AM General LLC v. CDC
Claim Number: FA1004001316858
Complainant is AM General LLC (“Complainant”), represented by Gerard
T. Gallagher, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhumvee.com>, registered with Network Solutions, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2010.
On April 1, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <xhumvee.com> domain name is registered with Network Solutions, LLC and that the Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org by email. Also on April 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 27, 2010.
An Additional Submission was received from Complainant on April 30, 2010.
On April 30, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent’s domain name <xhumvee.com> is confusingly similar to its trademark HUMVEE. The Complainant argues that the addition of the letter “x” to HUMVEE does not avoid likelihood of confusion between the HUMVEE trademark and the <xhumvee.com> domain name. Complainant also alleges that Respondent does not have any rights or legitimate interests with respect to the domain name, because Respondent has never been known by the name “humvee” or “xhumvee.”
The Complainant argues that Respondent has registered and used the <xhumvee.com> domain name in bad faith by creating a likelihood of confusion, and that “Respondent offers goods for sale on Respondent’s web site that are competitive with Complainant’s goods,” because Respondent’s web site promotes “refurbished and customized Humvees.”
Respondent concedes that Complainant has rights in the HUMVEE trademark, states that “Respondent’s intention at the time of registering its domain name that the “x” would identify it as selling used vehicles and not to compete against Complainant.” Respondent alleges that its use and registration of the domain name is legitimate to support its business of selling refurbished Humvee vehicles. Respondent states, “Respondent purchased over one hundred used Humvees sold at the auspices of the U.S. Department of Defense at public auction. As used vehicles, Respondent has customized and modified them to be used primarily [for] recreational use.” Respondent also maintains that its domain name is not aimed at attracting or diverting Complainant’s business.
Concerning the issue of bad faith, Respondent stated, “There is nothing on Respondent’s website to indicate that ir [sic] sells anything but used vehicles or in anyway [sic] implies that it is sponsored, affiliated with or endorsed by Complainant of [sic] its website location or a product or service listed on its website location.” The Respondent asserts that its domain name “actually enhances the good will of Complainant by generating interest in a product to the private sector which cannot ordinarily acquire them from AM General.”
C. Additional Submissions
Complainant’s Additional Submission states that the likelihood of confusion caused by <xhumvee.com> results in a presumption of bad faith. According to Complainant, Respondent’s bad faith intent is demonstrated by “(A) Complainant has rights in the HUMVEE mark, (B) its prior knowledge of Complainant’s mark, (C) that ‘an argument can be made that [the Domain Name] is confusingly similar’ to Complainant’s mark, and (D) that its activities conducted in connection with the domain name will be associated with Complainant.” The Additional Submission attaches an affidavit to the effect that Complainant has not licensed any rights to Respondent.
Complainant has used the HUMVEE trademark for
27 years in connection with trucks, and Complainant owns several
On November 19, 2001, Respondent registered the domain name <xhumvee.com>. The home page of the <xhumvee.com> site has the headline: “Welcome to xHUMVEE, Former Military Humvees transformed to Street Machines.” The home page states, “For over five years, we have supplied the military and private sector with the finest refurbished and customized Humvees.”
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 owns several
This Panel concludes that the <xhumvee.com> domain name is confusingly similar to the HUMVEE
mark. The disputed domain name contains
Complainant’s mark in its entirety while adding the letter “x” as a
prefix. In this case, the letter “x” is
not sufficient to distinguish the disputed domain name from its mark. Previous panels have found that a
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
where the disputed domain name: (1) contains the Complainant’s mark in its
entirety; (2) adds a single letter prefix to the mark; and (3) adds a gTLD such
as “.com” This Panel concludes that Respondent’s disputed domain name is
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Imation Corp. v. Carstarphen, FA 0411000366274 (Nat. Arb.
Forum January 3, 2005) (domain name <x-imation> held confusingly similar
to IMATION trademark); Canadian Tire
Corp. v. 849075
In view of the above, this Panel finds in favor of Complainant with respect to the first factor, Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <xhumvee.com> domain name, nor has Complainant granted Respondent permission to use its famous HUMVEE mark in any way. Respondent has never been commonly known by the name “humvee” or “xhumvee,” as evidenced by the WHOIS information for the disputed domain name which identifies “CDC” as the registrant of the <xhumvee.com> domain name.
The Respondent created the <xhumvee.com> domain name on November 21, 2001. Although the domain name was registered almost nine years ago, Respondent has presented no proof that the domain name has been continuously used during that period, nor has Respondent provided any proof to support its assertion, “Respondent is in the business of selling used Humvees and xhumvee.com is well known for that purpose.”
In the absence of such proof, this Panel concludes that Respondent is not commonly known by the disputed domain name. See Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”); see also Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy 4(c)(ii).”).
Respondent argues that
it uses <xhumvee.com> in connection
with a bona fide offering of goods,
i.e., to sell the used trucks manufactured by Complainant. However, this Panel does not agree that
Respondent has demonstrated sufficient rights in the domain name. See,
e.g., Hill-Ron Services, Inc. v.
This case is distinguishable from prior decisions that have refused to transfer a domain name. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (June 18, 2001) (<Mercedesshop.com> for car parts was held legitimate because the term is descriptive and website prominently featured a disclaimer of any relationship with the Complainant); Cf. Ty Inc. v. Perryman, 306 F.3d 509, 513 (7th Cir. 2002) (finding that where there is a secondary market for goods, the primary market seller cannot prevent a secondary market seller from using a version of its trademark in a domain name to describe the secondary market goods being sold); see also Koninklijke Philips Elecs. N.V. v. Cun Siang Wang, D2000-1778 (WIPO Mar. 15, 2001) (“a trader in genuine branded goods can have a legitimate interest in using a domain name incorporating the brand name for a website promoting and selling the branded goods, provided that the trader does not use the domain name so as to cause confusion”).
This Panel concludes that Complainant should prevail with respect to the second factor under Policy ¶ 4(a)(ii).
Respondent argues that it has not registered or used <xhumvee.com> in bad faith. Respondent contends that nothing on its website indicates that it sells anything but used vehicles and no part of the website implies that it is sponsored or affiliated with Complainant. Respondent further argues that it has never intended to take business from Complainant.
Because of the likelihood of confusion with Complainant’s HUMVEE trademark, this Panel concludes that <xhumvee.com> disrupts Complainant’s business. The confusion caused to Internet users as to the affiliation and sponsorship of the website will lead some consumers interested in Complainant’s products to buy the competing products of Respondent. This type of business disruption is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
It appears that Respondent is using the confusingly similar <xhumvee.com> domain name to attract Internet users to its website for financial gain, as contemplated by Policy ¶ 4(b)(iv). This finding constitutes evidence of bad faith registration and use by Respondent. See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. This Panel concludes that Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
It is undisputed that Respondent was aware of Complainant’s HUMVEE mark when it registered the <xhumvee.com> domain name. This Panel concludes that Respondent had actual knowledge of Complainant’s HUMVEE mark and nevertheless registered the disputed domain name in bad faith. See Florists' Transworld Delivery v. Malek, FA 676433 (“Although it may not be appropriate in every case, in this case where: (i) the Complainant relies on a famous and distinctive trademark (the FTD Mark); (ii) the trademark is incorporated in its entirety into the Domain Name whose other terms relate to business of the Complainant; (iii) the Respondent is in the same line of business as the Complainant; (iv) the Respondent has used the Domain Name to promote and sell goods and services that directly compete with the Complainant’s goods and services, and (v) the Complainant and Respondent are both located in the United States, the Panel finds that there should be “constructive notice” of the Complainant’s FTD Mark.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED, and that the domain name should be TRANSFERRED to Complainant.
Linda M. Byrne, Panelist
Dated: May 14, 2010
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