The Better Body Shop &
Used Car Factory, Inc. d/b/a Volkswagen of Naples v. Airport Kia
Claim Number: FA1001001303636
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@vwnaples.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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>.
DISCUSSION
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).
DECISION
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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