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Mountain #Motorsports .com : Common law #trademark not sufficient per #UDRP outcome

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UDRP has been denied.

The UDRP decision in a case for the domain MountainMotorsports.com shows how difficult it is to stage a complaint based on a common law trademark.

A three member panel at the WIPO ordered the domain to remain with the Respondent.

The Respondent’s attorney was ESQwire, a premium sponsor of our blog.

According to the Complainant, the alleged common law trademark was the basis of their filing:

“The Complainant contends that the disputed domain name is identical to the common law trademark MOUNTAIN MOTORSPORTS in which the Complainant has rights, as the disputed domain name wholly incorporates this trademark. The Complainant submits that its MOUNTAIN MOTORSPORTS trademark has become a distinctive identifier of the Complainant’s products as a result of tens of thousands of man hours of work and millions of US Dollars in advertising, and has valuable goodwill and a strong reputation. The Complainant advertises its products through its commercial showrooms where more than a hundred salesmen and servicemen are employed, through banner advertisements, cost-per-click advertising, affiliate advertising programs, web portals, and emails.”

But that’s not strong enough of an argument, not to mention the fact that the Respondent registered and held the domain for 15 years:

“The Respondent submits that it has registered the disputed domain name in May, 2003 and has maintained continuous ownership over it for the past 15 years. The Respondent points out that the Complainant does not have a registered trademark, and it has not established that it has common law trademark rights to the descriptive term “mountain motorsports”, which is subject to a substantial third-party use across the United States. To establish common law trademark rights to a descriptive or generic term such as this one, the Complainant must present evidence of secondary meaning, i.e., evidence that consumers identify the term “Mountain Motorsports” exclusively, or almost exclusively, with the Complainant or with its products.”

Although no finding of Reverse Domain Name Hijacking was delivered, the panel decided on behalf of the Respondent, and the domain MountainMotorsports.com remains with them.

Full details on this decision follow.

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mountain Adventures LLC v. Privacydotlink Customer 3633923 / DOMAIN ADMINISTRATOR, PORTMEDIA HOLDINGS LTD
Case No. D2018-2545

1. The Parties

The Complainant is Mountain Adventures LLC of Kodak, Tennessee, United States of America (“United States”), represented by Steven Rinehart, United States.

The Respondent is Privacydotlink Customer 3633923 of Grand Cayman, Overseas Territory of the United Kingdom / DOMAIN ADMINISTRATOR, PORTMEDIA HOLDINGS LTD of Hong Kong, China, represented by ESQwire.com, P.C., United States.

2. The Domain Name and Registrar

The disputed domain name <mountainmotorsports.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on November 16, 2018. In response to a request for clarification by the Center, the Complainant filed a second amended Complaint on November 21, 2018.

The Center verified that the Complaint together with the first and second amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. Upon request of the Respondent, the due date for Response was automatically extended to December 17, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center December 17, 2018.

The Center appointed Assen Alexiev, Richard Hill, and The Hon Neil Brown Q.C. as panelists in this matter on January 18, 2019. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant was incorporated in 2000 and is doing business under the name Mountain Motorsports. It retails with dirt bikes, motorcycles, four-wheelers, ATVs, trailers, and other motorsport vehicles. The Complainant is an authorized dealer of a number of major brands and maintains showrooms and service departments in various geographic locations in the states of Georgia and Tennessee in the United States.

The Complainant submits that it has rights in the common law trademark MOUNTAIN MOTORSPORTS.

The disputed domain name was registered on May 20, 2003. It currently resolves to a pay-per-click webpage containing links related to motorcycles, and has also contained such links since 2005.

The Complainant’s web site appears to be “www.mtn-motorsportstn.com”. From a search in the WayBack Machine “www.archive.org”, it appears that that website was first created in 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the common law trademark MOUNTAIN MOTORSPORTS in which the Complainant has rights, as the disputed domain name wholly incorporates this trademark.

The Complainant submits that its MOUNTAIN MOTORSPORTS trademark has become a distinctive identifier of the Complainant’s products as a result of tens of thousands of man hours of work and millions of US Dollars in advertising, and has valuable goodwill and a strong reputation. The Complainant advertises its products through its commercial showrooms where more than a hundred salesmen and servicemen are employed, through banner advertisements, cost-per-click advertising, affiliate advertising programs, web portals, and emails.

As evidence of its alleged common law trademark rights in MOUNTAIN MOTORSPORTS, the Complainant submits a printout of a banner advertisement, a screenshot of the Complainant’s current website, an archived screenshot from the WayBack Machine of the Complainant’s website which has been in use for over ten years, an aerial photograph of one of the Complainant’s locations, an advertisement for ATV vehicles posted on the CycleTrade.com website, Tennessee Secretary of State filings, and a copy of a print advertisement.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized, licensed, or otherwise permitted the Respondent to use the MOUNTAIN MOTORSPORTS trademark, and the Respondent has never used the disputed domain name for any legitimate purpose. The disputed domain name currently resolves to a generic landing page which attempts to install malware on visitors’ computers, prompting them to install the application SecuryBrowse.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith, and intentionally attempts to divert Internet users to its website at the disputed domain name to interfere with the Complainant’s business affairs, install viruses on users’ computers, create initial interest confusion, deprive the Complainant of the ability to reflect its trademark in the disputed domain name, steal from deceived consumers, and otherwise harm the Complainant and its customers to generate traffic and revenue.

B. Respondent

The Respondent submits that it has registered the disputed domain name in May, 2003 and has maintained continuous ownership over it for the past 15 years.

The Respondent points out that the Complainant does not have a registered trademark, and it has not established that it has common law trademark rights to the descriptive term “mountain motorsports”, which is subject to a substantial third-party use across the United States. To establish common law trademark rights to a descriptive or generic term such as this one, the Complainant must present evidence of secondary meaning, i.e., evidence that consumers identify the term “Mountain Motorsports” exclusively, or almost exclusively, with the Complainant or with its products.

The Respondent asserts that it had no knowledge of the Complainant when it purchased the disputed domain name, and only became aware of its existence when the Complaint was filed. The Respondent claims that it has registered the disputed domain name because of its inherent independent value and that it holds it for investment, and that the Respondent has never targeted or attempted to sell the disputed domain name to the Complainant.

The Respondent points out that it has registered thousands of generic dictionary common word domain names, three- and four-letter domain names and common surnames as a domain development and investment strategy. Such domain names are easy to remember and serve well as online identities and, as a result, are commercially valuable as part of a domain investment portfolio. The Respondent further states that it hosts its underdeveloped domain names with domain name parking services that pay a share of the advertising revenue they generate, which according to the Respondent is an accepted industry practice.

The Respondent requests a finding of Reverse Domain Name Hijacking with the arguments that the Complainant has filed its Complaint in an attempt to steal a highly valuable domain name from its rightful owner, and that the Complainant knew when it filed the Complaint that it could not prove the three elements of the test under the Policy, because the Complainant does not have a registered trademark and its claim of common law rights is inadequate, and because the disputed domain name is not exclusively associated with the Complainant’s business but is subject to a substantial third-party use across the United States.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

As summarised in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered trademark rights for the purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys.

The Complainant bases its Complaint on the contention that it has unregistered trademark rights in the designation MOUNTAIN MOTORSPORTS. This combination of words is descriptive of the field of application of the products offered by the Complainant to the public, and is not inherently distinctive. For this reason, there is a greater onus on the Complainant to present evidence of acquired distinctiveness/secondary meaning.

To support its contention for common law trademark rights, the Complainant has submitted a printout of a banner advertisement, a screenshot of the Complainant’s current website and archived screenshots of it from dates during the last ten years, an aerial photograph of one of the Complainant’s locations, an advertisement on the CycleTrade.com website and a print advertisement. These documents indeed feature the sign MOUNTAIN MOTORSPORTS. However, none of them represents evidence that the designation MOUNTAIN MOTORSPORTS as a result of its use has acquired a secondary meaning referring to the business of the Complainant.

The Complainant makes conclusory statements that the MOUNTAIN MOTORSPORTS designation has become a distinctive identifier of the Complainant’s products as a result of tens of thousands of man hours of work and millions of US Dollars in advertising, and has valuable goodwill and a strong reputation, but there is no evidence in support of these statements. The Complainant has not submitted any evidence about the amount of sales under the designation, the claimed expenditures on its advertising, the degree of actual public recognition in consumer surveys or unsolicited coverage in the trade press that would establish that the designation has acquired a secondary meaning exclusively referring to the Complainant.

Therefore, the Panel is not satisfied that the Complainant has established for the purposes of the Policy that it has unregistered trademark rights in the designation MOUNTAIN MOTORSPORTS, and finds that the Complainant has failed to establish the first element of the test under the Policy. See Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Snowboards-for-sale.com, Inc. v. Name Administration Inc., WIPO Case No. D2002-1167; K-Tek Computers, Inc., d/b/a Computer Refurb v. Domains By Proxy, LLC / mail: and Fred Serhal, WIPO Case No. D2015-0225; Roadcam, Inc. v. Jon Smejkal, WIPO Case No. D2014-1980.
B and C. Rights or Legitimate Interests and Registered and Used in Bad Faith

In view of the finding of the Panel under section 6.A. above that the Complainant has failed to establish that it has trademark rights for the purposes of the Policy, it is not necessary to make findings whether the Respondent has rights and legitimate interests in the disputed domain name and whether the Respondent has registered and used the disputed domain name in bad faith. However, the Panel notes in passing that the disputed domain name was registered in 2003, well before the Complainant created its website in 2009, and that the website at the disputed domain name contains links related to motorcycles, and has also contained such links since 2005.

D. Reverse Domain Name Hijacking

The Respondent has requested a finding of Reverse Domain Name Hijacking.

Paragraph 15(e) of the Rules states, in relevant part:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The general conditions for a finding of bad faith on the part of the Complainant are well stated in SMART DESIGN LLC v. CAROLYN HUGHES, WIPO Case No. D2000-0993:

“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”

These conditions are confirmed in Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 and Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565.

The Panel is not able to conclude that the Complainant knew that its case was insupportable because, although the Complainant did not present sufficient evidence to establish common law trademark rights, it might have an arguable claim of such rights. There is nothing in the record to indicate malice on the part of the Complainant or to suggest that the Complaint was brought primarily to harass the domain name holder. Therefore, the Panel declines the request for a finding of Reverse Domain Name Hijacking. See Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083.

7. Decision

For the foregoing reasons, the Complaint is denied. The request for a finding of Reverse Domain Name Hijacking is denied.

Assen Alexiev
Presiding Panelist

Richard Hill
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: February 6, 2019


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