AAC Enterprises LLC v. Chris Sillah / AAC / Williams, Chris
Claim Number: FA1011001360578
Complainant is AAC Enterprises LLC (“Complainant”), represented by Edward W. Trapolin of Irwin Fritchie Urquhart & Moore LLC, Louisiana, USA. Respondent is Chris Sillah / AAC / Williams, Chris (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <advanced-automotive-concepts.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
The domain names at issue are <automotive-light-store.com> and <aac-style.com>, registered with Netfirms, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2010; the National Arbitration Forum received payment on November 30, 2010.
On November 29, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <advanced-automotive-concepts.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 November 29, 2010, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <automotive-light- store.com> and <aac-style.com> domain names are registered with Netfirms, Inc. and that Respondent is the current registrant of the names. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 December 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@advanced-automotive-concepts.com, postmaster@automotive-light-store.com, and postmaster@aac-style.com. Also on December 3, 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 December 22, 2010.
On December 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <advanced-automotive-concepts.com> <automotive-light-store.com> and <aac-style.com> domain names are confusingly similar to Complainant’s ADVANCED AUTOMOTIVE CONCEPTS mark.
2. Respondent does not have any rights or legitimate interests in said domain names.
3. Respondent registered and used said domain names in bad faith.
B. Respondent denies Complainant’s assertions.
Complainant has established all required elements of the Policy, and the requested relief should be granted.
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."
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent Chris Williams is merely an alias for the true registrant of the domain names, Respondent Chris Sillah. Complainant provides evidence of common, intertwined, and overlapping email addresses, websites, physical addresses, and phone numbers for the two Respondents. Additionally, Complainant contends that Respondent Chris Sillah acknowledged that he registered three infringing domain names that utilized hyphens within in the context of Complainant’s domain names which correspond to the three domain names at issue in this case.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant does not indicate that it owns a federal trademark registration for its ADVANCED AUTOMOTIVE CONCEPTS mark which it uses in connection with its business of marketing and selling automotive parts, including but not limited to, custom lighting. The Panel finds that Complainant need not have a trademark registration with a federal trademark to establish rights in its mark pursuant to Policy ¶ 4(a)(i) so long as Complainant can prove that its mark has established sufficient secondary meaning to create common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant submits evidence of its registration of its ADVANCED AUTOMOTIVE CONCEPTS mark with the Secretary of State in the state of Louisiana (Book No. 60-1966 issued June 2, 2008). Complainant submits that its first use of its ADVANCED AUTOMOTIVE CONCEPTS mark was September 1, 2005. Additionally, Complainant asserts that it has three domain names that it uses in connection with its business: <advancedautomotiveconcepts.com> (registered on July 1, 2003), <automotivelightstore.com> (registered on July 18, 2007), and <aacstyle.com> (registered on September 6, 2005). The Panel finds that Complainant’s state trademark registration in Louisiana, along with its registration of its domain names used in connection with its business, establish common law rights in Complainant’s ADVANCED AUTOMOTIVE CONCEPTS mark since at least September 1, 2005. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP).
Complainant alleges that Respondent’s disputed domain names are confusingly similar to Complainant’s ADVANCED AUTOMOTIVE CONCEPTS mark. Complainant contends that Respondent’s <advanced-automotive-concepts.com> mark merely replaces the spaces between the terms of Complainant’s mark with hyphens and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations are insufficient to distinguish the disputed domain name from Complainant’s mark. See Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also 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.”).
The Panel finds that Respondent’s <automotive-light-store.com> domain name is confusingly similar to Complainant’s mark as it deletes two words from Complainant’s mark and then adds hyphens, the descriptive term “light,” and the generic term “store,” as well as the gTLD “.com.” See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel additionally finds that the <aac-style.com> domain name is confusingly similar to Complainant’s mark as it abbreviates Complainant’s ADVANCED AUTOMOTIVE CONCEPTS with the letters “aac,” adds a hyphen and the generic term “style,” along with the “.com” gTLD. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also 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.”).
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.”).
The WHOIS information for the disputed domain names identifies the registrant of the names as “Chris Sillah / AAC / Williams, Chris.” Although the WHOIS information may suggest that Respondent is commonly known by the disputed domain names, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names without any additional evidence beyond the WHOIS information. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant asserts that Respondent makes no bona fide use of the infringing disputed domain names. Complainant contends that there is no evidence that Respondent conducted any business including the sale or marketing of custom automotive lighting or automobile parts in any respect. Complainant alleges that Respondent registered the infringing domain names for the express purpose of causing confusion and disparaging Complainant’s business, trademark, and websites. The Panel finds that Respondent is using Complainant’s mark in the confusingly similar disputed domain names to operate a complaint site regarding Complainant’s business. This does not give Respondent rights or legitimate interests in the disputed domain name. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.).
Complainant states that Respondent agreed to transfer the disputed domain names to Complainant in exchange for free goods or money from Complainant. Complainant indicates that Respondent did in fact receive commercial merchandise from Complainant without Respondent having to pay, in exchange for Respondent’s promise to cease and desist and/or assign at least one of the infringing domain names to Complainant. The Panel finds that Respondent’s conduct amounts to an offer to sell the disputed domain names and is therefore evidence that Respondent lacks rights and legitimate interests in the disputed domain names. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
As established above, Complainant submits evidence that Respondent agreed to accept free commercial merchandise from Complainant in exchange for Respondent’s promise to discontinue its use of the disputed domain names or, in the alternative, to transfer the disputed domain names to Complainant. The Panel finds that this conduct on the part of Respondent amounts to an offer to sell the disputed domain name to Complainant and is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(i). See Lyon v. Casserly, FA 193891 (Nat. Arb. Forum Oct. 29, 2003) (finding that the domain name was acquired primarily for the purpose of transferring the domain name to the complainant for valuable consideration in excess of the respondent's out-of-pocket costs because the respondent made various requests for concert tickets, backstage passes, press passes and a website development contract); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant contends that Respondent indicated to Complainant that Respondent had the wherewithal and knowledge to redirect Internet traffic away, and in turn sales, away from Complainant’s websites and business. The Panel finds that Respondent’s conduct thus constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The Panel declines to adopt a narrow interpretation of the term ‘competing,’ as urged by Respondent . . . The Panel agrees with Complainant that at least some confusion and/or diversion of consumers is likely here, even though Complainant's and Respondent's tablets address different medical issues.”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain names to host a complaint site about Complainant’s business is additional evidence that Respondent demonstrated bad faith under Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the respondent's use of the complainant's mark to redirect Internet users to a website dedicated to criticizing the complainant was evidence that the respondent’s domain names were registered and used in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanced-automotive-concepts.com>, <automotive-light-store.com>, and <aac-style.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 6, 2010
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