Daveandadamscardworld.com

The timeline behind daveandadamscardworld.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Dave & Adam's Card World LLC v. Jay Conti Claim Number: FA0705000977209 PARTIES Complainant is Dave & Adam's Card World LLC (“Complainant”), represented by Paul I. Perlman, of Hodgson Russ LLP, The Guaranty Building, 140 Pearl Street, Suite 100, Buffalo, NY 14202-4040. Respondent is Jay Conti (“Respondent”), 6064 East Joyce Lane, Inverness, FL 34452. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <daveandadamscardworld.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Bruce E. Meyerson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 7, 2007. On May 4, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <daveandadamscardworld.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 31, 2007 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 postmaster@daveandadamscardworld.com by e-mail. A timely Response was received and determined to be complete on May 30, 2007. On June 5, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant asserts that since 1991 it has been engaged in the business of selling sports and entertainment trading cards and memorabilia. Complainant contends that the domain name in dispute is confusingly similar to its common law trademark. According to Complainant, as of March 30, 2007, Internet users who typed in the disputed domain name were taken to a “parking site” provided by GoDaddy.com which contains sponsored links, some of which offer sports-related products. Complainant states that Respondent has never been known by or operated under the name Dave and Adam’s Card World. Complainant states that Respondent is a sports card dealer and a competitor of Complainant. B. Respondent Respondent states that Complainant had every opportunity to purchase the domain name in 2003 when Respondent purchased the name. Respondent accuses Complainant of making “poor business choices.” Respondent states that Complainant has no registered trademark or service mark, or common law right, to “DAVE AND ADAM’S CARD WORLD.” Respondent states that he is not a competitor of Complainant. FINDINGS Complainant Dave & Adam’s Card World LLC has been engaged in the business of selling sports and entertainment trading cards and memorabilia since 1991. Complainant has no registered trademark or service mark to “DAVE AND ADAM’S CARD WORLD.” DISCUSSION 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) 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. Identical and/or Confusingly Similar Respondent argues that Complainant does not have any rights in the DAVE AND ADAM’S CARD WORLD mark in any form. Complainant acknowledges it has not registered the DAVE AND ADAM’S CARD WORLD mark with the United States Patent and Trademark Office. Complainant asserts, however, that it holds a common law service mark because it has used the mark in commerce for 16 years. Complainant has provided the affidavit of one its owners in which he states that “Dave and Adam’s Card World has become synonymous with providing high quality authentic merchandise to customers throughout the United States.” Complainant has offered evidence that it sells its products throughout the United States, through the Internet and at trade shows. For a mark to have secondary meaning, the mark must establish a link between the product or service and the source of that product or service. In other words, a mark has secondary meaning, “when, in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000). The evidence submitted by Complainant certainly shows that its mark has been in use, but the record simply does not demonstrate that any segment of the public makes any connection between the mark—DAVE AND ADAM’S CARD WORLD—and sports cards and memorabilia. Use of the mark alone is insufficient to establish secondary meaning. The “mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness.” Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001); contra ZRT Laboratory LLC v. Texas Int’l Prop. Assoc., FA 907499 (Nat. Arb. Forum Mar. 27, 2007). Thus, the Panel concludes that on this record Complainant has not sufficiently established common law rights in its mark. Because the Panel concludes that Complainant does not have rights in the DAVE AND ADAM’S CARD WORLD mark according to Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Occidental Hoteles Mgmt., S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant could not satisfy Policy ¶ 4(a)(i)). This decision should not be understood as a final determination that Complainant is unable to prove common law rights to the mark DAVE AND ADAM’S CARD WORLD. This decision is limited to finding that, on this record, Complainant has not proved that it has rights to the foregoing mark because it has not shown that the public associates the words with Complainant as the source of a particular good. See Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000). DECISION Having failed to establish that the domain name in dispute is confusingly similar to a trademark or service mark in which Complainant has rights, the Panel concludes that relief shall be DENIED. Bruce E. Meyerson, Panelist Dated: June 11, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.