The Complainant is Boyd Coddington Inc. of Kansas City, Missouri, United States of America, represented by Polsinelli Shughart PC, United States of America.
The Respondent is Christopher Coddington of Whittier, California, United States of America, represented by McDowell, Rice, Smith & Buchanan, P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2012. On May 16, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 16, 2012, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Response was filed with the Center on June 11, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on July 3, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel on July 10, 2012 issued a Procedural Order inviting the parties to submit further documentation and information relevant to several contentions in the Complainant and the Response, respectively, on or before July 17, 2012. The date for the Panel to forward its decision to the Center was extended to July 31, 2012, accordingly. Both Parties forwarded supplemental filings to the Center on July 17, 2012. 4. Factual Background
The matter involves a dispute among family members1 concerning ownership rights in the disputed domain name. The Complainant maintains it is the rightful owner of the disputed domain name, and invokes the Policy through the assertion of prior common law trademark rights in the disputed domain name. The Respondent currently is the registrant of the disputed domain name, according to the relevant WhoIs record, but the Complainant alleges that the Respondent wrongfully acquired the disputed domain name. The Respondent denies any wrongful conduct, and further disputes the Complainant’s assertion of trademark rights in the disputed domain name, contending that “billet wheel” is a generic term for wheels machined from a billet (or block) of metal.
The record in this administrative proceeding reflects that the Complainant in October 2011, commenced a civil lawsuit against the Respondent in the 6th Circuit Court of Platte County, Missouri, seeking to enjoin the Respondent from “using or operating www.” and to recover monetary damages. Boyd Coddington, Inc. and Genuine Boyd’s LLC v. Chis Coddington, Case No. 11AE-CV03614. This lawsuit was dismissed without prejudice on January 4, 2012, at the request of the Complainant.
Subsequent to the commencement of formal proceedings herein, the Respondent on June 7, 2012, filed a civil lawsuit against the Complainant, Genuine Boyd’s, LLC and Boyd Coddington, Jr. in the Superior Court of Orange County, California on June alleging, inter alia, breach of contract regarding a claimed lease of the disputed domain name to the Complainant by the Respondent. Chris Coddington, Ray Fulcher and HRBB, LLC v. Boyd Coddington, Jr., Boyd Coddington, Inc., Genuine Boyd’s, LLC, and Does 1-25, Case No. 30-2012.2 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name originally was registered by Boyd Lee Coddington in 1999, and associated with a website selling automotive structural parts, including wheels. The Complainant submits that Boyd Lee Coddington is the owner and President of the Complainant and of NRG Motor Sports, Inc. The Complainant further avers that Boyd Lee Coddington is the majority owner and President of Genuine Boyds, LLC.
The Complainant contends that Boyd Lee Coddington transferred the disputed domain name and associated website to NRG Motor Sports, Inc. in 2003, and that NRG Motor Sports, Inc. transferred the disputed domain name and associated website to the Complainant in 2009 as part of a purchase agreement. The Complainant submits that it allowed Genuine Boyds, LLC to use the disputed domain name and associated website to sell products, but that the ownership of the disputed domain name and associated website was never transferred to Genuine Boyds, LLC, and should have remained instead with the Complainant.
According to the Complainant, the Respondent became aware of the disputed domain name while formerly employed by Genuine Boyds, LLC in a customer service role, such that the Respondent had access to the administrative details related to the registration of the disputed domain name. The Complainant contends that after the Respondent’s employment was terminated the Respondent fraudulently re-registered the disputed domain name, which the Complainant submits the Respondent since has used with a website selling products that compete directly with those of the Complainant.
The Complainant asserts common law rights in “” based the continuous use of the disputed domain name with the Complainant’s website since 2009, and up until the time of the Respondent’s re-registration of the disputed domain name, together with use by the Complainant’s predecessors-in-interest dating as far back as 2003. The Complainant contends that by virtue of its extensive advertising and marketing efforts, consumers have come to associate the disputed domain name with the Complainant’s product. The Complainant points to expenditures of approximately USD 78,000 in relation to web development and design, web advertising, printed advertising, and a Google AdWords campaign. In addition, the Complainant notes sales between 2009 and 2011 in excess of USD 2,000,000.
The Complainant submits that the disputed domain name is identical to the Complainant’s common law “” mark, and accordingly confusingly similar to the mark. The Complainant further maintains that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent fraudulently registered the disputed domain name in his own name, and subsequently associated the disputed domain name with a website on which the Respondent is offering for sale directly competing products, thus trading on the goodwill of the Complainant’s mark. Given all of the foregoing, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent disputes the statements and allegations in the Complaint, and submits that he is, and at all material times has been, the rightful owner of the disputed domain name. The Respondent asserts that he has been the administrative contact for the disputed domain name as well as other domain names owned by NRG Motor Sports, Inc. dating back to 2000.
The Respondent contends that Gregory Coddington lawfully acquired the disputed domain name in May 2008, in a transfer authorized and approved by the controlling directors and shareholders of NRG Motorsports, Inc., who the Respondent identifies as Diane Coddington, Ray Fulcher and Jo Coddington. The Respondent maintains that Gregory Coddington leased the disputed domain to him in 2008, and sold the disputed domain to him in May 2011.
The Respondent further claims that the purchase agreement entered into between the Complainant and NRG Motorsports, Inc. in November 2009, is invalid. According to the Respondent, this is so because the California Secretary of State suspended NRG Motor Sports, Inc.’s power, rights and privileges in July 2009, and because Boyd Lee Coddington was not authorized to act on behalf of NRG Motor Sports, Inc. concerning the purchase agreement.
The Respondent further contends that the Complainant does not possess trademark rights in “” because it is a generic term for a type of wheel forged or machined from a billet of aluminum. The Respondent notes the definitions of “wheel” and “billet” provided in Merriam-Webster’s online dictionary. The noun “billet” is defined therein as “a bar of metal”, “a piece of semifinished iron or steel . . .made by rolling an ingot or bloom”, “ a section of nonferrous metal ingot hot-worked by forging, rolling or extrusion”, and “a nonferrous casting suitable for rolling or extrusion”.
The Respondent also provides examples of advertising on the websites of other manufacturers or retailers of aftermarket automobile parts referring to this type of wheel as a “billet wheel”, a “billet aluminum wheel”, a “forged billet aluminum wheel”. The Respondent also submits an online trade publication referring to this type of wheel as a “billet wheel”, as well as a letter from a retailer of aftermarket automotive parts referring to the “billet wheel market”. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in “”. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others.
After careful consideration of the totality of facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating trademark or service mark rights in “”. For purposes of United States trademark law, marks traditionally have been arranged into five generally increasing categories of consideration for protection: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. See, e.g., Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997). A generic mark is one that refers or has come to be understood as referring “to the genus of which the particular product is a species.” Id.
A generic mark is not entitled to protection under United States trademark law. "[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
There is substantial indication in the record of the generic use of “billet wheel” in by manufacturers and retailers in the relevant industry to identify a type of wheel forged or machined from billet (usually aluminum) – i.e., “the genus of which the particular product is a species”. There is indication of such generic use on the Complainant’s website “” as well, which prominently displays the following: “Welcome to Boyd Coddington USA. Home of the Original Billet Wheel” (emphasis added). Further, while the Complainant expressly identified a number of trademarks as supporting it claims for injunctive relief and damages in the now-dismissed lawsuit brought against the Respondent, “” was not one of the identified marks.
In sum, the record before the Panel reflects on balance that the term “billet wheel” is commonly understood and used in the relevant market as the name of a particular type of product. As such, for purposes of the present Policy proceeding, the Panel concludes that Complainant has failed to establish trademark or service mark rights in “billet wheel” or “” for use as a distinctive or exclusive identifier of its product. That is to say, the Panel finds that the Complainant cannot deprive competing manufacturers of the right to call a product by its name or register a domain name on a first come first serve basis that is comprised of such a generic term. Even assuming arguendo that “billet wheel” could be considered as descriptive of the product rather than the name for the product, establishing common law rights in a descriptive mark still require a showing that the public has come to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. Given the facts and circumstances in the record as described above, the requisite showing in the Panel’s opinion has not been made.
Accordingly, the Panel concludes that the Complainant has not satisfied its burden under Paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
In view of the Panel’s determination above under Paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under Paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In view of the Panel’s determination above under Paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address issues of bad faith registration and use of the disputed domain name under Paragraph 4(a)(iii) of the Policy. 7. Decision
The Policy by its own terms is not applicable to any and all disputes involving domain names. Panels must decide cases based on the limited scope of the Policy, and the jurisdiction of this Panel necessarily is limited to cases of abusive domain name registration in which the registrant is seeking to profit from and exploit the trademark of another, also known as “cybersquatting”. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons set forth above, the Panel finds the instant dispute to be beyond the scope of the Policy. Accordingly, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: July 31, 2012
1 Boyd Lee Coddington, the owner and President of the Complainant, and Chis Coddington, the Respondent, and Gregory Coddington are the surviving sons of the late Boyd Leon Coddington. The late Mr. Coddington, who died intestate, is also survived by his spouse, Jo Coddington, according to the Response. There is a pending probate case. The late Mr. Coddington perhaps was best known as an American “hot rod” designer, and he is widely credited for the innovation of custom wheels forged or machined from a billet of aluminum.
2 The lawsuit sets forth additional counts of breach of contract, fraud, and intentional tort.
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