Mike Anderson Chevrolet of Merrillville, Inc. & Mike Anderson Auto Group, Inc. v. COMDOT INTERNET SERVICES PRIVATE LIMITED.
Claim Number: FA0804001177933
Complainant is Mike Anderson Chevrolet of Merrillville, Inc. &
Mike Anderson Auto Group, Inc. (“Complainant”), represented by Brett
E. Lewis of Lewis & Hand, LLP, New York, USA. Respondent is COMDOT INTERNET SERVICES PRIVATE LIMITED
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mikeandersonchevrolet.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 14, 2008; the National Arbitration Forum received a hard copy of the Complaint April 14, 2008.
On April 22, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <mikeandersonchevrolet.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 21, 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@mikeandersonchevrolet.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 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 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.
PRELIMINARY
PROCEDURAL ISSUE:
Complainant has asserted that Respondent, COMDOT INTERNET SERVICES PRIVATE LIMITED and Web Advertising, Corp. are the same entity. Complainant provided evidence that supports this assertion. See Exhibit P, a WHOIS report from October 10, 2007, that lists the registrant as Web Advertising, Corp. However, on April 15, 2008, the Registrar verified that the Registrant of the <mikeandersonchevrolet.com> domain name was COMDOT INTERNET SERVICES PRIVATE LIMITED. In fact, Complainant’s allegations support a finding that Respondent asserted different aliases in response to notice of the filing of this and other actions. Respondent made demands for payment from Complainant for the domain name and when Complainant did not pay, Respondent then changed the name of the Registrar yet again. Complainant provided sufficient evidence for the Panel to find that “Web Advertising Corp,” and the other names are aliases used by Respondent COMDOT INTERNET SERVICES PRIVATE LIMITED. Further, Complainant provided cites for several other UDRP decisions involving Respondent under those aliases.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <mikeandersonchevrolet.com>, is confusingly similar to Complainant’s MIKE ANDERSON mark.
2. Respondent has no rights to or legitimate interests in the <mikeandersonchevrolet.com> domain name.
3. Respondent registered and used the <mikeandersonchevrolet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mike Anderson Chevrolet of Merrillville, Inc., is a subsidiary of the Mike Anderson Auto Group. Complainant has sold automobiles under its MIKE ANDERSON mark since December 12, 1979. Complainant also owns the <mikeandesonchevrolet.com> domain name.
Respondent registered the <mikeandersonchevrolet.com> domain name October 15, 2005, and has been using the disputed domain name to display links to competing third-party websites. Respondent has also offered to sell 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."
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.
Complainant is not
required to own a trademark registration to establish rights in the MIKE
ANDERSON mark under Policy ¶ 4(a)(i). 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 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).
Complainant established common law rights in the MIKE
ANDERSON mark through continuous and extensive use of the mark in connection
with its car dealership since 1979.
Complainant has spent a great deal of effort and funds marketing and
promoting its car dealership under the mark, and is well-known as a car
dealership. Complainant has also registered
the <mikeandesonchevrolet.com> domain name, and is registered as a
business entity with the State of
The <mikeandersonchevrolet.com> domain name is confusingly similar to Complainant’s MIKE ANDERSON mark because it wholly incorporates the mark and differs from the mark by the addition of the term “chevrolet” and the generic top-level domain (“gTLD”) “.com.” The panel in Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) found confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. Moreover, all registered domain names are required to have a top-level domain; therefore, Respondent’s addition of the gTLD “.com” is irrelevant for distinguishing the disputed domain name from the mark. The Panel finds that the disputed domain name is confusingly similar to the MIKE ANDERSON mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of demonstrating that Respondent lacks all rights and legitimate interests in the disputed domain name. The panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” Complainant has asserted that Respondent has no rights or legitimate interests in the <mikeandersonchevrolet.com> domain name. The Panel concludes that Complainant made a prima facie case, thereby shifting the burden to Respondent. 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).”).
Based on Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. Despite Respondent’s failure to respond, the Panel will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that it has not licensed nor authorized Respondent to use the MIKE ANDERSON mark, and that Respondent has no rights to use the CHEVROLET mark. The WHOIS information does not indicate that Respondent is commonly know by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <mikeandersonchevrolet.com> domain name under Policy ¶ 4(c)(ii). 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).
Respondent is using the disputed domain name to direct
Internet users to websites that offer products competing with Complainant and is
presumably receiving click-through fees for redirecting Internet users. In Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat. Arb.
Forum Dec. 1, 2003), the panel found 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. Here, the Panel concludes that Respondent’s
use is not 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 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 also finds that
Respondent’s offer to sell the disputed domain name demonstrates a lack of
rights and legitimate interests under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1,
2000) (finding no rights in a domain name where the respondent offered the
infringing domain name for sale and the evidence suggests that anyone
approaching this domain name through the worldwide web would be
"misleadingly" diverted to other sites).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(ii).
By using the disputed domain name to redirect Internet users to competing third-party websites, Respondent is commercially benefiting from the goodwill associated with the MIKE ANDERSON mark. Complainant asserts that Respondent’s use of the <mikeandersonchevrolet.com> domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the website that resolves from the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name evidences registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent’s use of the
disputed domain name to advertise links to competing websites may also disrupt
Complainant’s business, and thus is evidence of registration and use in bad
faith under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Complainant also contends that
Respondent attempted to sell the disputed domain name for $8,900. The Panel concludes that this offer
demonstrates registration and use in bad faith under Policy ¶ 4(b)(i). See Campmor,
Inc. v. GearPro.com, FA 197972 (Nat. Arb.
Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and
offered to sell it to Complainant for $10,600. This demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i).”); see also
Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered
domain names for sale).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mikeandersonchevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 11, 2008.
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