaint against Quirk with the Massachusetts Attorney Generals Office.

4. On February 29, 2000 Respondent registered the subject domain names, “quirkmazda.com” and “quirkvolkswagen.com” along with five other domain names. All of the domain names registered by Respondent correspond to names of Complainants dealerships, e.g., Quirknissan.com, quirkchevrolet.com, quirkoldsmobile.com, quirkkia.com and quirkmotors.com. On March 13, 2000 Respondent registered the name “quirkautos.com”.

5. On March 1, 2000 Respondent prepared a document titled “Website Development Memorandum” (hereafter WDM) addressed to “file”. A second document identical to the first, but dated March 28, 2000 and showing “CC: Tom Quirk-Quirk Works, Inc.” was personally delivered by Respondent to Tom Quirk, a principal in Complainant’s business.

6. The WDM states Respondents purpose in registering the Quirk domain names was to “educate the consumer and provide valuable information …develop a means of communicating with the consumer to provide valuable information for his/her individual needs…Respond to individual inquiries as required…the sole purpose of the development of these websites is to provide the general public with information pertinent to their individual buying/leasing experience and educate the consumer prior to entering any agreement with any dealership or private party…”. 

The WDM further states Respondents proposed websites “will provide for an entrance into the e-commerce marketplace…the growing importance of domain names…in some cases, the difference between success and failure in conducting business over the internet was determined to be the ease at which a particular website is found…”

The WDM acknowledges that use of the Quirk domain names will draw Internet users looking for information about the Complainants dealerships to Respondents websites.

I find the primary purpose of the WDM is to threaten Quick with a website using its business name as the domain name, to draw potential customers of Quirk to Respondents websites to furnish them with information of complaints about Quirk.  The WDM does not propose to offer Quirks response to the complaint, corrective actions or the ultimate findings or resolution of the customer complaints.

7.         Complainant made no response to Respondent’s WDM.

8. On April 14, 2000 Respondent delivered to Tom Quirk a memorandum captioned “Website Development” which states, inter alia: “Although I have never voiced my intention or solicited the sale of these domain names, I would consider a fair and equitable offer at this time for the purchase of these valuable assets, if you so desire.”  This is a written invitation by the Respondent, making an offer to sell the domain names 45 days after the domain names were registered. It is disputed whether Quirk had previously made a prior verbal offer(s) to purchase the domain names. I find the forgoing written offer to sell is not indicative of a response to an oral offer to purchase and find for the Complainant as to this disputed fact.

9.         Complainant has an established common law trademark in the name Quirk in connection with automobile sales.

10.       To prevail, Complainant must establish in the record that Respondent:

a. Registered a domain name that is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”; and

b. Has “no rights or legitimate interests in respect of the domain name”; and

c. Has registered and is using the domain name in “bad faith”.

11.       The domain names “quirkmazda.com and quirkvolkswagen.com”                      are identical or confusingly similar to the business names of Complainants automobile dealerships Quirk Mazda and Quirk Volkswagen.

12.       The mere registration and use of another’s name on the Internet is not per se a commercial use. But, the Respondent made a commercial use of the Quirk trademark when he offered to sell the trademarks “quirkmazda” and “quirkvolkswagen” which he had incorporated into the domain names to the Complainant. See, Panavision International, L.P. vs Toeppen, [1998] USCA9 991; 141 F.3d 1316, 1325-26 (9^th Cir. 1998).

13.         The Respondent has no rights or legitimate business interests in respect to said domain name.

14.      The Respondent registered and used the domain names “quirkmazda.com” and “quirkvolkswagen.com” in bad faith. The following is evidence of Respondent's bad faith:

(a) Respondent chose to register the particular domain names because Complainant was actively using the same identical names in its businesses.

(b) At the time Respondent registered the domain names he was not engaged in any legitimate enterprise that would logically utilized those domain names.

(c) Respondent first registered the domain names motivated by a failed car deal in which he believes Complainant made misrepresentations or omissions of fact that required disclosure.

(d) Using the name Quirk in the multiple domain names is not descriptive of or indicative of a serious consumer education program as stated in the WDM.

(e) Respondent registered the domain names for the purpose of disrupting the business of Complainant.

(f) The Respondent has made a commercial use of Complainants trade name by offering to sell the domain names to Complainant. By intentionally appropriating Complainants trade name as his domain name Respondent has intentionally diverted consumers and caused confusion to Complainants customers that results in an economic impact upon Complainants business.

(g) Respondent’s use of the domain name is not a legitimate noncommercial use.

(h) Delivery of the WDM and the April 14 memorandum to Tom Quirk constitutes a transparent effort by Respondent to coerce Quirk to offer satisfaction to Respondent due to his registration and use of their trade names on the Internet.

15.  I am aware of the opposite conclusions reached by other arbitrators on the issues presented here between these same parties. I have reviewed the case of Bally Total Fitness Holding Corp. v Farr, 29 F. Supp.2d 1161 which was cited for the proposition that the First Amendment of the United States Constitution protects Respondents activities here.  I believe this case is distinguishable in fact and law from the matter presented here.

Bally is an action for trademark infringement, unfair competition and dilution brought under the Lanham Trade-Mark Act, 15 USCA Sec. 1114(1)(a).  This action is a domain name dispute brought pursuant to the Uniform Domain Name Dispute Resolution Policy and concerns the right to use specific domain names.

The defendant Faber in Bally published a website entitled “Bally Sucks” which was dedicated to publication of complaints about the plaintiff, Bally’s health club business. In holding that Bally had protected marks but that Faber had not infringed upon Bally’s trademark, the court placed weight upon the fact that the name “Bally Sucks” was a website name as opposed to a domain name which is more likely to cause confusion. 29 F. Supp.2d@1165. Further, Bally Sucks was not the business name of the Bally health clubs. Faber also prominently displayed the words “unauthorized” on his website which the court found mitigated against causing consumer confusion. Here, Respondent has used Complainants trade name in his domain name to draw potential customers to the site. Nor has the Respondent here made a disclaimer, although this fact does not weigh heavily in my decision here as once a customer is at Respondents website from the content it will be obvious that the site is not sponsored by Quirk.

The modern rule protects marks against “any product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with or connected with, or sponsored by, the trademark owner.” 29F.Supp2d@1164, citing 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 24:6 at 24-13 (1997). Use of a trade name as a domain name by someone with no legitimate rights to that name is likely to cause confusion and disrupt the business of the trademark owner.

The Bally court further cited Panavision, supra, for the proposition that use of a trademark as a domain name caused a “high likelihood of consumer confusion-reasonably prudent consumers would believe that the site using the appropriated name is the trademark owner’s official site.” 29F.Supp2d@1165,n.2.

When read in its entirety and giving consideration to the distinctions cited above, Bally supports Complainants position. Bally does not hold that there is a constitutional right to a particular domain name or a right to use another’s protected trade name as a domain name.

16.       The issues presented in this complaint have to do with Respondents right to use Complainants name as a domain name under the domain dispute resolution rules, not Respondents right to express an opinion or to free speech.

                                      DECISION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected, and being neutral, the undersigned makes the following ruling based upon the findings and conclusions:

1. The domain names "quirkmazda.com” and “quirkvolkswagen.com", registered by Respondent on February 29, 2000 with Register, Inc., are identical or confusingly similar to the marks in which Complainant has established rights. 

2. Respondent has no rights or legitimate interest in respect to the domain names.

3. Respondent registered the domain names in bad faith.

Accordingly, pursuant to Rule 4(i), it is decided that the domain names

"quirkmazda.com" and “quirkvolkswagen.com” should be transferred from Respondent to the Complainant.

Judge James P. Buchele (Retired) Arbitrator
Dated:  July 13, 2000