Holman Enterprises, Inc. v. James Chris
Claim Number: FA2011001920377
Complainant is Holman Enterprises, Inc. (“Complainant”), represented by Kate Sherlock of Archer & Greiner, New Jersey, USA. Respondent is James Chris (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <holmanautos.net>, registered with Register.com, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2020; the Forum received payment on November 12, 2020.
On November 12, 2020, Register.com, Inc. confirmed by e-mail to the Forum that the <holmanautos.net> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@holmanautos.net. Also on November 17, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the HOLMAN trademark and service mark established through its ownership of the trademark and service mark registrations described below and its extensive use of the mark in its automotive business since 1924.
Complainant submits that the disputed domain name is confusingly similar to its HOLMAN mark because it fully incorporates the mark adding only the descriptive term “autos” together with the generic Top-Level Domain (“gTLD”) extension <.net>.
Complainant submits that additions of a generic and/or descriptive term and a gTLD to a complainant’s mark do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where the disputed domain contained Complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and top-level domain).
Complainant submits that Respondent has no right or legitimate interests in the HOLMAN mark or the disputed domain name, arguing that Complainant it has not licensed or otherwise permitted Respondent to use its mark or any confusingly similar mark, or to apply for, or to use any domain name incorporating or confusingly similar to the HOLMAN mark.
Complainant adds that Respondent is not commonly known by the disputed domain name as the disclosed name of the Respondent is different from the domain name. Moreover, Respondent used a privacy service to register the disputed domain name which it argues is further evidence that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
Complainant alleges that Respondent’s diversionary use of Complainant’s mark to attract Internet users to his own website that advertises competing goods and services and solicits personal information from Internet users in an apparent phishing scheme is neither a nominative nor a legitimate non-commercial use.
Complainant submits that the disputed domain name was registered and is being used in bad faith alleging that Respondent had actual knowledge of Complainant and the HOLMAN mark when the disputed domain name was registered.
Complainant submits that it’s use of the HOLMAN mark began in 1924 and it acquired its first trademark registration for the mark on July 30, 1996, nearly twenty-five (25) years before Respondent registered the disputed domain name.
Complainant submits that as of October 2020 when the disputed domain name was registered Complainant had become one of the largest privately-owned automobile dealership groups in the United States, with forty (40) dealership franchises representing twenty (20) brands from the East Coast to the Pacific Northwest. Since starting its business with a single car dealership in New Jersey in 1924, Complainant has expanded its dealership business to include consumer and commercial insurance, auto parts distributorship, truck upfitting, and the largest privately-owned fleet leasing and management company in the country.
Moreover, the Complainant submits that the website to which the disputed domain name resolves, incorporates text and images from Complainant’s website at <holmanauto.com> and Respondent used an address belonging to one of Complainant’s car dealerships when registering the disputed domain name.
Complainant further argues that because Respondent is exploiting the goodwill in Complainant’s mark by offering identical goods and services under the mark and soliciting individuals’ personal information for Respondent’s personal gain.
Complainant submits that Respondent has copied many elements of Complainant’s official website and offers for comparison a screenshot from Complainant’s <holmanauto.com> displaying the mark HOLMAN (stylized design) and Complainant’s copyrighted text and a screenshot of the website to which the disputed domain name resolves displaying Complainant’s mark HOLMAN (stylized design) and Complainant’s copyrighted text).
Complainant submits that Internet users who are directed to Respondent’s website are likely to believe that they have successfully accessed a website related to or authorized by Complainant. Once on Respondent’s website, viewers are presented with Complainant’s trademarks and logos, Complainant’s copyrighted images, and links to contact “Holman” or apply for a job at “Holman”.
Complainant alleges that while at first glance it would appear that Respondent is attempting to take advantage of Complainant’s goodwill in the HOLMAN mark by offering competing services, upon further inspection, it is however, clear that Respondent is using Complainant’s mark and goodwill to divert Internet users and encourage them to submit sensitive personal information, such as credit card information and bank account information, under the guise of a job application portal.
Complainant casts doubt on the accuracy of the name provided by Respondent on the WHOIS and alleges that Respondent has provided a fraudulent address for the purposes of registering the disputed domain name. The address provided by Respondent is in fact the location of one of Complainant’s San Diego, California car dealerships.
Further, on or around October 28, 2020, Complainant learned that an individual purportedly named James Chris had created a fake profile on LinkedIn posing as a recruiter for Complainant. Said Mr. Chris then used his fake profile to associate with Complainant’s corporate LinkedIn page and posted a fake job posting directing individuals to submit job application information, including sensitive personal information. See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant sells automobiles, trucks, and vans and provides related services including rental and leasing of automobiles, dealership services, and related automobile and maintenance services for which it is used its HOLMAN trademark and service mark since 1924.
Complainant is the owner of the following trademark and service mark registrations:
· United States registered service mark HOLMAN, registration number 1, 990, 851, registered on the principal register on August 6, 1996 for services in international class 39;
· United States registered service mark HOLMAN, registration number 1,989,633, registered on the Principal Register on July 30, 1996 for services in international class 42;
· United States registered trademark HOLMAN, registration number 2,002,289, registered on the Principal Register on September 24, 1996 for goods in international class 12;
· United States registered service mark HOLMAN, registration number 1,989,636, registered on the Principal Register on July 30, 1996 for services in international class 37.
Complainant has an established Internet presence and since April 1997 has operated its website to which its domain name <holmanauto.com> resolves to promote and sell its goods and services
The disputed domain name was registered on October 3, 2020 and resolves to a website that purports to offer goods and services identical to those offered by Complainant, and Respondent has not denied the uncontested allegations of Complainant that Respondent is using the disputed domain name and website which it resolves as part of a phishing scheme.
There is no information available about Respondent, except for that which has been provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
Paragraph 15(a) of 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; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided clear, convincing and uncontested evidence of its rights in the HOLMAN trademark and service mark established through its ownership of the below described registrations and its long land extensive use of the mark in its automotive business.
The disputed domain name consists of Complainant’s mark is entirely in combination with the descriptive term “autos” and the gTLD extension <.net>.
Complainant’s HOLMAN mark is the initial, dominant and only distinctive element in the disputed domain name. Neither the descriptive term “autos” nor the gTLD extension provide any distinctive characteristic.
This panel finds therefore that the disputed domain is confusingly similar to the HOLMAN mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test Policy ¶ 4(a)(i).
· Complainant has made out a prima facie case that Respondent has no right or legitimate interests in the HOLMAN mark or the disputed domain name, arguing that Complainant it has not licensed or otherwise permitted Respondent to use its mark or any confusingly similar mark, or to apply for, or to use any domain name incorporating or confusingly similar to the HOLMAN mark;
· that Respondent is not commonly known by the disputed domain name as the disclosed name of the Respondent is different from the domain name;
· that Respondent used a privacy service to register the disputed domain name which indicates that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
· that Respondent is engaged in a diversionary use of Complainant’s mark to attract Internet users to Respondent’s website purporting to offer competing goods and services and which solicits personal information from Internet users in an apparent phishing scheme which cannot be categorized as nominative or legitimate non-commercial use of the disputed domain name.
It is well established that in such circumstances, where a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to establish his/her rights. Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test Policy ¶ 4(a)(ii).
Because Complainant has been continuously using HOLMAN mark in its automotive business since 1924 and has grown to a nationwide business with forty (40) dealership franchises representing twenty (20) brands from the East Coast to the Pacific Northwest and an established Internet presence it is improbable that the registrant of the disputed domain name was unaware of Complainant, its name, its goodwill and its HOLMAN mark when the disputed domain name was registered. The inclusion of the word “autos”, with Complainant’s mark, and the authorized use of text and images from Complainant’s website at <holmanauto.com> on the website to which disputed domain name resolves, taken together, prove on the balance of probabilities that registrant of the disputed domain name not only was aware of Complainant when disputed the meaning was registered but that the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of Complainant, its reputation and goodwill, so as to divert and confuse Internet users,
The uncontested evidence adduced, shows that the disputed domain name is being used to divert Internet traffic intended for Complainant to a website that purports to impersonate Complainant and offers competing products and services. There is also the uncontested allegation that the disputed domain name is being used in combination with a fake profile on LinkedIn whereby Respondent has posed as a recruiter for Complainant inviting applications for a fake job and inviting applicants to submit job application information, including sensitive personal information in pursuance of a phishing scheme.
This Panel finds therefore, on the balance of probabilities that Respondent is using the disputed domain name in bad faith in order to impersonate Complainant and to divert, confuse, and gather personal information from Internet users.
Complainant is therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <holmanautos.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 30, 2020
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