Claim Number: FA0801001128338
Complainant is Sonic Houston JLR d/b/a Land
Rover Houston North (“Complainant”),
represented by Jami J. Farris, of Parker, Poe, Adams & Bernstein L.L.P., NC, USA. Respondent is Texas International Property Associates
(“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, TX,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landroverhoustonnorth.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2008.
On January 11, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <landroverhoustonnorth.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, 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 January 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 6, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 6, 2008.
On February 11, 2008, Complainant submitted a timely Additional Submission that was determined to be complete.
On February 19, 2008 Respondent filed an objection and response to Complainant’s Additional Submission which was also in compliance with Supplemental Rule 7.
On February 15, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has common law trademark rights in the mark LAND ROVER HOUSTON NORTH and that Respondent has registered the identical or confusingly similar domain name <landroverhoustonnorth.com>. Complainant further asserts that Respondent has no rights or legitimate interest in the disputed domain and that Respondent registered and is using the disputed domain name in bad faith.
Respondent contends that there is no need to evaluate whether the domain name in question is identical or confusingly similar to Complainant’s mark because the mark in question is unprotectable as a trade name. In the alternative Respondent argues the mark is unprotectable due to the generic, descriptive, or geographic nature of the mark. Further Respondent asserts that it has rights and legitimate interests in the disputed domain and therefore did not register it, nor is currently using the domain name in bad faith.
C. Additional Submissions
Complainant’s additional submissions reiterated its claim of common law trademark rights in LAND ROVER HOUSTON NORTH and provided additional documentary support for its claim. Complainant also re-emphasized its contentions that Respondent lacked any legitimate rights or interests in the disputed domain based on the nature of Respondent’s business and Respondent’s history of domain name dispute adjudications.
Respondent’s objection and additional submissions acknowledged the wealth of information provided by the Complainant originally and with the additional submissions, but contended that despite the 75 pages of exhibits, Complainant was still deficient in establishing any trademark rights. The Respondent also contended that Complainant’s information regarding Respondent’s history of domain name adjudications was both erroneous and inadequate in quantity and substance.
Complainant Sonic Houston JLR d/b/a Land Rover Houston North has operated the Land Rover Houston North auto dealership since 2006. Complainant is a successor in interest to the prior owner of the business who had been using the name since at least 2001 and who sold, transferred, and assigned all rights to the name to Complainant as part of the company’s assets when Complainant purchased the pre-existing business. Complainant and its predecessor have continuously used the name LAND ROVER HOUSTON NORTH since 2001 to promote its primary business of selling and servicing Land Rover motor vehicles. Complainant has promoted its business via the Internet including by way of websites with the domain names <landroverhoustonnorth.net> and <lrhoustonnorth.dealerconnection.com>. Complainant has also used real space and cyberspace advertising, land based and internet phone directory listings, along with direct mailings to make the public aware of its goods and services. Further Complainant’s business has been the subject of numerous business publications in the local and regional area. Complainant has not registered the mark LAND ROVER HOUSTON NORTH for trademark purposes at the state or federal level, but Complainant has established common law trademark rights in the mark.
Respondent says it is “the registrant of thousands of domain names” which allegedly result from “electronically registered generic words” in English and Spanish, “as well as typos” of many generic terms. Respondent asserts that registering “terms to which no other party can claim exclusive use is a legitimate business and done in good faith.” Respondent’s use of the registered domains in furtherance of its business is unclear as the only evidence in that regard involves the disputed domain name <landroverhoustonnorth.com> which Respondent used to display commercial links and advertisements, including those of Complainant’s competitors. Respondent’s registration of thousands of domain names has led to numerous UDRP actions being successfully pursued against Respondent, including more than 40 since 2007 cited by Complainant. Respondent cautions against merely considering the number of complaints without considering the broader context lest one be misled.
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.
Complainant has not registered the mark LAND ROVER HOUSTON NORTH for
trademark purposes at the state or federal level, however a registration is not
necessary to show rights in a mark under Paragraph 4(a)(i) of the ICANN Policy.
See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also
Complainant and its predecessor
have owned and operated an auto dealership designated as LAND ROVER HOUSTON
NORTH since at least 2001 and complainant has submitted volumes of
documentation indicating the advertising and marketing of the business. The
amount and manner of advertising along with the length and manner of use are
integral factors in evaluating whether a mark has achieved secondary meaning.
While sales volume is also useful, the lack of specific sales data is not fatal
to a claim of secondary meaning. Neither Claimant nor Respondent have submitted
any survey evidence regarding consumers understanding of the disputed mark, but
based on the facts and the record, the mark, while arguably weak, appears more
descriptive than generic, especially in light of the availability of other common
words, and available domain names, to describe Land Rover sales in that
location. While Respondent acknowledges the validity of the evidence presented
by Complainant, Respondent claims that it is insufficient to offset the
unprotectabiltiy of the mark due to its generic nature. However Respondent
provides no evidence to support its claim that the mark is generic. On balance,
the Respondent’s bare assertions and request that we accept its
characterization of Claimant’s mark as generic are insufficient to offset
Claimant’s submitted evidence of secondary meaning. Respondent’s claim that the
mark is generic because each individual word is common evidences a fundamental
misunderstanding of trademark law. See Xojet, Inc. v.
Respondent’s argument that the mark is unprotectable due to it alternatively being “descriptive” or “geographic” is also misdirected as “descriptive” and “geographic” marks are protectable if secondary meaning is present. Further Respondent is erroneous in his statement that trade names are unprotectable. Trade names can be protected and numerous panels have protected them under various circumstances including disputes involving auto dealerships. See Quirk Works, Inc. v. Maccini, FA 94963 (Nat. Arb. Forum July 13, 2000) (finding that the complainant, the owner of several automobile dealerships in Boston, Massachusetts operating under names, such as, “Quirk Mazda” and “Quirk Volkswagen”, had established common law trademark rights in the names, and therefore had rights in the domain names “quirkmazda.com” and “quirkvolkswagen.com”); Sonic-Crest Cadillac, LLC v. Hayes, FA 21265 (Nat. Arb. Forum Jan. 14, 2004) (finding the complainant had common law trademark rights in the names “Hummer of Nashville” and “Cadillac of Nashville”); David Taylor Cadillac/Buick Co. v. Spiderwebs, Ltd., FA 95832 (Nat. Arb. Forum Nov. 30, 2000) (holding that the complainant’s trade name had “acquired secondary meaning and is protectable under the ICANN” due to its continuous use and stating, “The ICANN Policy is broad in scope in that the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required as unregistered or common law trademark or service mark rights will suffice to support a domain name complaint under the policy.”).
As Complainant has common law trademark rights in LAND ROVER HOUSTON NORTH, the panel finds the Respondent’s domain name is identical to Complainant’s mark as the addition of a gTLD fails to sufficiently distinguish one mark from another for purposes of the policy. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant has established this element.
As Complainant has made a prima facie case in support of its allegations, Respondent bears the burden of showing that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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 is not commonly known by the disputed domain nor has Respondent been licensed or otherwise authorized to use the Complainant’s LAND ROVER HOUSTON NORTH mark. These factors are generally indicative of a lack of right or legitimate interest in the disputed domain under Section 4(c)(ii) of the Policy. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s contention that its legitimate business is the registering of electronically generated generic domains is inadequate. There is no proof that the names generated are generic nor is merely registering domain names a legitimate business. Respondent’s use of the domain name in dispute to link to commercial websites, including those of Complainant’s competitors fails to indicate any bona fide offering of goods or services as contemplated by Section 4(c)(i) of the Policy, nor does it constitute a legitimate noncommercial fair use under Section 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that a respondent’s failure to offer goods or services other than a series of links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has established this element.
Complainant has cited nearly 70 UDRP proceedings in which the Respondent has lost its rights to disputed domain names, including more than 40 in the last year. Respondent’s registration of others marks as domain names can be deemed registration and use in bad faith under Section 4(b)(ii) of the Policy. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name <aria.com>, to prevent the Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Additionally a party who knows, or
should know by virtue of the results of a simple web search, of the pre-existing
mark of another indicates bad faith when that party registers an identical or
confusingly similar domain name. If Respondent did an Internet search prior to
registration of the <landroverhoustonnorth.com>
domain name Respondent would have been aware of Complainant’s assertion of its
rights in the mark LAND ROVER HOUSTON NORTH
based on Complainant’s extensive use and marketing of its business,
including its use of the domain name <landroverhoustonnorth.net>. See
Respondent’s adoption of Complainant’s mark is likely to cause consumer confusion and as such indicates evidence of bad faith. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landroverhoustonnorth.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 29, 2008
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