DECISION

Manheim Services Corporation d/b/a Minneapolis Auto Auction v. Titanium Entertainment, Inc.

Claim Number: FA0402000237451

PARTIES

Complainant is Manheim Services Corporation d/b/a Minneapolis Auto Auction (“Complainant”), represented by Douglas J. Frederick, of Rider Bennett, LLP, 333 South Seventh Street, Suite 2000, Minneapolis, MN 55402.  Respondent is Titanium Entertainment, Inc. (“Respondent”), represented by Jonathan Tolentino, 501 Goodlette Rd. Ste. D-100, Naples, FL 34102.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <minneapolisautoauction.com>, registered with Tucows Inc.

PANEL

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

Honorable Carolyn M. Johnson, G. Gervaise Davis, III and Dennis A. Foster  as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 13, 2004; the Forum received a hard copy of the Complaint on February 17, 2004.

On February 16, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <minneapolisautoauction.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 February 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 15, 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@minneapolisautoauction.com by e-mail.

A timely Response was received and determined to be complete on April 5, 2004.

As permitted by NAF Supplemental Rule 7, the Complainant submitted a timely Additional Submission on April 9, 2004, while the Respondent filed a timely Additional Submission in reply on April 14, 2004. The Panel did take the parties' Additional Submissions into consideration in reaching this Decision.

On April 20, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Carolyn M. Johnson (Ret.), G. Gervaise Davis III and Dennis A. Foster as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

--Registered and unregistered marks are entitled to protection under Policy paragraph 4(a)(i).  Seal v. Basset, D2002-1058 (WIPO Jan. 26, 2003).

--A showing of secondary meaning is not required to establish rights under the ICANN Policy  (Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001)) and the acquisition of rights in a mark can be demanded by continuous use over a period of time (Am. Home Prod. Corp. v. Malgioglio, D2001-1239 (WIPO Feb. 19, 2001)).

--Through Complainant's long and continuous use of the Minneapolis Auto Auction mark, the mark is associated not only with Complainant's goods and services, but also with Complainant's good reputation and goodwill.  Therefore, Complainant has established trademark and service mark rights in the Minneapolis Auto Auction mark.

--Complainant need only make a prima facie showing that Respondent should not be considered to have any rights or legitimate interests in the domain name at issue. See Amazon.com, Inc. v. Amazonpic, D2002-0330 (WIPO July 22, 2002 ).

--Respondent does not operate in the Minneapolis area, and does not offer goods or services in connection with automobiles or auctions.  Therefore, Respondent has no legitimate interest in the domain name <minneapolisauction.com>.

--The fact that Respondent has no legitimate interest in the domain name is further demonstrated by Respondent's non-use of the domain name.

--The mere speculative idea for a bona fide business application of a domain name, even a generic domain name, is not a legitimate right or interest.

--Furthermore, as a Florida entity, with its principal place of business in Florida and with its officers being Florida residents, Respondent has no legitimate interest in a domain name with a geographic term that is not associated with Florida, such as <minneapolisautoauction.com>.  This is indicative of Respondent's bad faith registration.

--Because Respondent has merely sat on the domain name since July of 2002 without using it in any manner, Respondent is not commonly known by the domain name <minneapolisauction.com>, and is not making a legitimate noncommercial or fair use of the domain name.

--Respondent's rejecting an offer to purchase the domain name for out-of-pocket expenses indicates an attempt to extract the highest amount from a complainant.  Seal, supra.  This weighs toward a finding of bad faith.

--The Respondent has exhibited a pattern of bad faith registrations and non-use of numerous domain names, which simply preclude those with legitimate interests in those domain names from using them.

--The manner in which the Respondent registered the disputed domain name supports a finding of bad faith because the Respondent attempted to hide its identity.  This intentional concealment of WHOIS information shows that Respondent was aware of its bad faith registration and wrongful behavior.  The case, Dr. Ing. H.C.F. Porsche AG v. Sabatino Andreoni, D2003-0224 (WIPO May 12, 2003), involved a complaint alleging that registration by "Domains by Proxy" is just a cover-up used to make it impossible to institute legal proceedings against the Respondent who is the real owner of the domain name.

--Passive holding and continued retention of a domain name without development is evidence of bad faith.  See Am. Home Prod. Corp. supra, (finding that holding a domain name for 1 1/2 years without an operational web site is bad faith).

         

B. Respondent

--Complainant does not have a registered trademark for Minneapolis Auto Auction.  Minneapolis Auto Auction is a common descriptive term subject to substantial third party use. 

--The Complainant’s name, Manheim’s Minneapolis Auto Auction, is not identical to the disputed domain name, <minneapolisautoauction.com>.  Manheim also is a city.

--Since registration of the domain name <minneapolisautoauction.com>, Respondent has been developing an interactive auto auction website which targets Minneapolis area residents and intends to derive income from this web site once operational.  Several software and Internet web site vendors are currently involved in the development of the website which Respondent intends to host at <minneapolisautoauction.com>.

--Respondent’s registration should be considered fair use, as it does not intend to mislead consumers nor trade on any good will established by Complainant.  Respondent’s domain name is distinct from the Complainant’s generic and descriptive use of the words Manheim’s Minneapolis Auto Auction.

--Respondent’s relationship with Complainant further evidences Respondent’s legitimate interest in the concerned domain name.  On 01/05/2004 Complainant contacted Respondent and solicited the purchase of the disputed domain name (Response Schedule K).  Respondent communicated to Complainant that Respondent had no intent to sell the domain name. (Schedule L).

--Simply registering an available generic and descriptive mark and not offering it for sale is not considered bad faith. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001.

--Complainant admits that Respondent rejected its offer to purchase the disputed domain name.  Complainant does not advance any evidence whatsoever that Respondent intended to extract any amount of money from Complainant.

--Complainant has not provided any evidence whatsoever that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

--Complainant has not provided any evidence that by using the domain name, Respondent has intentionally attempted 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.

--Complainant also suggests warehousing domain names on the part of the Respondent yet cites no facts or evidence consistent with the elements required for this allegation.    Respondent respectfully requests that the Panel adopt the reasoning in Canned Foods, Inc. supra recognizing that Complainant “establishes no connection between these names and any other trademarks. The most that Complainant asserts is that Respondent has a pattern of registering domain names that once belonged to other parties and this is not an actionable offence under the UDRP.”   

C. Additional Submissions

Complainant's Additional Submissions

--Initially, Respondent attacks Complainant's position by arguing that the term Minneapolis Auto Auction is not protectible as a trademark or service mark because it is geographically descriptive.  Such an argument is incredible, especially given the fact that a simple search on the United States Patent and Trademark Office website reveals that the marks NATIONAL AUTO AUCTION ASSOCIATION, SOUTHERN AUTO AUCTION, SOUTH BAY AUTO AUCTION, GREATER ROCKFORD AUTO AUCTION, and HOUSTON AUTO AUCTION have been successfully registered with the United States Patent and Trademark Office (Complaint Schedule 1).  Respondent's argument also fails to acknowledge that geographically descriptive marks are protectible under common law and can be registered upon a showing of acquired distinctiveness, which appears to be the case with the above-referenced trademarks.

--Even though Complainant consented to the extension of time, Respondent has failed to demonstrate how the Schedules filed with the Complaint fail to support Complainant's long and extensive use of the Minneapolis Auto Auction mark. 

--In support of its argument that Respondent has a legitimate interest in the domain name <minneapolisautoauction.com>, Respondent has submitted documents and purported communications that never identify <minneapolisautoauction.com> as a domain name that is the subject of Respondent's efforts.  In fact, Respondent has intentionally redacted the precise identifying characteristics from a number of documents.

--Respondent argues that its intended use of the domain name should be considered "fair use," even though it appears that Respondent's intent is to sell automobiles utilizing <minneapolisautoauction.com>.  However, there is no "fair use" when the use or the intent to use a domain name is accompanied by an intent for commercial gain.

--It just so happens that entities with the same address as Respondent in this matter, using "godaddy.com," the same registrar of the <minneapolisautoauction.com> domain name, have registered domain names corresponding to several of Complainant's auction trade names, e.g.,<tusconautoauction.com>, <cincinnatiautoauction.com>, <louisvilleautoauction.com>, and <mississippiautoauction.com>.  The registrations show  "Box 770144 Vanderbilt Beach, Florida 34107" as registrant's address, which is the same address as Titanium Entertainment, Inc., i.e., the Respondent in this matter.

--The Complainant believes the Respondent registered a number of other domain names similar to the disputed domain name on July 29, 2002, all through the registrar "Domains by Proxy": <tusconautoauction.com>, <detroitautoauction.com>, <kansascityautoauction.com>, <stlouisautoauction.com> (Complaint Schedule 10 and Supplemental Schedules 3 and 4).

--These additional registrations suggest the Respondent had prior knowledge of the Complainant's use of the corresponding marks in connection with auto auction services.  It is well settled that when a person had actual or constructive knowledge of a complainant's mark before the person registered a domain name that is identical or confusingly similar to complainants mark, this is evidence of bad faith registration.  See RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001).

--Additionally, Complainant has discovered that Respondent's related companies have also registered domain names that correspond to trademarks and service marks owned by other well-established entities, for example, <desmoinesautoauction.com>, <idahoautoauction.com>, <calgaryautoauction.com).  Thus, there is ample evidence that Respondent has exhibited a pattern of registering domain names, preventing the owners of the corresponding trademark or service mark from reflecting the mark in a domain name.  This constitutes bad faith registration under ICANN Policy paragraph 4(b)(ii).

          

Respondent’s Additional Submission

--Complainant's additional submission is extraordinary in that it attempts to fool this panel into granting trademark rights where no legal foundation for such has ever been available.  In Complainant's additional submission, Complainant attaches several USPTO filings including, SOUTHERN AUTO AUCTION and HOUSTON AUTO AUCTION.  These registrations protect only a graphic stylized script and do not protect the common generic or descriptive terms (Respondent's Supplemental Submission Exhibit A).  In fact, in those registrations cited by Complainant there are disclaimers by the applicants for those generic and descriptive terms--a very important fact that was omitted in order to further their argument. 

--Another important omission by Complainant in their additional submission is their own trademark application for "Dallas Auto Auction".  In this application, the Complainant has yet to overcome opposition dating from 2002. 

--In Complainant's continued argument, Complainant suggests that the Respondent's development and business model should be considered problematic because Respondent did not submit their entire business plan.  The Respondent has disclosed a substantial portion of its business plan including ongoing business, cost and intent.  

FINDINGS

The Complainant has operated an auto auction business in Minneapolis, Minnesota using the name "Minneapolis Auto Auction" and "Manheim Minneapolis Auto Auction" since 1973.  The Complainant does not however have a registered trademark for either "Minneapolis Auto Auction" or for "Manheim Minneapolis Auto Auction".

The Respondent, an entity located in Naples, Florida, registered the disputed domain name, <minneapolisautoauction.com>, on July 20, 2002.

The Respondent’s name, Titanium Entertainment, Inc., indicates it is involved in entertainment, but the Respondent also apparently deals in domain names.

 The Respondent has not yet begun using the disputed domain name, but the Respondent has exhibited a few documents that, if taken at face value, state the Respondent intends to use the Internet to conduct the same type business that the Complainant engages in.  However, the Complainant has questioned the authenticity of the Respondent's documents.

The Respondent, or entities located at Respondent's address, have also registered many other domain names, and among these are domain names similar to the disputed domain name: <tusconautoauction.com>, <cincinnatiautoauction.com>  and <louisvilleautoauction.com>. 

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.

Identical and/or Confusingly Similar

As Respondent has pointed out, Complainant does not have a registered trademark containing the disputed domain name, <minneapolisautoauction.com>.  However, Complainant has demonstrated to the Panel that Complainant or its predecessor in interest has used the name "Minneapolis Auto Auction" to sell motor vehicles in Minneapolis since 1973 (Complaint Schedules 1-5).  For example, Complaint Schedule 4 is an advertisement for one of Complainant’s 1992 auctions.  Complainant's claim, then, is that it has acquired common law trademark rights in the disputed domain name through uninterrupted use from 1973.

Respondent also has tried to rebut the Complainant's common law trademark claims by arguing that the name "Minneapolis Auto Auction" is geographic and descriptive or generic.  The Panel finds the Respondent does have a point: "Minneapolis" is a geographic name, and "Auto Auction" is descriptive.  However, the Panel believes that Complainant's demonstrated twenty plus years of uninterrupted business use of the disputed domain name outweighs Respondent's objections.  Twenty years is ample time for the public to have ascribed secondary meaning to the name "Minneapolis Auto Auction".

Therefore, the Panel finds that, per paragraph 4(a)(i) of the Policy, the disputed domain name, <minneapolisautoauction.com>, is identical to Complainant’s common law trademark.   

Rights or Legitimate Interests

Complainant argues that Respondent registered the disputed domain name without any authorization from Complainant.  Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has attempted to show that it does have rights and legitimate interests under Policy paragraph 4(c)(i) because it plans to use the disputed domain name to auction motor vehicles on-line: this purports to be preparations to offer bona fide services.  The Respondent has as yet transacted no business, but it claims to have made detailed plans and to have engaged the assistance of several computer-consulting firms (Response Schedules C and D).  Complainant contests Respondent's proof on this point and asserts Respondent has fabricated its evidence by redacting messages to fit Respondent's contention.  In fact, most of the correspondence is vaguely general and has little to do with this dispute.

Respondent's alleged, exhibited correspondence with consulting firms does not appear authentically connected with setting up an on-line automobile auction.  Even if the correspondence did point in this direction, the Panel does not see how Respondent's auction service offering could be in good faith since Respondent was well aware of Complainant's business in Minneapolis--and comparable businesses in other cities-- when Respondent registered the disputed domain name.

Respondent also half-heartedly contends it is making a fair use of the disputed domain name per Policy paragraph 4 (c)(iii), but this is directly contradicted by Respondent's elaborate defense that it intended to make a bona fide offering of on-line motor vehicle auction services.  The Panel finds Complainant has shown Respondent has no rights or legitimate interests in the disputed domain name per paragraph 4(a)(ii) of the Policy.    

Registration and Use in Bad Faith

Complainant initially attempts to show that Respondent registered and is using the disputed domain name in bad faith because Respondent rejected Complainant’s offer to buy the domain name at cost.  However, the Panel agrees with Respondent that this alone is insufficient proof of bad faith.  But in its letter to Complainant of January 9, 2004 (Response Schedules K and L), the Respondent claims to have “spent thousands of dollars in time and money in this development.”  In the Panel’s view, if this were true, Respondent would have more to show than e-mails of dubious provenance.  The Panel believes Respondent was attempting to sell the disputed domain name to Complainant for “several thousand dollars” in violation of paragraph 4(b)(i) of the Policy.

Complainant also contends Respondent registered the disputed domain name in bad faith because it intended to prevent Complainant from registering it and the Respondent has engaged in a pattern of such conduct (a violation of the Policy at paragraph at 4(b)(ii)).  In support, Complainant cites some of Respondent’s other registrations, viz., <tusconautoauction.com>, <cincinnatiautoauction.com> and <louisvilleautoauction.com>.  Respondent acknowledges these registrations but correctly points out that the trademark registrations for these names are for drawings rather than words.  The Panel finds this does not alter the fact that Respondent has engaged in a pattern of registering domain names like <minneapolisautoauction.com>.

Finally, the Panel agrees with Complainant that Respondent has violated the bad faith provisions of the Policy by passively holding the disputed domain name for an unduly long period of time.  Respondent registered the disputed domain name on July 29, 2002, now almost two years ago.  Notwithstanding Respondent’s apparently redacted documents purporting to show preparations to set up on-line automobile auctions for Minneapolis, the Panel finds the Respondent has made scant preparation to use the disputed domain name.  The Panel is aware this is not one of the enumerated bad faith provisions of the Policy at 4(b)(i-iv), but paragraph 15(a) of the Rules gives the Panel the discretion to find other bad faith grounds where appropriate. Lengthy passive holding is well-established as a ground for bad faith. See Recordati S.P.A. v. Domain Clearing Company, D2000-0194 (WIPO July 21, 2000).  

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 <minneapolisautoauction.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn M. Johnson (Ret.), G. Gervaise Davis, III, Dennis A. Foster, Panelists
Dated: May 4, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/645.html