The Better Body Shop & Used Car Factory, Inc. d/b/a Volkswagen of Naples v. Airport Kia
Claim Number: FA1001001303636
Complainant is The Better Body Shop & Used Car Factory, Inc. dba Volkswagen of Naples (“Complainant”), represented by John F. Walsh, Florida, USA. Respondent is Airport Kia (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vwnaples.com>, registered with GoDaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vwnaples.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 January 27, 2010, Written Notice of the Complaint, setting a deadline of February 16, 2010 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 email@example.com by e-mail.
Respondent did not indicate assent to participate in an electronic process; therefore Respondent’s submission was required to be sent in hard copy per the version of UDRP Rule 5 currently in effect.
A Response was received and determined to be deficient pursuant to ICANN Rule #5 because it was received in hard copy only prior to the February 16, 2010 Response deadline. Respondent did not opt in to the eUDRP process. However, since the UDRP process is moving toward an electronic-only process, the Panel will consider the electronically submitted response.
On February 26, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <vwnaples.com> domain name is confusingly similar to Complainant’s VOLKSWAGEN OF NAPLES mark.
2. Respondent does not have any rights or legitimate interests in the <vwnaples.com> domain name.
3. Respondent registered and used the <vwnaples.com> domain name in bad faith.
B. Respondent states that it legitimately purchased and uses the <vwnaples.com> domain name to sell VW vehicles.
Complainant has operated a Volkswagen motor vehicle dealership in Naples, Florida, since 2000, and has registered the business name with the State of Florida. Complainant uses the domain name <vwofnaples.com> to promote its dealership. Respondent Airport Kia is a car dealership in Naples, Florida, selling pre-owned vehicles under a variety of domain names including KiaNaples.com, Toyotanaples.com, Nissannaples.com, Hyundianaples.com, Lexusnaples.com, Hondanaples.com, as well as <vwnaples.com>.
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 asserts that it has common law rights in its VOLKSWAGEN OF NAPLES mark through its continuous use of the mark to sell Volkswagen cars in the Naples, Florida area since May of 2000. Complainant has registered the name “Volkswagen of Naples” as a fictitious name with the Florida Secretary of State. Complainant registered the <vwofnaples.com> domain name and has consistently used it in connection with its car sales business since June 9, 2000. The Panel finds that Complainant has provided sufficient evidence to establish rights in the 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).
Respondent’s <vwnaples.com> domain name is confusingly similar to Complainant’s VOLKSWAGEN OF NAPLES mark. The disputed domain name abbreviates the term “volkswagen” with the letters “vw,” omits the preposition “of,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not sufficiently distinguish the disputed domain name from Complainant’s mark. The Panel finds that Respondent’s <vwnaples.com> domain name is confusingly similar to Complainant’s VOLKSWAGEN OF NAPLES mark under Policy ¶ 4(a)(i). See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In determining whether or not Respondent
has a legitimate interest in using the <vwnaples.com> domain name, the Panel considers that the VW
and VOLKSWAGEN trademarks alone are owned by neither the Complainant nor the
Respondent. VW is an abbreviation of the
well-known automobile brand VOLKSWAGEN, sold by many dealerships in the
U.S. No doubt there are many
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(ii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated: March 12, 2010
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