Price LeBlanc, Inc. v. J. Luke Anthony
Claim Number: FA1010001352728
Complainant is Price LeBlanc, Inc. (“Complainant”), represented by William L. Caughman of Kean, Miller, Hawthorne, D'Armond, McCowan & Jarman, L.L.P., Louisiana, USA. Respondent is J. Luke Anthony (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <priceleblanc.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2010; the National Arbitration Forum received payment on October 19, 2010.
On October 18, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <priceleblanc.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. 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 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@priceleblanc.com. Also on October 22, 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 19, 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.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <priceleblanc.com> domain name is identical to Complainant’s PRICE LEBLANC mark.
2. Respondent does not have any rights or legitimate interests in the <priceleblanc.com> domain name.
3. Respondent registered and used the <priceleblanc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Price LeBlanc, Inc., operates multiple automobile dealerships. Complainant advertises and conducts its business under the PRICE LEBLANC trademark. Complainant registered this trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,820,336 filed May 12, 2009; issued July 20, 2010). The Registration shows commercial use dating back to 1975.
Respondent, J. Luke Anthony, registered the disputed domain name on December 12, 1998. The disputed domain name resolves to a website devoted to providing Internet users information on automobile purchases. The disputed domain name operates in direct competition with the similar automobile purchase services offered by Complainant.
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.
Registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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). Accordingly, the Panel concludes Complainant’s trademark registration of the PRICE LEBLANC mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel further finds that the effective date of Complainant’s trademark registration is the filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Accordingly, the Panel concludes Complainant’s registration of PRICE LEBLANC with the USPTO (e.g., Reg. No. 3,820,336 filed May 12, 2009 issued July 20, 2010) establishes rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to May 12, 2009.
Complainant’s trademark registration lists its first use of the PRICE LEBLANC mark as dating back to March 3, 1975. Complainant alleges that it has used its mark in the advertising of automobile dealerships for over three decades. Previous panels have concluded that a complainant can establish common law rights in a mark dating back to the first use of the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years). In the absence of any evidence to the contrary, the Panel finds that Complainant has established common law rights in its PRICE LEBLANC pursuant to Policy ¶ 4(a)(i), dating back to March 3, 1975.
Respondent’s <priceleblanc.com> domain name is identical to Complainant’s PRICE LEBLANC mark. Respondent’s disputed domain name simply removes the space between the terms of Complainant’s established PRICE LEBLANC mark and adds the generic top-level domain (“gTLD”) “.com,” insufficient to distinguish the domain name from Complainant’s mark. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel concludes that Respondent’s <priceleblanc.com> domain name is identical to Complainant’s PRICE LEBLANC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights and legitimate interests in the <priceleblanc.com> domain name. Previous panels have found that a complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove that it has rights or legitimate interests in the domain name. Based on the Complaint, the Panel finds that Complainant has made a prima facie showing and that Respondent failed to make a timely response. According to these findings, the Panel may assume that it does not have rights or legitimate interests in the <priceleblanc.com> domain name. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <priceleblanc.com> domain name under Policy ¶ 4(c). 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.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant alleges Respondent is not commonly known by the <priceleblanc.com> 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 information provides that the registrant of the disputed domain name is listed as “J. Luke Anthony.” Complainant states that it has not authorized or licensed Respondent to use its PRICE LEBLANC mark. Thus, the Panel finds that Respondent is not commonly known by the <priceleblanc.com> domain name under Policy ¶ 4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed <priceleblanc.com> domain name resolves to a website that Respondent uses to post information on automobile purchases, in competition with Complainant. The Panel presumes Respondent profits in some way from its use of the disputed domain name. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website offering services that compete with Complainant’s services 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 name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name disrupts Complainant’s similar automobile purchase information business. Internet users intending to find and use Complainant’s services may use the same services from a competitor as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the <priceleblanc.com> domain name disrupts Complainant’s 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)).
The Panel infers that Respondent commercially benefits from the automobile purchase information featured on the <priceleblanc.com> website. Internet users searching for Complainant become confused as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website, and featured automobile purchase information. The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <priceleblanc.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 26, 2010
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