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Generic Top Level Domain Name (gTLD) Decisions |
Modern Props, Inc. v. Stephen Wallis
Claim Number: FA0303000152458
PARTIES
Complainant
is Modern Props, Inc., Los Angeles,
CA (“Complainant”) represented by Jennifer
Hughes, of Funsten & Franzen. Respondent is Stephen Wallis, New York, NY (“Respondent”) represented by Martin H. Samson, of Phillips Nizer LLC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <modprops.com>,
<modprop.com> and <modprop.net>, registered with Go Daddy Software, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Diane
Cabell, Paul M. DeCicco and Bruce Meyerson as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 28, 2003; the Forum received
a hard copy of the
Complaint on March 31, 2003.
On
March 31, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <modprops.com>,
<modprop.com> and <modprop.net> are registered
with Go Daddy Software, Inc. and that the Respondent is the current registrant
of the names. Go Daddy Software, Inc.
has verified that Respondent is bound by the Go Daddy Software, Inc.
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
April 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 28,
2003 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@modprops.com, postmaster@modprop.com and
postmaster@modprop.net by e-mail.
A
timely Response was received and determined to be complete on April 29, 2003.
Although
the Complainant submitted an additional response which was untimely under
Supplemental Rule 7, the Panel, having reviewed
the objection filed by
Respondent on May 23, 2003, in the exercise of its discretion, did consider it.
On May 16, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Diane
Cabell, Paul M. DeCicco and Bruce Meyerson as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
Modern Props, Inc., which rents theatrical props and furniture, contends it is
the sole registered owner of the mark “Modern
Props” having registered the mark
since July 2001. Complainant contends
that it has used the mark in commerce since 1979 and has used it as a
designation for its website since 1995.
Complainant contends that the domain names at issue are confusingly
similar to its mark and line of business.
Complainant contends that Respondent should not be considered as having
a legitimate right or interest in its mark because Complainant
established its
website six years before Respondent established its site, Respondent has no
registered trademark of its name, and
Respondent did not operate a theatrical
prop rental business prior to 2001 (when Complainant established its website).
Complainant
contends that Respondent is not using the domain name in connection with a bona
fide offering of goods and services.
Complainant asserts that while it is a leader in the field of
contemporary props, operating an established business with several locations,
Respondent, on the other hand, does not have a listing in the Manhattan phone
directory, is not registered with the New York Secretary
of State and does not
have a business license with the City of New York.
B. Respondent
Respondent
Stephen Wallis contends that for the past two years he has operated a prop
rental business under the name “modprop.com”
solely on the Internet, without
either a store or telephone listing.
Respondent states that Complainant was aware of Respondent’s business
activities for almost two years before this complaint was brought
“during which
time Respondent continued to build its business around the <modprop.com>
domain and mark.” Respondent contends
that his domain names are not confusingly similar to the mark owned by
Complainant, contending there are distinct
differences between the meaning of
the word “modern” and the word “mod.”
Respondent
contends he has legitimate rights and interests in the domain name because he
began using the domain name before any dispute
with Complainant arose. Complainant contends he has been actively
doing business using this domain name since 2001, renting cars, furniture and
other props. Finally, Respondent
contends he has not acted in bad faith.
When registering the domain name in March 2001, he claims to have no
knowledge of Complainant’s business or the use of its mark. He conducted a trademark search which did
not reveal any marks which he believed he would infringe upon.
C. Additional Submissions
In
its Additional Submission, Complainant contends that the disputed domain names
are confusingly similar to its mark.
Complainant argues that it is likely that Respondent was aware of
Complainant’s business when Respondent started his business because
Respondent
chose a name that is substantially similar to Complainant’s business. Finally, Complainant contends that
Respondent has acted in bad faith because Complainant’s website, which predated
Respondent’s, was
easily accessible to Respondent before he started his
business and because both parties have similar businesses, this “creates a
strong inference” that Respondent has intentionally attempted to divert
business from Complainant.
FINDINGS
Respondent began
its business operations in March 2001 and conducted research to determine
whether the “<modprop.com>”
name infringed on any trademarks.
Complainant first complained to Respondent regarding his use of the
domain names in June 2001 and Complainant filed a trademark application
for the
MODERN PROPS mark on July 27, 2001.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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.
The domain name
is sufficiently similar to Complainant’s trademark to allow Complainant to
proceed with its Complaint.
Notwithstanding the analysis by Respondent, “modprops” is a contraction
or shorthand for “Modern Props.” “Mod” cononotes “modern”
regardless of any
other dictionary meanings, so the names are substantially similar in meaning.
The names are also similar sounding,
having but one syllable that is different
(modern v. mod).
The record supports
Respondent’s contention that when its business operations started in March 2001
research was conducted to determine
whether the “<modprop.com>” name infringed on any trademarks. Complainant’s trademark was not discovered
in this search because it had yet to file a trademark application for the
MODERN PROPS
mark which it did on July 27, 2001.[1] Under these circumstances we agree with
Respondent that his registration and use of the domain names for a prop rental
business are
legitimate. Even though
Respondent may have been aware of Complainant’s business, or Complainant’s
website (and there is nothing in the record
to support this), such awareness
does not establish that the use of a similar domain name violates the Policy.
Furthermore,
Respondent has demonstrated legitimate use of his domain names and that he is
commonly known by the <modprop.com> domain name, as he registered
that name as his business identity with the New York County Clerk on April 20,
2001 and has since conducted
his prop rental business under that name. The first complaint regarding the disputed domain
names was not made until June 21, 2002.
Accordingly, the record supports Respondent’s contention that before any
notice of this dispute, Respondent had used, or was making
preparations to use,
the domain names in connection with a bona fide offering of goods or services.
Thus, we conclude
that Respondent has demonstrated rights or legitimate interests in the domain
names in accordance with Policy 4(c)(i).
Bad Faith
The Complaint fails to show that
Respondent registered and used the domain name in bad faith. In its Complaint,
Complainant’s discussion
of bad faith baldly states that Respondent has
attempted to attract Internet users to its site. Complainant then mistakenly
reasons
that this creates an inference that Respondent thereby intended to
divert traffic from Complainant’s website to Respondent’s website
--an express
indication of bad faith under the Policy.
This is not enough. To show bad faith, Complainant must point the Panel
to the particular facts and circumstance supporting its allegations.
Because it
does not, the Complaint fails on this prong of the Policy.
DECISION
Having
failed to establish all three elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
Diane Cabell, Paul M. DeCicco and Bruce
Meyerson, Panelists
Dated: June 2, 2003
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