Central Valley Automotive d/b/a
Claim Number: FA1006001327840
PARTIES
Complainant is Central Valley Automotive d/b/a Central
Valley Hyundai (“Complainant”),
represented by Christopher W. Ewing, of The Business Law Group, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <centralvalleyhyundai.com>,
registered with NETWORK SOLUTIONS, LLC.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Luiz Edgard Montaury Pimenta, Honorable Bruce
E. Meyerson and Honorable Hong Oo Baak, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 2, 2010.
On June 3, 2010, NETWORK SOLUTIONS, LLC confirmed by e-mail to
the National Arbitration Forum that the <centralvalleyhyundai.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 June 8, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 28, 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@centralvalleyhyundai.com by
e-mail. Also on June 8, 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 July 06, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Luiz Edgard Montaury Pimenta, Honorable Bruce E.
Meyerson and Honorable Hong Oo Baak as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Central Valley Automotive, Inc., DBA Central Valley
Hyundai, informs that it has operated a car dealership under the CENTRAL VALLEY
HYUNDAI mark in
Complainant informs that Respondent registered the <centralvalleyhyundai.com>
domain name on April 16, 2008, the same day that the California DMV
published the name in its official records. Complainant contends that the disputed
domain name resolves to a competing website of <rosevillehyundai.com>, promoting
an automobile dealership in the
Complainant asserts that it has acquired common law rights in the name
CENTRAL VALLEY HYUNDAI and states that it has licensed use of the United States
Federal Registered trademark HYUNDAI.
Complainant alleges that it has consistently used the CENTRAL VALLEY
HYUNDAI mark in connection with its offering of automobile sales and servicing
since 2008. Complainant asserts that it expended thousands of dollars in
advertising and promoting the mark and has sold hundreds of vehicles in the
last two years. Complainant used the mark CENTRAL VALLEY HYUNDAI on April 15,
2008 when signing the Dealership Agreement with Hyundai Motor America and before
Respondent registered the disputed domain name <centralvalleyhyundai.com>. Thus, Complainant alleges that it has
established secondary meaning in the CENTRAL VALLEY HYUNDAI mark, and
demonstrated rights in the mark under Policy ¶ 4(a)(i) that predate Respondent’s
registration of the <centralvalleyhyundai.com> domain name by at
least one day.
Complainant argues that it has submitted sufficient evidence to show it
has common law rights in the mark pursuant to Policy 4(a)(i).
Complainant states that Respondent’s <centralvalleyhyundai.com>
domain name is confusingly similar to Complainant’s CENTRAL VALLEY HYUNDAI
mark. Complainant asserts that Respondent’s disputed domain name incorporates
Complainant’s mark in its entirety, with the omission of spaces and the
addition of the generic top-level domain “.com.”.
Complainant contends that Respondent has no legitimate interest and has
not made any legitimate use of the domain name <centralvalleyhyundai.com>
in connection with a bona fide offering of goods and services. Complainant
further contends that Respondent is not commonly known by the disputed domain name
“CENTRALVALLEYHYUNDAI.COM” or by Central Valley Hyundai. Complainant contends
that Respondent could not be known by any of the fore mentioned names due to the
exclusive license agreement between the HYUNDAI mark owner and Complainant.
Complainant informs that Hyundai Motor Company, the parent company to
Hyundai Motor America, has several federally registered trademarks for HYUNDAI and
that it has exclusively licensed its trademark to Complainant for use in
connection with CENTRAL
VALLEY. Therefore, Complainant concludes that Respondent can NOT have
any legitimate rights or bona fide use on the disputed domain name.
Complainant asserts that Respondent is not making any legitimate
noncommercial or fair use of the domain name. Complainant asserts that Respondent
has not registered the domain name to use as a parody and that Respondent’s
sole use and registration of the domain name is to trade on Complainant’s name
and mark and to divert internet users in violation of both
Complainant informs that Respondent is not licensed, assigned, or
authorized to use the CENTRAL VALLEY HYUNDAI mark in a domain name by
Complainant and therefore lacks rights and legitimate interests pursuant to
Policy ¶ 4(c)(ii).
Therefore, Complainant concludes that Respondent’s use of the disputed
domain name does not constitute either a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use under
Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users seeking
information on Complainant’s car dealership to <rosevillehyundai.com>,
a website of a competing automobile dealership. Complainant asserts that Respondent
is misleading consumers to believing that Complainant is connected with or
sponsoring said site. Further, Complainant also asserts that Respondent is
likely selling vehicles to consumers that would have purchased a vehicle
directly from Complainant and is therefore profiting from this diversion
scheme. As a result, Complainant concludes that Respondent has registered and
is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv).
Complainant asserts that because Respondent registered the disputed domain
name after Complainant’s name was published by the California DMV; after the
Complainant had signed an Agreement with Hyundai Motor America; and after Complainant
had gained valuable rights in the common law mark CENTRAL VALLEY HYUNDAI, the
Panel should find that the Respondent has registered and is using the disputed
domain name to disrupt Complainant’s business, which constitutes bad faith according
to Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent is preventing Complainant from
reflecting its mark in a corresponding domain name. Also, Complainant contends
that Respondent’s attempt to pass itself off as Complainant also disrupts
Complainant’s operations because Internet users attempting to conduct business
with Complainant may mistakenly attempt to complete a transaction with
Respondent. Complainant states that this diverts business away from Complainant,
and is therefore evidence of Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant asserts that it is sufficient that Respondent can
not utilize the domain name for any non-infringing way and that this is
primarily due to the fact that the Respondent could not license the use of the
trademarked term HYUNDAI.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
FINDINGS
Complainant claims that it has common law
rights in the CENTRAL VALLEY HYUNDAI mark.
Complainant has submitted evidence to show that it filed its business
name with the State of
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 argues
that Respondent’s <centralvalleyhyundai.com> domain name is identical
to Complainant’s CENTRAL VALLEY HYUNDAI mark.
Complainant notes that Respondent merely deletes the spaces between the
terms of its mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed
domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) where the
disputed domain name contains Complainant’s mark entirely while deleting the
spaces between the terms of the mark and adds the gTLD “.com.”, which clearly is
not enough to characterize the disputed domain name as being distinct from
Complainant’s trademark. See
The Panel finds that the Complainant has
established the first element of the Policy.
A complainant is required to make out an
initial prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made, respondent carries the
burden of demonstrating rights or legitimate interests in the domain name. If
the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy. 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.”).
With respect to paragraph 4(c)(ii) of
the Policy, there is no evidence that indicates that Respondent has ever been
commonly known by the disputed domain name. Complainant contends that
Respondent is not, and cannot, be commonly known by the disputed domain
name. Further, Complainant argues that
it has not licensed, assigned, or authorized Respondent to use its mark in a domain
name. The Panel finds that the WHOIS
information for the disputed domain name identifies “Chris Shaffer” as the
registrant of the domain name.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record).
With respect to paragraph 4(c)(iii) of
the Policy, Respondent has not made and is not making a legitimate
noncommercial or fair use of the disputed domain name and has not used the
disputed domain name, or a name corresponding to it, in connection with a bona
fide offering of goods or services. Complainant argues that Respondent is
using the disputed domain name to resolve to a third-party website under the <rosevillehyundai.com>
domain name, which is a direct competitor of Complainant. Complainant contends that Respondent’s use of
the disputed domain name to divert Internet users to a competitor of
Complainant is evidence that Respondent lacks rights and legitimate interests
in the disputed domain name. The Panel
finds that Respondent’s use of the disputed domain name to divert Internet
users to the website and business of a competitor of Complainant is not a use
in connection with 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
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb.
Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also 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).
The Panel finds that the Complainant has
established the second element of the Policy.
Under paragraph 4(b), a respondent has used
and registered a domain name in bad faith if, inter alia, the respondent
has used the domain name intentionally to attempt to attract, for commercial
gain, Internet users to the respondent’s website or other online location by
creating a likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation or endorsement of the respondent’s site or of a
product or service offered on the respondent’s site. Policy
paragraph 4(b)(iv).
Also, it is evidence of registration and use
in bad faith if the respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor. Policy paragraph 4(b)
(iii).
The Panel finds that Respondent registered
the domain name in bad faith.
Complainant argues that Respondent is using
the disputed domain name to redirect Internet users to the website of a direct
competitor, and that such use results in a disruption of Complainant’s business. Complainant alleges that some Internet users
will be confused as to the affiliation and sponsorship of the website that resolves
from the disputed domain name, because both Complainant and Respondent operate
Hyundai automobile dealerships, and will ultimately purchase Hyundai
automobiles from Respondent. The Panel
finds that Respondent’s use of the disputed domain name to resolve to the
website of Complainant’s competitor is evidence of bad faith registration and
use of the dispute domain name under Policy ¶ 4(b)(iii). See
St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop.
Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the
respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to
advertise goods and services of complainant’s competitors, thereby disrupting
the complainant’s business).
Complainant also contends that Respondent
registered and is using the disputed domain name in bad faith because
Respondent is intentionally attracting Internet users to the disputed domain
name for commercial gain. Complainant
argues that Respondent is diverting Internet users to a competing business and
website in order to profit from the confusion caused by using the identical
disputed domain name. Complainant
contends that Respondent is selling automobiles to Internet users who believe
that they are on Complainant’s business website, not the website of
Complainant’s competitor. The Panel finds
that internet users will likely be confused as to the source, sponsorship,
affiliation or endorsement of the respondent’s site or of a product or service
offered on the Respondent’s site. Therefore, the Panel finds that Respondent
registered and is using the disputed domain name in bad faith under 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 TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of the complainant).
Although Complainant does not argue that
Respondent opportunistically registered the disputed domain name the Panel finds
that Respondent’s conduct indicates such bad faith registration. Complainant received a letter from
third-party Hyundai Motors on April 15, 2008 indicating that Complainant had
been accepted as a new Hyundai automobile dealership. On April 16, 2008 Complainant filed its
business application with the State of
Accordingly, the Panel finds that the
Complainant has made out bad faith registration and use of the domain name by
the Respondent.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <centralvalleyhyundai.com> domain
name be TRANSFERRED from Respondent to Complainant.
Luiz E. Montaury Pimenta, Panel Chair
Honorable Bruce E. Meyerson, Panelist
Honorable Hong Oo Baak, Panelist
Dated: July 22, 2010
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