Sterling
Chevrolet, Inc. v. Management Success
Claim Number: FA0201000103925
PARTIES
Complainant is Sterling Chevrolet, Inc., Sterling, VA (“Complainant”) represented by Jerry Phillips, of Phillips, Beckwith, Hall & Chase. Respondent is Management Success, Orange, VA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <sterlingchevrolet.com> and <sterlingchevy.com>, registered with BulkRegister.
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.
Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 18, 2002; the Forum received a hard copy of the Complaint on January 18, 2002.
On January 21, 2002, BulkRegister confirmed by e-mail to the Forum that the domain names <sterlingchevrolet.com> and <sterlingchevy.com> are registered with BulkRegister and that Respondent is the current registrant of the names. BulkRegister has verified that Respondent is bound by the BulkRegister 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 January 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 2002 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@sterlingchevrolet.com, and postmaster@sterlingchevy.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.)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.” 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <sterlingchevrolet.com> and <sterlingchevy.com> are domain names identical to Complainant's STERLING CHEVROLET and STERLING CHEVY marks.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response.
FINDINGS
Complainant has used the STERLING CHEVROLET mark since 1994 in the relation to its sales of CHEVROLET automobiles and trucks in Sterling, Virginia. Complainant is licensed to use the CHEVROLET and CHEVY marks from General Motors Corporation.
Respondent registered the disputed domain names on March 13, 2000. Respondent has not developed a website at the domain name. Respondent has engaged in a pattern of trafficking in domain names that are identical or confusingly similar to the trademarks of others. Respondent is known to register these domain names and put them up for sale. In this case, Respondent has put both <sterlingchevrolet.com> and <sterlingchevy.com> up for sale for $8000.
DISCUSSION
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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; and
(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.
Identical and/or
Confusingly Similar
Complainant has established that it has rights to the STERLING CHEVROLET and STERLING CHEVY marks because it is licensed by General Motors Corporation and has been using them in commerce since 1994. Furthermore, Respondent's <sterlingchevrolet.com> and <sterlingchevy.com> are identical to Complainant's marks because they incorporate the entirety of Complainant's mark and merely add the top level domain ".com". The addition of a top-level domain such as ".com" or ".info" is not enough to create a distinct mark capable of overcoming a claim of identical or confusing similarity. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent has not developed a website at the disputed domain names, it has merely offered the disputed domain names up for sale. It has been found that putting the domain name up for sale is not considered to be a bona fide offering of goods or services such that it will create legitimate rights and interests pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <sterlingchevrolet.com> and <sterlingchevy.com> domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Complainant alleges that Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because it has no website and registered the disputed domain names with the intention of selling them. See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the Respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
It can be inferred from the circumstances that Respondent registered the disputed domain names for the primary purpose of selling them. Registration of a domain name with the primary intention being to sell it is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).
Respondent has engaged in a pattern of registering domain names infringing upon the marks of others, it has been found that a pattern of such conduct is evidence of bad faith. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain names <sterlingchevrolet.com> and <sterlingchevy.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.)
Dated: February 22, 2002
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