MTL Motors, L.L.C. v. Melton Motors, Inc. c/o Melton, Dennis
Claim Number: FA1004001319686
Complainant is MTL
Motors, L.L.C. (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C., Virginia,
USA. Respondent is Melton Motors, Inc. c/o Melton,
Dennis (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lafontaineglobalvehicles.com>, registered with GoDaddy.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2010.
On April 16, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <lafontaineglobalvehicles.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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 postmaster@lafontaineglobalvehicles.com by e-mail. Also on April 20, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <lafontaineglobalvehicles.com> domain name is confusingly similar to Complainant’s LAFONTAINE mark.
2. Respondent does not have any rights or legitimate interests in the <lafontaineglobalvehicles.com> domain name.
3. Respondent registered and used the <lafontaineglobalvehicles.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MTL Motors, L.L.C., began operation in 1980 and
currently operates fifteen automobile dealerships in
Respondent, Melton Motors, Inc. c/o Melton, Dennis, registered the <lafontaineglobalvehicles.com> domain name on April 10, 2007. The disputed domain name formerly resolved to Respondent’s website that offered competing automobile products and services. Currently, the <lafontaineglobalvehicles.com> domain name fails to resolve to an active website.
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.
The Panel finds that Complainant has established rights in
its LAFONTAINE mark pursuant to Policy ¶ 4(a)(i) due to its trademark
registration with the USPTO (Reg. No. 3,141,214 issued September 12,
2006).
Complainant alleges that Respondent’s <lafontaineglobalvehicles.com> domain name is confusingly similar to Complainant’s LAFONTAINE mark. The disputed domain name adds the descriptive terms “global” and “vehicles,” which describe Complainant’s automobile business and the generic top-level domain (“gTLD”) “.com” to Complainant’s entire LAFONTAINE mark. Previous panels have found the addition of descriptive terms and a gTLD do not ensure a disputed domain name is no longer confusingly similar to a complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Thus, the Panel concludes that Respondent’s <lafontaineglobalvehicles.com> domain name is confusingly similar to Complainant’s LAFONTAINE mark under Policy ¶ 4(a)(i).
The Panel determines Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <lafontaineglobalvehicles.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent has failed to present any evidence, and the Panel cannot find any evidence in the record, that would support a finding that Respondent is commonly known by the <lafontaineglobalvehicles.com> domain name. Conversely, Complainant has presented substantial evidence that Respondent is not commonly known by the disputed domain name. Complainant provides the WHOIS information which identifies the domain name registrant as “Melton Motors, Inc. c/o Melton, Dennis.” Complainant contends the WHOIS information is not similar to the <lafontaineglobalvehicles.com> domain name. Complainant further claims that Respondent is not authorized or licensed to use Complainant’s LAFONTAINE mark and that Respondent is not affiliated with Complainant. Based on this evidence, and the lack of evidence presented by Respondent, the Panel determines that Respondent is not commonly known by the <lafontaineglobalvehicles.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent and Complainant are competitors in the automobile dealership industry. Respondent formerly used the <lafontaineglobalvehicles.com> domain name to resolve to Respondent’s website that directly competed with Complainant. The Panel finds Respondent’s use of a confusingly similar disputed domain name to compete with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <lafontaineglobalvehicles.com> domain name pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Currently, Respondent’s <lafontaineglobalvehicles.com> domain name fails to resolve to an active website. Complainant claims that after Respondent’s receipt of Complainant’s cease-and-desist letter, Respondent stopped using the disputed domain name. The Panel holds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Previously, the <lafontaineglobalvehicles.com> domain name resolved to Respondent’s website that offered automobile products and services that compete with Complainant’s automobile products and services. Internet users interested in purchasing an automobile from Complainant may instead purchase a similar automobile from Respondent because of Respondent’s use of the confusingly similar <lafontaineglobalvehicles.com> domain name. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s automobile dealership business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
When the <lafontaineglobalvehicles.com> domain name resolved to Respondent’s competing website, Complainant contends that Respondent was attempting to profit by creating confusion among Internet users as to Complainant’s sponsorship of or affiliation with the disputed domain name, resolving website, and featured automobile products. The Panel determines Respondent’s use of the disputed domain name constitutes bad faith registration and use according to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Respondent’s <lafontaineglobalvehicles.com> domain name currently resolves to an inactive website. The Panel holds that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel concludes that Policy ¶ 4(a)(iii) has 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 <lafontaineglobalvehicles.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 1, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum