AM General LLC v. Yafa Media / Maher ShraimClaim Number: FA1009001348072
Complainant is AM General LLC ("Complainant"), represented by Gerard T. Gallagher of Barnes & Thornburg LLP, Indiana, USA. Respondent is Yafa Media / Maher Shraim ("Respondent"), United Arab Emirates. «cFirstName» «cMiddle» «cLastName»
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emirateshumvee.com> registered with ENOM, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2010; the National Arbitration Forum received payment on September 24, 2010«DateHardCopy».
On September 23, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <emirateshumvee.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@emirateshumvee.com. Also on October 1, 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 November 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <emirateshumvee.com> domain name is confusingly similar to Complainant’s HUMVEE mark.
2. Respondent does not have any rights or legitimate interests in the <emirateshumvee.com> domain name.
3. Respondent registered and used the <emirateshumvee.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AM General LLC, designs, engineers, and produces vehicles and parts for military and civilian use. Complainant uses the HUMVEE mark in connection with its vehicle production and sales. Complainant has numerous trademark registrations for its HUMVEE mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,697,530 issued June 30, 1992).
Respondent, Yafa Media / Maher Shraim, registered the <emirateshumvee.com> domain name on November 27, 2007. The disputed domain name resolves to a website that displays images of vehicles, some of which appear to be Complainant’s HUMVEE vehicles, and solicits users to contact Respondent for more information.
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.
Complainant contends it has established rights in the HUMVEE mark. Previous panels have found that trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Previous panels have also found that a complainant is not required to register its mark within the country of the respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant holds multiple trademark registrations of the HUMVEE mark with the USPTO (e.g. Reg. No. 1,697,530 issued June 30, 1992). Therefore, the Panel finds that the Complainant has established rights in the HUMVEE mark through its trademark registration with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <emirateshumvee.com> domain name is confusingly similar to Complainant’s HUMVEE mark. The disputed domain name differs from Complainant’s mark only by the addition of the descriptive word “emirates” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the mere addition of a generic term does not properly distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. See 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.”). Thus, the Panel concludes that Respondent’s <emirateshumvee.com> domain name is confusingly similar to Complainant’s HUMVEE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent lacks rights and legitimate interests in the <emirateshumvee.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that respondent does not have rights and legitimate interests in the <emirateshumvee.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). 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).
Complainant alleges that Respondent is not commonly known by the <emirateshumvee.com> domain name. Complainant argues that Respondent has not presented any evidence that would support a finding that Respondent is commonly known by the disputed domain name. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS is information does not appear to be similar to the disputed domain name. Complainant argues that it has not authorized or licensed Respondent to use or register the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <emirateshumvee.com> 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the <emirateshumvee.com> domain name to resolve to a website featuring a revolving series of images of various vehicles, some of which appear to be Complainant’s military vehicles. The resolving website includes a phone number, inviting users to call for more information, presumably about the vehicles or other products sold by respondent. Respondent likely profits from the sale of these vehicles or related products. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website to sell Complainant’s goods without Complainant’s authority, as well as other products, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(ii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <emirateshumvee.com> domain name resolves to a website which displays images of vehicles, some of which appear to be Complainant’s military vehicles. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users will likely believe that Respondent is an authorized dealer or distributor of Complainant’s military vehicles. Internet users intending to purchase goods from Complainant may instead purchase the similar goods from Respondent as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel infers that Respondent likely profits from the sale of vehicles and products featured on the resolving website. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name and resolving website. Respondent attempts to profit from this confusion through the sale of its products featured on the website. The Panel finds that Respondent’s use of the <emirateshumvee.com> domain name constitutes bad faith registration pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emirateshumvee.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 15, 2010
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