WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Collision 1, Inc. v. 1Collision Network
Case No. D2014-1461
1. The Parties
Complainant is Collision 1, Inc. of Bonney Lake, Washington, United States of America, represented by Stokes Lawrence, P.S., United States of America.
Respondent is 1Collision Network of St. Francis, Wisconsin, United States of America, represented internally.
2. The Domain Name and Registrar
The Disputed Domain Name <1collision.com> is registered with Go Montenegro Domains, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2014. On August 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 September 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2014. The Response was filed with the Center on September 24, 2014.
The Center appointed Richard W. Page as the sole panelist in this matter on October 1, 2014. 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 October 14, 2014, the Panel accepted a supplemental filing from Complainant. On October 17, the Panel accepted a supplemental filing from Respondent. The date for submission of a draft decision from the Panel was extended until October 22, 2014. Due to exceptional circumstances, it has been necessary to further extend the decision due date in this case.
4. Factual Background
Founded in the early 1980's, Complainant Collision 1, Inc. is a leading auto body repair group and one of the longest established organization of its kind in the State of Washington. With nine (9) auto body repair shops throughout Western Washington, Complainant has repaired more than a quarter of a million cars over thirty (30) years and has a working relationship with every insurance company licensed in the State of Washington.
Complainant is the owner of several U.S. and State of Washington trademarks (the "COLLISION 1 Marks") and is the owner of the domain name <www.collision1.com> which was registered in 1996.
Respondent, 1Collinsion Network, operates repair shops in the Midwestern states of Wisconsin, Iowa, Illinois and Michigan. It registered the Disputed Domain Name in 2012.
5. Parties' Contentions
Complainant contends that it has extensively used the COLLISION 1 Marks in connection with its vehicle repair and painting services. The COLLISION 1 Marks were first used as early as 1983, which is twenty nine (29) years prior to Respondent's registration of the Disputed Domain Name. Complaint further contends that the word "collision" was not commonly used in the auto body repair business prior to Complainant's use of the term to refer to its own shops and services. In addition, Complainant asserts that the COLLISION 1 Marks are symbolic of the extensive goodwill and consumer recognition built up by Complainant through substantial amounts of time, effort and expense in advertising, promoting and protecting these valuable marks and the goods and services offered in connection with them.
Complainant contends that its U.S. Registration No. 2,289,369 (COLLISION 1 & Deign) is incontestable after November 28, 2005, constitutes conclusive evidence, and is valid , subsisting, unrevoked and uncancelled, as well as prima facie evidence of the validity of the registered mark. Its U.S. Registration No. 3,404,387 (COLLISION 1) is incontestable as of March 19, 2014, constitutes conclusive evidence, and is valid, subsisting, unrevoked and uncancelled, as well as prima facie evidence of the validity of this registered mark.
Complainant asserts that "collision 1" is the primary, distinctive element of the Disputed Domain Name and that placing the numeral "1" before the term "collision" does nothing to distinguish it from Complainant's COLLISION 1 Marks.
Complainant states that the Disputed Domain Name and the COLLISION 1 Marks are identical or confusingly similar for purposes of the Policy when the Disputed Domain Name includes the entirety of the Complainant's mark. C&J Clark International Limited v. Lin Lin, Lin Chang, WIPO Case No. D2014-0214. Complainant continues that these circumstances apply to the present situation.
Complainant again states that the addition of a generic Top-Level Domain ("gTLD") such as ".com" in the Disputed Domain Name is inconsequential and does nothing to distinguish it from Complainant's COLLISION 1 Marks. Apple Computer, Inc. v. All Alams, WIPO Case No. D2012-0880.
Complainant alleges that Respondent does not own any valid registered or common law trademarks containing the term "collision 1", nor has Respondent made any legitimate use of the terms embodied in the Disputed Domain Name. Respondent is offering services virtually identical to Complainant's, which use compromises Complaint's exclusive right in the registered COLLISION 1 Marks. Respondent is in no way affiliated with Complainant and Complainant has not granted Respondent a license to use Complainant's well–known COLLISION 1 Marks. Complainant alleges that the sale of competitive products and services using Complainant's trademarks is not considered "bona fide" or "legitimate" or "fair" under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See American Honda Motor Co. Inc. v. Michell Huddleston, WIPO Case No. D2011-0076.
Complainant alleges that Respondent has registered and is using the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy lists four circumstances, in particular but without limitation, in which the actions of a respondent can be found to be in bad faith. In particular, paragraph 4(b)(iv) states that a respondent's use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's website of a product or service on its website is evidence of the registration and use of that domain name in bad faith. Among several alleged bases for a finding of bad faith, Complainant alleges that all of the elements of paragraph 4(b)(iv) are met in this dispute.
Respondent challenges Complainant's COLLISION 1 Marks by arguing that the term "collision" has been used for a long time to describe the industry in which Complainant and Respondent both work. Therefore, the term "collision" is generic and descriptive.
Respondent further contends that the auto repair industry is very localized with customers usually not venturing more than twenty five (25) miles from their homes to seek repairs. Complainant is located in the Greater Seattle, Washington market and Respondent is located in a four-state Midwestern Region centered in Chicago, Illinois.
Respondent concludes that there is little chance of confusion between these markets which are 1,900 miles or 3,000 kilometers apart. Additionally, Respondent states that there is no evidence supporting the conclusion that selling competitive products or services under the Disputed Domain Name indicates a lack of "bona fide" sales or sales which are not "legitimate" or "fair." Respondent further states that it has never advertised in the Seattle, Washington marketplace.
Respondent asserts that it has common law trademark rights in 1COLLISION which is a shortened version of "1 Collision Network" which has been in operation since 2011.
Respondent further asserts that Complainant has not been able to identify one specific instance of a customer or Internet user being confused between the Disputed Domain Name and the COLLISION 1 Marks.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The question as to whether a mark is or has become generic or is descriptive and hence a weak mark, such that Complainant should not be seen to have "rights" in respect of the mark used and/or registered has been presented to a number of UDRP panels. Depending on the circumstances, panels have taken different positions regarding the inclusion of defenses that a mark is generic or descriptive. This Panel takes the position that such defenses are beyond the purview of the Panel. The Panel believes that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the Panel here accepts the registered trademark as prima facie evidence of the existence of the mark without analysis of Respondent's assertions that the COLLISION 1 Mark is generic or descriptive and without analyzing secondary meaning. 402 Shoes Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223.
Contrary to the Respondent's contention, the owner of the registered trademark does not have to show "likelihood of confusion," as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i) of the Policy, the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant's trademark and the alphanumeric string constituting the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPOCase No. D2000-1525.
The Policy specifically directs the Panel's attention to a mark "in which the Complainant has rights," and not to a mark in which Respondent has rights. The Panel is to compare the COLLISION 1 Mark and the Disputed Domain Name, independently of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Café, WIPO Case No. D2000-0068. There is no dispute that Complainant has rights in the COLLISION 1 Mark. Numerous previous decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. The Panel finds that the Complainant does have enforceable trademark rights for the purposes of this proceeding and that the entirety of Complainant's COLLISION 1 Mark (despite the inversion of "collision" and "1") is contained within the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the COLLISION 1 Marks in which Complainant has rights, and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant has come forward with a prima facie case in respect of the lack of rights or legitimate interests. The burden, therefore, is on the Respondent to prove otherwise.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name. The relevant method to this proceeding is 4(c)(i) which states that Respondent has rights or legitimate interests if:
before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services…
The primary issue for the Panel to consider is whether Respondent had any notice of this dispute. Respondent alleges that it adopted the Disputed Domain Name in 2012 in order to shorten its trade name "1 Collision Network." Complainant had U.S. registrations of its COLLISION 1 Mark at that time. However, there is a disclaimer for the term "collision" in both of Complainant's trademark registrations.
On balance, the Panel finds that Respondent appears indeed to have used the Disputed Domain Name in connection with a bona fide offering of auto body repair services.
The Panel therefore finds that Respondent has shown the applicability of paragraph 4(c)(i) of the Policy and adequately rebutted Complainant's prima facie case. Complainant has failed in its showing under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant having failed to make an adequate showing under paragraph 4(a)(ii) of the Policy. The Panel does not need to analyze paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.1
Richard W. Page
Date: November 6, 2014
1 To the extent there may be more nuanced trademark questions between the parties outside the scope of the Policy, the parties are not precluded from resort to a court of competent jurisdiction.