Philpott Motors, Ltd. d/b/a Philpott Ford v. Keyword Marketing, Inc.
Claim Number: FA0708001072905
Complainant is Philpott Motors, Ltd. d/b/a Philpott
Ford (“Complainant”), represented by Jami J. Farris, of Parker, Poe, Adams
& Bernstein L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <phillpottford.com>, registered with Domaindoorman, Llc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On August 31, 2007, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <phillpottford.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 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@phillpottford.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <phillpottford.com> domain name is confusingly similar to Complainant’s PHILPOTT FORD mark.
2. Respondent does not have any rights or legitimate interests in the <phillpottford.com> domain name.
3. Respondent registered and used the <phillpottford.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Philpott Motors, Ltd. d/b/a Philpott Ford, has operated a Ford motor vehicle dealership since May
5, 2003 in
Respondent registered the <phillpottford.com> domain name on October 25, 2005. The disputed domain name resolves to a search engine website that offers Internet users links to various, third-party commercial websites, some of which directly compete with Complainant’s business.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Complainant lacks a federal registration for its PHILPOTT
FORD mark. However, the Panel finds that
a federal trademark registration is unnecessary to establish rights in a mark
pursuant to Policy ¶ 4(a)(i). See
Complainant attempts to establish rights in the PHILPOTT FORD mark by demonstrating secondary meaning in the mark. Complainant alleges that its use of the PHILPOTT FORD mark has been continuous and ongoing since the inception of Complainant’s auto dealership business in 2003. The Panel therefore finds that Complainant has adequately demonstrated common-law rights in the PHILPOTT FORD mark through the establishment of secondary meaning in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Respondent’s <phillpottford.com>
domain name contains Complainant’s PHILPOTT FORD mark in its entirety,
differing from the mark only through the addition of the letter “l” and the
generic top-level domain (“gTLD”) “.com,” as well as the elimination of the
space between the two words of Complainant’s mark. The Panel finds that the mere addition of a
letter and a gTLD, and the elimination of a space between words of a mark fails
to sufficiently distinguish the domain name from the mark pursuant to Policy ¶
4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain name resolves to a search engine that displays links to third-party commercial websites, some of which offer products and services that directly compete with those offered by Complainant. Consequently, the Panel finds that Complainant’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has not authorized Respondent to use Complainant’s PHILPOTT FORD mark. Although Respondent included the web address “PHILLPOTTFORD-COM-DOM” in its WHOIS registration information, Complainant contends that this is not evidence that Respondent is commonly known by the disputed domain name. Complainant further asserts that its first use of the PHILPOTT FORD mark predates Respondent’s registration of the disputed domain name by more than three years. Further, no evidence has been proffered to indicate Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that the respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a search
engine website featuring, inter alia,
links to websites of Complainant’s competitors.
The Panel finds that such use amounts to a disruption of Complainant’s
business pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat.
Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a website containing
commercial links to the websites of the complainant’s competitors represented
bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent
used the disputed domain name to operate a commercial search engine with links
to the complainant’s competitors).
Presumably, Respondent
receives monetary compensation, in the form of click-through advertising
revenue, from its diversionary use of the disputed domain name. Also,.Respondent’s use of a confusingly similar
domain name is likely to engender confusion among unsuspecting Internet users
who are presumably expecting to view information relating to Complainant’s
business. As a result, the Panel finds
that such use evinces registration and use in bad faith pursuant to Policy ¶
4(b)(iv). See AltaVista Co. v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶
4(b)(iv) where the respondent’s domain name resolved to a website that offered
links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes); see also Asbury Auto. Group,
Inc. v.
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <phillpottford.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 8, 2007
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