Baker-Jackson Nissan North, Inc., d/b/a Baker-Jackson Nissan v. Domain Administrator
Claim Number: FA0904001258907
Complainant is Baker-Jackson Nissan North, Inc., d/b/a
Baker-Jackson Nissan (“Complainant”),
represented by Jami J. Farris, of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is Domain Administrator (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bakerjacksonnissan.com>, registered with Moniker Online Services, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 23, 2009.
On April 22, 2009, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bakerjacksonnissan.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has 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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 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 postmaster@bakerjacksonnissan.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 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <bakerjacksonnissan.com> domain name is confusingly similar to Complainant’s BAKER-JACKSON NISSAN mark.
2. Respondent does not have any rights or legitimate interests in the <bakerjacksonnissan.com> domain name.
3. Respondent registered and used the <bakerjacksonnissan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates a Nissan motor vehicle dealership in
Respondent registered the <bakerjacksonnissan.com> domain name on December 27, 2001. The disputed domain name resolves to a website that contains links to websites offering services by Complainant’s competitors.
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.
Although Complainant does not have a trademark registration for the BAKER-JACKSON NISSAN mark, previous panels have determined that a federal registration is not required to establish rights in a mark, so long as the complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. 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 Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
The Panel finds that Complainant has established common law
rights in the BAKER-JACKSON NISSAN mark for purposes of Policy ¶ 4(a)(i)
through its continuous use of the mark in commerce since at least as early as
1990 to promote the sales of its vehicles at its auto dealership. See Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s
VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers
sufficient to establish common law rights where the complainant had been
continuously and extensively promoting a real estate development under the mark
for several years); see also Quality
Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb.
Forum Sept. 7, 2002) (finding that the complainant established common law
rights in the mark through continuous use of the mark since 1995 for the
purpose of Policy ¶ 4(a)(i)).
Complainant contends that
Respondent’s <bakerjacksonnissan.com>
domain name is confusingly similar to its BAKER-JACKSON
NISSAN mark. The <bakerjacksonnissan.com> domain name differs from Complainant’s mark in three ways: (1) the hyphen
between the first two terms has been removed; (2) the space between the last
two terms has been removed; and (3) the generic top-level domain (“gTLD”)
“.com” has been added to the mark. The
Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion, and so Respondent’s disputed domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding
that the domain name <cspan.net>, which omitted the hyphen from the
trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007)
(finding that “spaces are impermissible and a generic top-level domain, such as
‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is
required in domain names. Therefore, the
panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”);
see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant contends that Respondent is not commonly known
by the disputed domain names, nor has it ever been the owner or licensee of the
BAKER-JACKSON NISSAN mark. The WHOIS
information for the disputed domain name lists Respondent as “Domain Administrator.” In addition, Respondent has failed to
show any evidence contrary to Complainant’s contentions, and therefore, the
Panel finds that Respondent is not commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see
also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain names and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent maintains a
website at the <bakerjacksonnissan.com> domain name that features links to third-party
websites, which offer goods and services in competition with Complainant. Therefore, the Panel finds that Respondent’s
use of the <bakerjacksonnissan.com>
domain name 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). See
Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did not
constitute 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 also Jerry Damson,
Inc. v.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
According to Complainant’s contentions, Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s website, through the confusion caused by the similarity between the BAKER-JACKSON NISSAN mark and the <bakerjacksonnissan.com> domain name. Respondent’s website in question contains links to the business websites of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant also contends that Respondent is gaining commercially through this diversion by collecting “click-through” fees from the third-party websites of Complainant’s competitors, whose links appear on the website that resolves from the <bakerjacksonnissan.com> domain name. The Panel finds that Respondent’s use of the disputed domain name 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 registration and use in bad faith. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <bakerjacksonnissan.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 9, 2009
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