Complainant is Texican Natural Gas Company of Houston, Texas, United States of America, represented by Squire, Sanders & Dempsey, LLP, United States of America.
Respondent is Robert Barrett of Joshua Tree, California, United States of America, appearing pro se.
The disputed domain name <texican.com> is registered with Moniker Online Services, LLC. The disputed domain name <texican.mobi> is registered with GoDaddy.com, Inc. (The “Domain Names”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2010. On March 25, 2010, the Center transmitted by email to each of Moniker Online Services, LLC and GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names registered with them, respectively. On March 25, 2010, each of Moniker Online Services, LLC and GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the relevant Domain Name and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on March 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2010. The Response was filed with the Center on April 18, 2010.
The Center appointed David H. Bernstein as the sole panelist in this matter on April 26, 2010. 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.
On May 17, 2010, Respondent submitted a follow-up email to supplement the Response. Because this email was untimely and no “good cause” was shown for considering a late submission, the Panel has disregarded this email. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. In any event, even had the Panel considered the additional allegations and argument in the May 17, 2010 email, it would not have changed the outcome of this decision.
Complainant is a natural gas marketing and consulting company founded in 1985 and headquartered in Houston, Texas. It has two subsidiaries: Texican Industrial Energy Marketing and Texican Horizon Energy Marketing. Complainant's website is at “www.texicangas.com”.
Respondent is Robert Barrett, an individual, who resides in Joshua Tree, California. The <texican.com> Domain Name was registered on November 7, 1999 and the <texican.mobi> Domain Name was registered on January 16, 2007.
Complainant made an anonymous offer on or about March 17, 2010 to purchase the Domain Name <texican.com> for $1,250. That offer was rejected without a counteroffer from Respondent.
Complainant claims that it has common law rights in the TEXICAN mark by virtue of its use of that mark continuously in connection with its services since 1985. Complainant further states that it has used the mark on the Internet under the domain name <texicangas.com> since at least 2001.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed Domain Names. Respondent is not licensed or otherwise permitted by Complainant to use the mark.
Finally, Complainant contends that the Domain Names have been listed for sale at high prices on “www.bizness.com” and that neither Domain Name is actively used to maintain a website. Evidence submitted by Complainant shows that <texican.com> was listed for $100,000 and that <texican.mobi> was listed for $25,000. Complainant contends that these offers for sale demonstrate bad faith.
Respondent claims that Complainant lacks rights in the marks because Complainant lacks a famous brand and because other companies have registered the mark in association with other goods or services, although no company has registered the mark in connection with natural gas marking and sales.
Respondent further claims that he registered the Domain Names as part of an effort to memorialize a World War II hero who acted in a movie titled “The Texican” and that, after Respondent was discharged from the military in 1995, he met the actor who starred in “The Texican” and thereafter decided to register the Domain Names.
Respondent further suggests that he would also like to sell military accessories through the website, but that he has been unable to work on implementing the business models because he is on disability.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Complainant asserts that it has common law trademark rights in the TEXICAN mark because it has used the mark continuously for more than 25 years. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes, the consensus view is that, where a complainant asserts unregistered trademark rights:
[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7; see also Rota-Dan A/S v. Orion Web, WIPO Case No. D2005-1204.
Complainant's use of the mark for a quarter century in connection with its services appears sufficient to establish common law trademark rights. Respondent does not dispute that long-time use, but rather argues that the word “Texican” is “generic” and “common.” As a matter of trademark law, “Texican” does not appear to be generic for the services offered by Complainant. As to it being “common,” although there may be other entities that are using or have used the same mark, those trademark rights can coexist if the mark is used for different goods and services and/or in different geographic regions. Thus, neither of these arguments is sufficient to undermine Complainant's showing of common law trademark rights.
As Complainant has shown common law rights in the mark, and in light of the fact that the Domain Names <texican.com>and <texican.mobi> are identical to the TEXICAN mark, Complainant has met the first factor.
Complainant has made a prima facie showing that Respondent, who is not known by the Domain Names and has no license from Complainant to use the Domain Names, lacks rights or legitimate interests in the Domain Names. The burden of production thus shifts to Respondent to come forward with some evidence showing that he has rights or legitimate interests in the Domain Names. Respondent has failed to meet that burden. In particular, Respondent has not submitted any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has rights or legitimate interests in the Domain Names, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has made two independent claims to explain his intended use for the Domain Names. First, he states that he would use the Domain Names to “sell military items that [Respondent] had collected and others that I could obtain from swap meets” because he “live[s] near the largest Marine Base in the USA.” Respondent, however, has failed to show how this plan justifies registration of Domain Names containing the word TEXICAN, nor, in any event, has he shown any demonstrable preparations towards launching any such site.
Second, Respondent says that he purchased the Domain Names because he saw the 1966 movie “The Texican” starring Audie Murphy. Respondent claims that he met Murphy in 1999 while he was working at card games in Los Angeles and wanted to make a web page in honor of Murphy. He further claims that on December 29, 1999, he was injured while was working at Patton State Hospital for the Criminally Insane and has since been on disability. He claims he has “not been able to concentrate to make web pages since that time.”
This story appears to be fabricated because, as noted in the links about Audie Murphy that Respondent added to his site after the filing of the Complaint, the actor Audie Murphy died in a plane crash in 1971, twenty-eight years prior to when Respondent claims to have met him. Respondent's claims thus lack credibility.
The Panel acknowledges that the <texican.com> Domain Name now resolves to a page that includes a number of links to Texican-related webpages, including about the movie “The Texican”. However, because this page appears to have been posted after the commencement of this dispute, and because Respondent has failed to show any demonstrable preparations to make any such use prior to the commencement of this dispute, the Panel disregards the current content of the website for purposes of assessing Respondent's rights or legitimate interests in the Domain Names.
The Panel thus concludes that Complainant has established by a preponderance of the evidence that Respondent has no rights or legitimate interest in the Domain Names.
In light of Respondent's failure to show any legitimate interest in the Domain Names, Respondent's offer to sell the Domain Names for a price far in excess of his acquisition costs is sufficient to establish that Respondent registered and used the Domain Names in bad faith for purposes of the Policy. Through this evidence, Complainant has demonstrated that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name.
Respondent states that he had not heard of Complainant at the time that he registered the Domain Names in 1999, which might support an argument that Respondent did not register the Domain Names in bad faith (at least as to Complainant). However, given Respondent's fabricated statement about meeting Audie Murphy in 1999, the Panel is concerned about the credibility of Respondent's other assertions. In any event, Respondent also admits to owning more than 100 other domain names, and as such, Respondent should have undertaken to ensure that domain names he registers do not infringe the trademark rights of third parties. See paragraph 2 of the Policy (“It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”); Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. Respondent's registration of the Domain Names without due regard to Complainant's rights in the TEXICAN trademark thus contributes to the Panel's conclusion that Respondent registered and used the Domain Names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Complainant.
David H. Bernstein
Dated: May 17, 2010