A one member UDRP panel has ordered the domain name dirtyspokes.com returned to the company that allowed the doamin to drop drop in late December 2014, although they did not have a federally registered trademark
It should be noted that the domain dropped on December 27, 2014 and the UDRP complaint was filed on January 5th.
I think the quick reaction of the Complainant really helped it get the domain returned via a UDRP.
The one member panelist Hector Ariel Manoff found that the company which had owned the domain for some 8 years had gained common law rights to the domain name and that the term was not generic, which I would agree with.
The panel also placed great weight on the fact that the new owner was a domainer owing some 1,400 domain names and has lost several previous UDRP and asked $10,000 to buy the domain back.
The panel found that the new owners “failure to make an active use of the domain name demonstrates a lack of a bona fide offering of goods and services, and a lack of a noncommercial or fair use even though the new domain holder only owned the domain for less than a week before the UDRP. =
Here are the relevant facts and findings:
PARTIES’ CONTENTIONS
A. Complainant
1. In 2005 Complainant registered as an LLC in the state of Georgia under the name Dirty Spokes Productions, LLC.
2. Since that time Complainant has made continuous use of the dirtyspokes.com website and claims that it has developed common-law trademark rights in DIRTYSPOKES as a result of extensive, continuous, and substantially exclusive use of the mark over that period.
3. Complainant argues Dirty Spokes to be the leading southeastern athletic events company specializing in off road trail running and bike races in Georgia, Alabama, and North Carolina and to do approximately 30 different events on an annual basis. Through a partnership with XTERRA many of their races via a point system allow their racers to participate in “bigger” events across the US and internationally.
4. Complainant states that it used the disputed domain name to promote its products and services from 2005 until December 27, 2014, at which time its domain registration lapsed, after which it was registered by Respondent. Complainant contends that the disputed domain name is identical to its DIRTYSPOKES mark.
5. Complainant argues that Respondent has no legitimate interest in the disputed domain name since it is not known as DIRTYSPOKES and has not used that mark.
6. Complainant alleges that Respondent is in the business of securing and selling domains; is currently in possession of over 1400 domains and has engaged in a pattern of registering domain names in bad faith, as evidenced by prior decisions under the policy with this forum. Complainant asserts that Respondent registered the domain name with the sole purpose of selling it to Complainant at a substantial profit.
7. Complainant argues that Respondent registered and is using the disputed domain name in bad faith.
8. Complainant states that after it contacted Respondent concerning the domain name, Respondent sought to sell the domain name to Complainant for approximately $10,000 and that this amount far exceeds the amount necessary to register said domain.
B. Respondent
1. Respondent alleges that the domain name consists of the common English words “dirty” and “spokes” and that these words are not distinctive.
2. A “spoke” refers to one of a number of rods radiating from the center of a wheel, commonly found in mountain/road bikes and due to the nature of the activity, it is a common occurrence that bike spokes break or become “dirty” due to debris or neglect and is an issue regularly discussed in bike forums. Thus, Complainant should bring forth substantial evidence of acquired distinctiveness or secondary meaning in order to establish common law rights to overcome the first hurdle of the policy.
3. Respondent argues that evidence brought by Complainant is not sufficient enough to prove that the DIRTY SPOKES has become a distinctive identifier associated with the complainant or its goods or services and that it has acquired secondary meaning.
4. Respondent admits being in the “business” of acquiring descriptive and generic domain names for resale or for existing clients.
5. Respondent has no intention of operating a business to offer services with the domain name. The Respondent merely provides the goods and services in the form of a domain which allows individuals or companies to put their plans into action.
6. Respondent argues that when a domain name comes onto the market, registrants have no way of knowing that it belonged to a trade mark holder, and should not be required to assume in all cases that it was inadvertently allowed to lapse.
7. Respondent has not utilized an automated system but a conscious effort to secure a domain at great time and costs to the Respondent because of its descriptive features. Thus, Respondent is not subject to a higher standard of investigating whether their domains are identical or confusingly similar to the third party marks
8. Respondent argues that both parties do not share a close geographical proximity to one another (Georgia and the island of Jersey, Europe).
9. Respondent alleges that Complainant was not able to demonstrate that the Respondent registered the domain to capitalize on the Complainant’s mark.
10. Respondent argues that he is not attempting to compete with Complainant, disrupt its business, or prey on its mark in any way; therefore there are no instances of bad faith registration or use in the current case.
11. The correspondence that took place between the parties was instigated by Complainant and Respondent’s offer was in response to the Complainant’s inquiry.
12. The domain was acquired through auction when they failed to renew it.
C. Additional Submissions
Complainant.
1. Complainant submitted some additional evidence in the Additional Submission to prove its common law rights and news articles which backs as far as 2006.
2. Complainant argues most of the Google’s search results about “Dirty Spokes” are third party references to the Complainant.
3. Complainant argued that Respondent either did nothing to research the mark or did so knowing that the Complainant was using the mark. Based on the Google and Bing results, Complainant argues that it would take a matter of seconds to become aware of the fact that the Dirty Spokes mark was being used by the Complainant.
4. Complainant refutes the Respondent’s argument about the very small area of use of the trademark (Georgia) and added that Dirty Spokes has a partnership with XTERRA that has a much broader reach. Moreover, the localized use of the disputed domain is irrelevant in this case since Respondent is not claiming to use the trademark in a localized area of Europe.
Respondent.
1. Respondent argues that Complainant failed to provide sufficient proof of common law rights and to show that it has provided goods or services under the unregistered mark and acquired a reputation such that members of the public associate those goods or services with the Complainant exclusively and not others.
2. Respondent argues that no evidence was submitted to show that the Complainant, Mr. Tim Schroer, is associated with the mark or the company Dirty Spokes Production.
3. Respondent argues that where it is true that a combination of common words can acquire trademark status, they are still free for public use when not used in a way that would infringe the mark, as is the case here.
4. Respondent is not using the website and the disputed domain name to advertise products or services that compete with the Complainants. The website does not intend to imitate the Complainant’s in any way.
5. Respondent argues that there is no evidence on the record to demonstrate that Respondent registered the domain name with the clear-cut intention of capitalizing on the goodwill created by Complainant.
FINDINGS
“Dirty Spokes Productions, LLC. was registered by Complainant in 2005 and the domain name
Respondent registered the disputed domain name when it lapsed and try to sell it back to Complainant for $10,000.00, which far exceeds the amount necessary to register the domain name.”
“Even though Complainant does not have a registration for DIRTYSPOKES mark, the Panel finds that a valid trademark registration is not a prerequisite to satisfy Policy ¶ 4(a)(i).
Complainant claims to own the DIRTYSPOKES mark through common law rights and purports to use the DIRTYSPOKES mark in connection with its business as the leading southeastern athletic events company, specializing in off road trail running and bike races.
Complainant submitted evidence to prove that Dirty Spokes Production LLC was registered in the state of Georgia in 2005. (See Complaint Annex 17075944, in which is also mentioned that Timothy Schroer is the registered agent. It proves his association with the company Dirty Spokes Production).
Moreover, Complainant filed evidence to prove use of DIRTY SPOKES and the
Complainant has submitted evidence about a lot of different merchandizing products which show an important investment to promote his services. This Panel finds that Complainant has demonstrated that it has established rights in the DIRTYSPOKES mark.
This Panel points out the evidence submitted by the Complainant which includes references such as “Dirty Spoke Race” which shows secondary meaning.
Finally this Panel finds that Respondent recognized Complainant’s business and his domain name when answering Complainant’s e-mail regarding the purchase of the domain name. On December 29, 2014 Respondent said “Hey Tim You must have a busy little business I have had loads of emails asking if you are still in business”.
This Panel finds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).””
“Complainant has submitted evidence which shows that Respondent has not actually made an active use of the disputed domain name and that Respondent has registered it for sale. Respondent has confirmed it.
Respondent has not actually made an active use of the disputed domain name and this Panel finds that Respondent has not provided any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name which indicates a lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
This Panel finds that dirtyspokes.com is not a generic term domain name. No concrete evidence was filed in this respect. For this reason, Respondent’s arguments about having rights and legitimate interests in the disputed domain name because Respondent is in the business of buying and selling generic domain names are not accepted by the Panel.
This Panel also finds that Respondent’s failure to make an active use of the
The Panel finds the second element of the Policy is satisfied.
Registration and Use in Bad Faith
The evidence submitted by the Complainant proves that Respondent attempted to sell the disputed domain name back to Complainant for $10,000.00, which far exceeds the amount necessary to register the domain name.
Moreover, this Panel finds that Respondent’s behavior has become somewhat of a pattern in that he has had other UDRP and WIPO decisions against him. See, e.g., Sonny Gambhir v. Al Perkins, FA 1507793 (Nat. Arb. Forum July 9, 2013); Teledrift Co. v. Al Perkins, FA 1423203 (Nat. Arb. Forum Jan. 12, 2012). Previous panels have found that when a Respondent is on the losing end of many UDRP decisions, such behavior seems to create a sort of pattern of bad faith registration and permeates the panel’s instant bad faith consideration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
This Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i)and 4(b)(ii).
Respondent contends that the
This Panel finds that Respondent did not submit sufficient evidence to show that the domain name currently in dispute is a generic one. The evidence refers to “Cleaning Spoked Wheels”, “Clean Spokes”, “Clean Motorcicles Wheel Spokes”, “Clean Aluminum Bicycles Wheels”, etc. Thus, the Respondent’s argument about selling it for such a high price because it was a valuable generic domain name is not accepted by this Panel.
Respondent claims it was unaware of Complainant or its alleged DIRTYSPOKES mark at the time of domain name registration, and argues that Complainant operates within a small region within the United States, while Respondent is located in Jersey.
In addition, Respondent argues having utilized a conscious effort to secure a domain at great time and costs and admitted being in the “business” of acquiring descriptive and generic domain names for resale.
Thus this Panel finds that Respondent was “willfully blind” in failing to make a quick and simple enquiries to find out if DIRTY SPOKES belonged to third parties.
The Panel finds the third element of the Policy is satisfied.
