Freer Auto Body & Accessories Inc. v. Andys AutoBody c/o Andy Batchelor
Claim Number: FA0904001256658
Complainant is Freer Auto Body & Accessories Inc. (“Complainant”), represented by Daniel
T. Batten, of Greensfelder Hemker & Gale P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freerautobody.com>, registered with Register.com, Inc.
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 April 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2009.
On April 16, 2009, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freerautobody.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 April 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2009 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 May 12, 2009.
Complainant submitted a timely Reply on May 18, 2009.
On May 14, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freerautobody.com> domain name is confusingly similar to Complainant’s FREER AUTO BODY mark.
2. Respondent does not have any rights or legitimate interests in the <freerautobody.com> domain name.
3. Respondent registered and used the <freerautobody.com> domain name in bad faith.
Respondent contends that it registered the disputed domain name with the intent to resell it, and that this is a bona fide offering of goods or services.
Respondent claims that it has not taken any action to disrupt Complainant’s business, and is only advancing its own rights and interests in the disputed domain name.
Respondent contends that its intent to resell the domain name is evidence of Respondent’s good faith use and registration of the disputed domain name.
Respondent says that the domain name has never been used and that Andy’s Auto Body does not even have a web site.
C. Complainant’s Reply
Complainant contends that (1) Respondent’s response supports the Complaint, (2) Complainant’s trademark rights are clearly established, (3) the web site under the domain name is an active web directory and web index, (4) using a domain name for resale is not a legitimate purpose, (5) registering a domain name for resale is bad faith, and (6) the passage of time is irrelevant.
Complainant Freer Auto Body &
Accessories, Inc. has provided auto body repair services in southwestern
Respondent Andy’s Auto Body also operates an
auto body repair shop in
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 rights in the FREER AUTO BODY mark despite the fact that
Complainant does not hold a trademark registration for the FREER AUTO
BODY mark, as Policy ¶ 4(a)(i) does not require a complainant to
hold a registration for a mark, so long as Complainant can establish common law
rights through proof of secondary meaning associated with the mark. 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
Complainant has continuously operated an auto repair
service under the FREER AUTO BODY mark in
Respondent’s <freerautobody.com> domain name is identical to its FREER AUTO BODY mark. The <freerautobody.com> domain name differs from Complainant’s mark only in that the generic top-level domain (gTLD) “.com” has been added. The addition of a gTLD also fails to sufficiently distinguish a domain name from the mark it incorporates, because every domain name must include a top-level domain. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); 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 . . . ."). Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”).
Complainant contends that Respondent is not commonly known by the <freerautobody.com> domain name nor has it ever been the owner or licensee of the FREER AUTO BODY mark. Respondent has been identified as “Andys AutoBody c/o Andy Batchelor,” and does not claim to be known as any variant on the FREER AUTO BODY mark. The Panel therefore finds that Respondent is not commonly known by the <freerautobody.com> domain name pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Respondent maintains a website at the <freerautobody.com> domain
name that features links to
third-party websites offering services that compete with Complainant’s business. Complainant
contends that Respondent commercially benefits from these links through the
receipt of “click-through” fees. The
Panel finds that this use of the <freerautobody.com> domain name was
neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See
Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up advertisements
and links to various third-party websites is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also
The Panel concludes that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant contends that Respondent has been diverting Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, through the confusion caused by the similarity between the FREER AUTO BODY mark and the <freerautobody.com> domain name. Complainant also contends that Respondent, who also operates an auto body services business, is intentionally disrupting Complainant’s business by its diversionary tactics. The Panel finds that Respondent’s disruption of Complainant’s business is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents 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).
Complainant also contends that Respondent gains commercially from this diversion through the click-through fees Respondent receives from the third-party websites. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use in bad faith. 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have 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 <freerautobody.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: May 28, 2009
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