Jim Hudson and Jim Hudson Cars of Lexington SC, LLC v. Don Cook
Claim Number: FA1103001377844
Complainant is Jim Hudson and Jim Hudson Cars of Lexington SC, LLC (“Complainant”), represented by Timothy E. Moses, Georgia, USA. Respondent is Don Cook (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jimhudsonford.com> and <jimhudsonford.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 14, 2011; the National Arbitration Forum received payment March 14, 2011.
On March 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jimhudsonford.com> and <jimhudsonford.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2011, 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@jimhudsonford.com and postmaster@jimhudsonford.net. Also on March 16, 2011, 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 April 4, 2011.
Neither party filed additional submissions.
On April 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states: “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Jim Hudson and Jim Hudson Cars of Lexington, SC, LLC. Complainant Jim Hudson claims to own Complainant Jim Hudson Cars of Lexington SC, LLC.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Here, this Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will treat them as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent registered two domain names using Complainant’s personal name along with the word, Ford, an automobile with which Complainant has been associated for many years.
2. Respondent, a former of employee of the Company purchased by Complainant in the state of South Carolina, registered the domain names without rights to or legitimate interests in Complainant’s name or mark associated with his Ford business.
3. Respondent, registered the domain names in order to offer them for sale and for that reason, among others, Respondent registered the domain names in bad faith.
B. Respondent made the following points in response:
1. Respondent did not specifically address the required elements in the case, except as noted below.
2. Respondent responded to Complainant’s factual allegations, setting out the following particulars: (a) he did not visit during the negotiations for Complainant’s purchase of the business of Respondent’s former employer, (b) he did not contact Complainant to sell the domain names, (c) Complainant contacted him ten (10) days after he registered the domain names and offered to buy the domain names; (d) he intended to make a legitimate, non-commercial and fair use of the domain names “without intent for any commercial gain or to mislead or divert consumers,” (e) he has not asked Complainant for any specific amount or money, and (f) no evidence of his bad faith has been shown.
3. Respondent asks the Panel to rule that he keep the domain names.
Complainant established that it has common law rights in its own personal name and business.
Respondent did not establish rights to use either of Complainants’ names.
Respondent registered the names with timing and circumstances that suggest he knew of Complainant’s rights in the mark.
Respondent registered the domain names in bad faith.
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 Complainant to 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 to 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 does not submit any evidence of any federally held trademark registrations for its JIM HUDSON mark. Complainant is not required to register its mark with a trademark authority in order to establish rights in the mark for purposes of the Policy as long as Complainant can establish common law rights through proof of sufficient secondary meaning associated with 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 asserts that it is an automobile dealership and owner with eight dealerships throughout South Carolina and Georgia. Complainant asserts that it has used its JIM HUDSON mark in connection with these automobile dealerships since 1980. Complainant states that it has advertised the JIM HUDSON mark through various marketing channels, including newspapers, magazines, billboards, radio, and television. Additionally, Complainant indicates that it uses the JIM HUDSON mark on numerous Internet websites, including <jimhudsontoyota.com>, <jimhudsonsuperstore.com>, <jimhudsonlexus.com>, <jimhudsonhyundai.com>, <jimhudsonautos.com>, <jimhudsongm.com>, <jimhudsonscion.com>, and <jimhudsonsaab.com>.
The Panel finds that Complainant’s use of the JIM HUDSON mark has given the mark the requisite acquired secondary meaning so as to establish common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
Respondent’s addition of the descriptive term “ford,” which relates to Complainant’s automobile dealerships, renders the disputed domain names confusingly similar to Complainant’s JIM HUDSON mark under Policy ¶ 4(a)(i). See 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.”). Removal of the space between the terms and addition of the generic top-level domain “.com” or “.net” are irrelevant when making a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent made no contentions relative to Policy ¶ 4(a)(i).
Therefore, the Panel finds that Respondent’s <jimhudsonford.com> and <jimhudsonford.net> domain names are confusingly similar to Complainant’s JIM HUDSON mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under the Policy ¶ 4(a)(ii) analysis. Once Complainant does so, the burden of proof shifts to Respondent to show that it does have such rights to or legitimate interests in the disputed domain names. 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.”).
Although Complainant did not urge the matter, the record on its face permits the Panel to find that Respondent is not commonly known by the disputed domain names. The WHOIS information lists the registrant as “Don Cook,” which the Panel finds is not similar to the <jimhudsonford.com> and <jimhudsonford.net> domain names and Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant submits screenshot evidence showing the websites resolving from Respondent’s <jimhudsonford.com> and <jimhudsonford.net> domain names. The screenshots show that the resolving websites are parked with GoDaddy.com and feature sponsored links to third-party websites offering car sales and leasing information, in competition with Complainant. The Panel is permitted to presume that Respondent benefits financially in some way from the links displayed on the resolving websites. The Panel further finds that Respondent’s stated “intent to use” does not constitute 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) such as would establish some acceptable use that would confer rights under the Policy in the domain names. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant asserts that Respondent obtained the disputed domain names in order to sell them to Complainant. Complainant submits evidence of an email exchange between the parties in which Respondent offers to transfer the disputed domain names to Complainant in exchange for $2,000.00. Complainant also submits screenshots of the resolving websites that contain the following statement: “This domain is for sale! If you wish to make an offer, please contact cookiejr12340@yahoo.com.” Respondent denies any offer to sell for a specific amount; however, the credible evidence supports Complainant’s position. The Panel finds that Respondent’s willingness to sell the disputed domain names indicates that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also 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).
Respondent did not specifically address this section of the burden, but for Respondent’s argument that since he had worked for Ben Satcher Ford, the company Complainant ultimately purchased, for a combined 8 years and since he had “forged” many friendships with current and past employees of that dealership, that he, Respondent, has much basis to use the disputed domain names to give current and former employees a forum for discussion on how many of them were unceremoniously fired by their new employer for no apparent reason after, in some cases, 20-30 or more years of dedicated service. Further, Respondent indicated that he intended to put a disclaimer on the resolving websites that would deny an affiliation with Complainant’s JIM HUDSON Ford dealership in any way. The Panel disagrees. These statements by Respondent do not establish rights nor do they show demonstrable preparations to use the website in connection with a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii).
Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the <jimhudsonford.com> and <jimhudsonford.net> domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent registered and held and used he disputed domain names in bad faith. Complainant submitted evidence, by way of screenshots of the resolving websites and copies of an email exchange between the parties, indicating that Respondent offered the disputed domain names for sale. The Panel finds that either Respondent’s general offer to sell the disputed domain names to the general public via its statement on the resolving websites or Respondent’s specific offer to sell the disputed domain names to Complainant constitutes evidence to support findings that Respondent registered and held the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Although Complainant does not urge it, the Panel also finds that Respondent’s registration and use of the disputed domain name to host a parked website with links to third-party websites offering automobile sales and leasing services in direct competition with Complainant is conduct that constitutes a disruption of Complainant’s business and also supports findings of registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).
Complainant also contends that Respondent is attempting to profit from registering and using domain names that contain Complainant’s JIM HUDSON mark. The Panel finds that Respondent’s registration and use of the disputed domain to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s resolving websites by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and resolving websites is evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).
Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends that prior to Respondent’s registration of the disputed domain names, Complainant entered into negotiations to purchase the Ben Satcher Ford dealership in Lexington, South Carolina Complainant argues that prior to those negotiations, Respondent was employed as a New Car manager at Ben Satcher Ford. Complainant contends that during the time it was negotiating to purchase the Ford dealership, Respondent repeatedly came to the dealership to visit with other employees. Complainant alleges that Respondent had heard there might be a Hudson-Satcher deal prior to registering the domain names. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds here that Respondent had actual knowledge of Complainant's mark and registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel also finds that Respondent has demonstrated opportunistic bad faith. Complainant contends that Respondent was aware of negotiations between Complainant and Ben Satcher Ford regarding Complainant’s potential purchase of the Ford dealership. Complainant states that Respondent’s status as a former employee of Ben Satcher Ford and his many visits to the Ben Satcher Ford dealership during the time of the negotiations gave Respondent insight into Complainant’s potential purchase of the Ford dealership. Complainant argues that while negotiations were ongoing, Respondent registered the disputed domain names, on December 17, 2010, speculating that Complainant would purchase the dealership. Complainant indicates that the purchase and sale of the Ford dealership then occurred January 18, 2011. The Panel finds that despite Respondent’s protests as to the number of times he may have been around at the time of the ongoing negotiations, the fact that these two domain names both use the personal name of another person along with a business name designation, Ford, the timing of the registrations and the subsequent sale of his former employers, suggest circumstances that support Complainant’s contention that Respondent’s conduct supports findings of opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Respondent does allege that to this date, he never initiated any contact with the “Hudsons” for any money for the disputed domain names. Instead, Respondent indicates that Complainant contacted Respondent several times either personally or through Respondent’s legal counsel and made several unsolicited offers to Respondent for the domain names ranging from $100 to $500, none of which Respondent accepted or countered. Respondent contends that the $2,000.00 offer was not made by Respondent nor did Respondent ever authorize anyone to make any such offer on its behalf. Respondent states that if he had bad faith intentions, he would merely have accepted Complainant’s offers and moved on. The Panel finds these statements by Respondent to be different from the documentary proof; the fact that his offers were not made to the “Hudsons” is irrelevant.
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jimhudsonford.com>, <jimhudsonford.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 20, 2011.
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