national arbitration forum

 

DECISION

 

Jupiter Chevrolet LP v. Nevis Domains

Claim Number: FA0802001155673

 

PARTIES

Complainant is Jupiter Chevrolet LP  (“Complainant”), Texas, USA.  Respondent is Nevis Domains (“Respondent”), Kansas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jupiterchevy.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically February 29, 2008; the National Arbitration Forum received a hard copy of the Complaint February 29, 2008.

 

On February 29, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <jupiterchevy.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, 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 March 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 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 postmaster@jupiterchevy.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <jupiterchevy.com>, is confusingly similar to Complainant’s JUPITER CHEVROLET LP mark.

 

2.      Respondent has no rights to or legitimate interests in the <jupiterchevy.com> domain name.

 

3.      Respondent registered and used the <jupiterchevy.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Jupiter Chevrolet, LP, is a car dealership business operating in the Dallas, Texas, area that sells and services Chevrolet vehicles.  Complainant has spent approximately $1.2 million per year since 1993 in advertising and promoting its dealership.  Complaint uses the JUPITER CHEVROLET mark for its dealership and operates a website at <jupiterchev.com>. 

 

Respondent’s <jupiterchevy.com> domain name was registered June 19, 2001, and resolves to a website that features links to Complainant’s direct competitors.

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant is not required to own a trademark registration to establish rights in the JUPITER CHEVROLET mark under Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

Complainant established common law rights in the JUPITER CHEVROLET mark through continuous and extensive use of the mark in connection with its car dealership business. Complainant continually has spent over one million dollars per year since 1993 in the advertisement and promotion of its business, operating under the <jupiterchev.com> domain name.  While Complainant provides no evidence of registration with a government authority, the Panel accepts Complainant’s allegation that its JUPITER CHEVROLET mark is registered in the state of Texas.  Therefore, the Panel finds that Complainant’s JUPITER CHEVROLET mark acquired secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See 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); see also 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). 

 

Complainant alleges that Respondent’s <jupiterchevy.com> domain name is confusingly similar to Complainant’s JUPITER CHEVROLET LP mark.   The disputed domain name shortens one element of the mark, “Chevrolet” to a common abbreviation of the term “chevy”, removes a space between words, and adds a generic top-level domain (“gTLD”) “.com.”  The Panel finds the addition of a space and gTLD do not distinguish a domain name from Complainant’s mark.  Further, the Panel finds a common abbreviation of one term in a mark does not negate the confusingly similar aspect of Respondent’s domain name with Complainant’s mark.  Therefore, the Panel concludes that Respondent’s <jupiterchevy.com> domain name is confusingly similar to Complainant’s JUPITER CHEVROLET mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).       

 

Rights to or Legitimate Interests

 

Complainant alleged that Respondent lacks rights and legitimate interests in the <jupiterchevy.com> domain name.  Once Complainant makes a prima facie case supporting its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  The Panel finds that Complainant established a prima facie case, thus shifting the burden to Respondent.  Because Respondent has failed to respond to the Complaint, the Panel may assume Respondent lacks rights and legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).

 

Complainant alleges Respondent is not commonly known by the <jupiterchevy.com> domain name.  The WHOIS information identifies Respondent as “Nevis Domains.”  The Panel finds no other evidence suggesting Respondent is commonly known by the disputed domain name.  Pursuant to Policy ¶ 4(c)(ii), the Panel concludes Respondent lacks rights and legitimate interests in the <jupiterchevy.com> domain name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant also alleges that Respondent’s use of the <jupiterchevy.com> domain name is not in connection with a bona fide offering of goods and services.  Respondent’s website redirects Internet users to websites of Complainant’s competitors.  The Panel assumes Respondent earns click-through fees for each redirected Internet user and therefore concludes Respondent’s use of the <jupiterchevy.com> domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).  

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges Respondent’s registration and use of the <jupiterchevy.com> domain name is in bad faith because the disputed domain name redirects Internet users to a website that displays links to Complainant’s competitors.  This use of the disputed domain name likely disrupts Complainant’s business by diverting potential customers to websites of Complainant’s competitors, a violation of Policy ¶ 4(b)(iii).  See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

As previously stated, Respondent is currently using the <jupiterchevy.com> domain name to feature links to Complainant’s direct competitors.  Respondent presumably receives referral fees from these advertisers.  Further, Respondent has created a likelihood of confusion as to the affiliation of the disputed domain name and corresponding websites.  Complainant also alleges Respondent’s bad faith use and registration of the <jupiterchevy.com> domain name because Respondent is attempting to profit from the goodwill associated with Complainant’s mark.  Pursuant to Policy ¶ 4(b)(iv), the Panel concludes that Respondent has engaged in bad faith use and registration of the <jupiterchevy.com> domain name.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

The Panels finds that Complainant satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <jupiterchevy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: April 28, 2008.

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum