DECISION

Wingstuff Inc. v. Tony Bell d/b/a Spectrum Motorsports

Claim Number:  FA0312000221149

PARTIES

Complainant is Wingstuff Inc. (“Complainant”), represented by Patrick W. Fletcher, of Fletcher Law Offices, 2600 Michelson Dr., 17th Floor, Irvine, CA 92612.  Respondent is Tony Bell d/b/a Spectrum Motorsports (“Respondent”), 45 Oldfield, Irvine, CA 92618.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cyclegiant.net>, registered with Core-51.

PANEL

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

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 19, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

On January 5, 2004, Core-51 confirmed by e-mail to the Forum that the domain name <cyclegiant.net> is registered with Core-51 and that Respondent is the current registrant of the name. Core-51 has verified that Respondent is bound by the Core-51 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 January 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 26, 2004 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@cyclegiant.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 9, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <cyclegiant.net> domain name is identical or confusingly similar to Complainant’s CYCLEGIANT.COM mark.

2. Respondent does not have any rights or legitimate interests in the <cyclegiant.net> domain name.

3. Respondent registered and used the <cyclegiant.net> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Wingstuff Inc., has been using the CYCLEGIANT.COM mark in commerce for retail motorcycle parts and accessories stores since February 1, 2003. It was on November 25, 2003, that the <cyclegiant.com> domain name was first registered by Complainant, for use in the online sale of motorcycle parts and accessories. Complainant is in the process of applying to the U.S. Patent and Trademark Office for registration of the CYCLEGIANT.COM mark (U.S. Ser. No. 78/342648).

Prior to the commencement of this dispute, Complainant was an employee of Spectrum Motorsports, as the manager of its parts and accessories department. On approximately February 12, 2003, Complainant terminated its employment relationship with Respondent and started its own buisness, the above-mentioned CYCLEGIANT.COM enterprise.

Respondent, Tony Bell d/b/a Spectrum Motorsports, registered the <cyclegiant.net> domain name on May 29, 2003. Respondent uses the disputed domain name to redirect Internet users to its commercial website at the <spectrumhonda.com> domain name, where it offers motorcycle parts and accessories to Internet users.

DISCUSSION

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the CYCLEGIANT.COM mark through use of the mark in commerce since February 1, 2003, as stated in its trademark application to the U.S. Patent and Trademark Office. While Complainant has not yet obtained registration of the CYCLEGIANT.COM mark, Complainant has supplied the Panel with irrefuted evidence that the CYCLEGIANT.COM mark is source-identifying among Internet users, and that it has established secondary meaning in the relevant market, at least in Irvine, CA, where both Complainant and Respondent are domiciled. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution 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–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to Complainant’s pending service mark application); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Respondent’s <cyclegiant.net> domain name is identical to Complainant’s CYCLEGIANT.COM mark. For the purposes of Policy ¶ 4(a)(i), and trademark law in general, top-level domains such as dot-com and dot-net are not source-identifying, and thus the dominant feature of Respondent’s domain name is identical to the dominant feature of Complainant’s mark, the CYCLEGIANT portion of the mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Elder Mfg. Co. v. Recker, FA 98414 (Nat. Arb. Forum Sep. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.”).

Accordingly, the Panel finds that the <cyclegiant.net> domain name is identical to Complainant’s CYCLEGIANT.COM mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not used the <cyclegiant.net> domain name to host a website, but is instead using it to redirect Internet users to its own website at the <spectrumhonda.com> domain name. This website competes directly with the services offered by Complainant at the <cyclegiant.com> domain name.Given the close prior relationship of the parties, Respondent must have known of Complainant and its CYCLEGIANT operations when it chose to register the disputed domain name to compete with Complainant. Such use of the disputed domain name cannot be considered to be a “bona fide offering of goods or services” as contemplated by Policy ¶ 4(c)(i). As this appears to be the only element in Policy ¶¶ 4(c)(i)-(iii) that would bestow rights and legitimate interests in the disputed domain name upon Respondent, Complainant prevails on this element. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); compare Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)   (finding that, as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark and that Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right, sufficient evidence that Respondent had no rights or interest in the domain name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <cyclegiant.net> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges in the Complaint that the <cyclegiant.net> domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii). To prevail on this element, Complainant must show that Respondent is a competitor of Complainant, and that Respondent’s primary motivation in registering the disputed domain name was to disrupt Complainant’s business. Complainant has demonstrated both of these prongs of 4(b)(iii).

Both Complainant and Respondent are in the business of selling motorcycle parts and accessories, and are thus competitors, establishing the first prong of analysis under Policy ¶ 4(b)(iii). As for proving that Respondent’s intent was to disrupt Complainant’s business, the Panel notes that Respondent’s registration of the <cyclegiant.net> domain name on May 29, 2003, came a little over three months after Complainant quit working for Respondent and opened its own business. Given that both parties are from Irvine, CA, the Panel finds it unlikely that Respondent was not aware of Complainant or its rights in the CYCLEGIANT mark when it registered the disputed domain name. With these facts in mind, Respondent’s use of the <cyclegiant.net> domain name to draw Internet users to its <spectrumhonda.com> domain name is evidence that Respondent intended to disrupt Complainant’s business at the <cyclegiant.com> domain name.

The Panel thus finds that Respondent registered and used the <cyclegiant.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iii), and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <cyclegiant.net> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  February 23, 2004

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