National Arbitration Forum
TMFT Enterprises, LLC v. Mark Cosstick
Claim Number: FA0508000531518
Complainant is TMFT Enterprises, LLC (“Complainant”), represented by Melissa A. Vallone, of Barnes & Thornburg LLP, One North Wacker Drive, Suite 4400, Chicago, IL 60606-2809. Respondent is Mark Cosstick (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigboys.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Bruce E. Meyerson (Ret.), Hon. Timothy O’Leary (Ret.) and Prof. David Sorkin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 8, 2005.
On August 4, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bigboys.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 31, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on the extended deadline date of September 14, 2005.
Complainant submitted a timely Additional Submission on September 20, 2005 and Respondent submitted a timely Additional Submission on September 27, 2005.
On September 27, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Bruce E. Meyerson (Ret.), Hon. Timothy O’Leary (Ret.) and Prof. David Sorkin as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it, and its predecessor, have been using the BIG BOYS mark in commerce since 1998. Complainant has filed for a federal trademark with the United States Patent and Trademark Office on July 26, 2005 seeking to register the BIG BOYS mark. Complainant contends that Respondent registered the <bigboys.com> domain name knowing of Complainant’s mark and Complainant’s <big-boys.com> web site. Complainant contends that Respondent registered the dispute domain name in order to “hold it hostage to extract an exorbitant price from” Complainant. Complainant contends that Respondent has a history of cybersquatting and domain name piracy which demonstrates that its actions in this case are in bad faith.
Respondent contends Complainant does not have “exclusive” rights to the descriptive term “big boys.” Respondent asserts that Complainant has not used the BIG BOYS mark for retail store services, contrary to Complainant’s assertion. Respondent states that it purchased the domain name for the purpose of developing a shopping portal geared toward men. Respondent states that Complainant filed its trademark application only after Complainant contacted Respondent seeking to purchase the domain name.
C. Additional Submissions
In its Additional Submission, Complainant asserts that a secondary meaning has been established in its BIG BOYS mark, thus entitling it to common law trademark rights. Complainant further disputes Respondent’s claims regarding its lack of knowledge of Complainant’s web site and trademark rights. In its Additional Submission, Respondent disputes these contentions.
Complainant filed for a federal trademark with the United States Patent and Trademark Office on July 26, 2005 for the BIG BOYS mark. That application is pending. The <bigboys.com> domain name was purchased by Respondent in July 2005. The BIG BOYS mark is descriptive and the record in this proceeding has not demonstrated that the mark has an established secondary meaning.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Because Complainant has not established that it has rights in a trademark that is identical or confusingly similar to the domain name in dispute, the Panel will only address that issue.
Identical and/or Confusingly Similar
Respondent correctly contends that Complainant does not have “rights” in the BIG BOYS mark within the meaning of the Policy because a pending trademark application with the United States Patent and Trademark Office is insufficient to establish rights in a mark for the purpose of Policy ¶ 4(a)(i). Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”); ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”); Computer Nerds Int’l, Inc. v. Ultimate Search, FA 155179 (Nat. Arb. Forum June 23, 2003) (“Complainant's pending trademark applications do not establish its rights in the mark pursuant to Policy 4(a)(i).”).
Moreover, the Panel agrees with Respondent’s contention that Complainant has not established common law rights in the mark because the record contains no evidence of secondary meaning such that consumers identify the BIG BOYS mark with Complainant. The Panel has carefully considered the affidavit of Keith Richman. Because Complainant’s mark is inherently descriptive—the combination of the words “big” and “boy”—the evidence necessary to establish secondary meaning is substantial. Link Clicks v. Zuccarini, D2000-1547 (WIPO Jan. 12, 2001). In other words, Complainant bears a substantial burden of proving distinctiveness and secondary meaning. Chromalloy Men’s Apparel Group v. Burch & Hatfield Formal Shops, D2000-1046 (WIPO Oct. 20, 2000). The proof of distinctiveness and secondary meaning offered by Complainant does not, in the opinion of the Panel, establish common law rights in the BIG BOY mark. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
Having failed to establish that the Complainant has rights in a trademark that is identical or confusingly similar to the domain name in dispute, the Panel concludes that relief shall be DENIED.
Hon. Bruce E. Meyerson (Ret.) Panel Chair
Hon. Timothy O’Leary (Ret.) and Prof. David Sorkin, Panelists
Dated: October 10, 2005