Domain Name - Domain name dispute resolution policy - Mark - Identical - Confusingly similar - Bad faith registration - Bad faith use - No legitimate interest - Disrupting competitor's business - Secondary marks & association- Common law trademarks - Unregistered trademarks - Free speech rights. 

Respondent cancelled a purchase of a new automobile from Quirk Nissan and registered the five disputed domain names, "QUIRK" "QUIRK CHEVROLET" "QUIRK OLDSMOBILE" "QUIRK KIA" QUIRK PREOWNED" and "QUIRK WORKS TO SAVE YOU MONEY."    Respondent created a website on which various materials were posted including a letter respondent had sent to Nissan Motor Corp.

Complainant alleged that it owned and used the trademarks.   Although they were not federally registered, Complainant claims them as common law trademarks. 

Held, Name Not Transferred to Complainant.

Under the ICANN Uniform Domain Name Dispute Policy, a trademark is not required to be registered in order to obtain protection under the policy. 

While the domain names are identical to the trademark of Complainant, they were not confusingly similar since a reasonable person viewing Respondent's website would conclude that it was a consumers affairs website and not offering goods and services for sale.  There was no likelihood of confusion with Complainant's marks as to the source or sponsorship of the website.

While Respondent may have intentionally intended to attract internet users to the website, the purpose was not for commercial gain.  The content supports Respondent's assertion that the purpose of the domain names and website were to educate the consumers, communicate with consumers and respond to individual consumer inquiries. 

The Panel found that Respondent had rights and legitimate interests in the disputed domain name.  The website consists of constitutionally protected non-commercial materials used in the exercise of Respondent's fundamental rights under the First Amendment of the US Constitution. 

No bad faith was found as Respondent was making a legitimate use of the disputed domain names. Respondent's purpose was not primarily for the purpose of selling the domain names to Complainant.  While a memo from Respondent to Complainant indicates a willingness to sell the site, there is considerable evidence that this was in response to an onslaught of inquiries, meetings and phone calls to respondent by Claimant's representatives. 

Policies referred to
ICANN Uniform Domain Name Dispute Policy.
National Arbitration Forums Supplemantal Rule 8, May 10, 2000.

Registration Agreements referred to
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Panel Decisions referred to
Fiona Roberts v. Russell Boyd  WIPO Case# D200-0210
Quirk Nissan v. Michael Maccini (Form 94959) June 29, 2000.

Cases referred to
Bally Total Fitness Holding Corporation v. Faber, 29 F. Supp. 2d 1161 (USDC C.D. Cal. 1998)
 

Crary, James Alan, Panelist:  -

REGISTRAR AND DISPUTED DOMAIN NAME(s)

            The domain names at issue are "QUIRKCHEVROLET.COM",

            "QUIRKOLDSMOBILE.COM", "QUIRKKIA.COM", "QUIRKAUTOS.COM", and

            "QUIRKMOTORS.COM," registered with Register.com.

PANELIST(s)

            James A. Crary as Panelist.

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

On 06/06/2000, Register.com confirmed by e-mail to The Forum that the domain names "QUIRKCHEVROLET.COM", "QUIRKOLDSMOBILE.COM", "QUIRKKIA.COM", "QUIRKAUTOS.COM", and "QUIRKMOTORS.COM" are 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 06/27/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by e-mail.

On June 26, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed James A. Crary as Panelist.

RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES' CONTENTIONS
            A.  Complainant

The Complainant alleged that it owned and used the trademarks "QUIRK" "QUIRK CHEVROLET" "QUIRK OLDSMOBILE" "QUIRK KIA" "QUIRK PREOWNED" and "QUIRK WORKS TO SAVE YOU MONEY". The alleged trademarks were not registered. The trademarks are asserted on the basis of being common law trademarks.

It was alleged that the Respondent became unhappy with Complainant's Quirk Nissan, Inc. affiliated dealership. Respondent canceled the purchase of a Nissan Maxima he ordered and his deposit was returned to him. He then proceeded to register four of the disputed domain names on February 29, 2000 and a fifth on March 13, 2000. Subsequently he created a website on which various materials including a letter Respondent had sent to Nissan Motor Corporation North America, were posted.

The Complainant alleged the disputed domain names were virtually identical to Complainants trademarks. It is further maintained that the Respondent had no right or legitimate interest in the domain names, and that he was not making a legitimate non-commercial fair use of the domain names.

Bad faith was asserted. The Complainant maintained that Respondents' conduct demonstrated bad faith under 4b(i) of the Policy because the primary purpose was to sell the disputed domain names to the Complainant. There was bad faith under Subsection (iv) since there had been intentional use of the disputed domain names in the attempt to attract for commercial gain internet users to Respondents' website by creating a likelihood of confusion with the Complainants marks as to the sponsorship or affiliation or endorsement of Respondents website.

Transfer of the disputed domain names was sought by the Complainant.
 
 

            B.   Respondent

The Respondent alleges that after purchasing a new automobile at the Quirk Nissan of Braintree Massachusetts he later found damage to the vehicle which had not been disclosed to him prior to the purchase. He eventually canceled the purchase and filed an official complaint with the Massachusetts Attorney General's Office.

Thereafter between February 29 and March 13, 2000 he registered a total of eight domain names, of which five are in dispute in this proceeding. The stated purpose of the website according to Respondents memorandum is to educate the consumer and to provide valuable information, to develop a means of communicating with the consumer to provide for his/her individual needs, and to respond to individual inquiries.

The Respondent maintained that the Complainant did not own the trademarks at issue. It did not have any Federal trademark registrations for the so-called marks.

The Respondent denied that the disputed domain names were identical or confusingly similar since a reasonable and prudent person would not confuse the source, sponsorship, affiliation, or endorsement of the established website. There was no confusion of content or intent between Respondents website and those associated with Complainant. Respondent suggested that the Panelist link to the domain names and peruse the contents of the website in support of the facts set out on the response.

The Respondent denied that the disputed domain names were registered in bad faith. It was maintained that they were registered specifically for a non-commercial use providing information over the internet. The term "E-commerce" as used in a memo of April 14, 2000 meant "providing intellectual exchange and social intercourse" over an electronic medium the internet. The website did not compete for the business of the Complainant or anyone else.

A brief review of the website content would put a reasonably prudent internet user on notice that he was not dealing with a Quirk affiliated sponsored or endorsed website. The domain names were selected to provide the consumer important information regarding Complainants dealerships and business practices.

The Respondent asserted that he had legitimate interest in the disputed domain names and the legal right to use them. It was asserted that the website had been and would continue to be maintained as a non-commercial consumer resource providing consumers information pertaining to Complainants dealerships. This constituted a good faith registration as a non-commercial resource.

The development of the website occurred well before any notice of the dispute. Further by establishing and maintaining as an information resource Respondent was exercising his First Amendment free speech rights.
 
 

FINDINGS
 1.   Complainant is the owner of a common law trademark QUIRK and associated marks as alleged in the complaint.

2.   Respondents use of the disputed domain names has been a non-commercial use.

DISCUSSION
Under the ICANN Uniform Domain Name Dispute Policy ("Policy") a trademark is not required to be registered in order to obtain protection under this Policy. Here the evidence supported a finding that the name Quirk had sufficient secondary association with the Complainant that common law trademarks existed under United States trademark law.

(See Julia Fiona Roberts v. Russell Boyd WIPO Case #D200-0210).

Although the Respondent suggests that the Forum or its Panelists "are welcome to link to the domain names and pursue the content of the website in support of the facts above" this would be improper. It is settled judicial practice that the issues have to be decided on the evidence in the record. A judicial officer, in this case an administrative panelist, cannot conduct an independent investigation. See Supplemental Rule 8 (National Arbitration Forums Supplemental Rule 8, May 10, 2000).

A review of the material on the Respondents' website supports a finding that it's contents are non-commercial in nature. Apart from a banner ad from register.com which appears on the site, the balance of the material has to do with the Respondent's experiences at a Quirk dealership, consumer information such as the Massachusetts Lemon Law and the names of other dealerships in the vicinity. There was nothing for sale on the site. The content of the site supported Respondents assertion that the purpose of the domain names and website were to educate consumers, communicate with consumers and the respond to individual consumer inquiries.

In the case of Bally Total Fitness Holding Corporation v. Faber, 29 F. Supp. 2d 1161 (USDC C.D. Cal. 1998) (the Court found that criticism of the Bally fitness company on a ‘Bally Sucks' web site did not infringe the company's trademark because it amounted to non-commercial expression protected by the First Amendment of the U.S. Constitution, did not tarnish the underlying trademark and was unrelated to the goods and services involved). It was concluded that the Claimants web site consisted of non-commercial First Amendment protected materials.

The Panel is aware of the decision in Quirk Nissan Inc. v. Michael Maccini (Form #94959) issued June 29, 2000. While it is true, and this decision affirms, Complainant's common law trademark rights, that does not dispose of the issue. In the Bally above cited, Bally asserted its federally protected trademark rights, as a nationally recognized and registered trademark. The Federal District Court nevertheless found for the defendant Faber, because his rights under the Constitution to express himself on the internet were of a superior nature and entitled to greater protection under the law. The panel respectfully disagrees with the decision.

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
The evidence supported that the domain names while identical to the trademark since they all contain the QUIRK mark, were not confusingly similar since a reasonable person viewing the Respondents website would conclude that it was a consumers affairs website and not offering goods and services for sale.

RIGHTS OR LEGITIMATE INTERESTS
The domain names at issue are used to link consumers and the general public to Respondent's website. The site contents except for one banner ad, consists of constitutionally protected non-commercial materials used in the exercise of Respondent's fundamental rights under the First Amendment of the US Constitution.

BAD FAITH
The Complainant alleges bad faith registration under Policy 4b (i and iv). Complainant maintained that the domain names were registered primarily for the purpose of selling them to the Complainant. While Respondents April 14th memorandum does contain language indicating a willingness to sell the site. There is considerable other evidence indicating that this was in response to an onslaught of inquiries, meetings, and phone calls to the Respondent by the Claimants representatives. The greater weight of the evidence supported a finding that Respondents purpose was not primarily for the purpose of selling the domain names to the Complainant.

With regard to Policy 4b (iv) it was concluded that while the Respondent may have intentionally intended to attract internet users to the website, the purpose was not for commercial gain. There was no likelihood of confusion with the Complainants marks as to the source or sponsorship of the website. As was noted above, the evidence supported a finding that it was a non-commercial site which provided consumer information and was protected by the First Amendment of the US Constitution. 

DECISION
For the reasons set forth above, the Panel concluded that the Complainant is not entitled to relief under Policy 4 (i), it is therefore ordered that the Respondent retain the disputed domain names.

Dated:  July 11, 2000
James Alan Crary, Arbitrator