Austin Chevrolet, Inc. d/b/a Munday Chevrolet v. Manuel Suarez / Suarez Group
Claim Number: FA1104001384901
Complainant is Austin Chevrolet, Inc. d/b/a Munday Chevrolet (“Complainant”), represented by Jami J. Farris of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Manuel Suarez / Suarez Group (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mundaychevrolet.com>, registered with MONIKER ONLINE SERVICES, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2011; the National Arbitration Forum received payment on April 20, 2011.
On April 21, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <mundaychevrolet.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 April 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@mundaychevrolet.com. Also on April 25, 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 on May 5, 2011.
Complainant’s Additional Submission was received on May 9, 2011.
Respondent’s Additional Submission was received on May 10, 2011.
On May 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it has operated a Chevrolet motor vehicle dealership under the name “Munday Chevrolet” since 1995 in Houston, Texas. Since that date, the Complainant has continuously used this trade name, including in advertisements, on business cards, and on the web site <munday-chevrolet.com>. Thus the Complainant has acquired common law trademark rights in the name MUNDAY CHEVROLET.
According to the Complainant, the disputed domain name is identical to its common law trademark.
The Complainant states that the Respondent is using the disputed domain name in order to collect information on customers: there is a “contact us” link which leads to a “VIP sign up” page that asks users to input their contact information, including name, email address, telephone number, and mailing address.
The Complainant alleges that the Respondent registered the disputed domain name in 1997 and that he has no rights or legitimate interests in it. The Complainant has not licensed or otherwise authorized the Respondent to use the “Munday Chevrolet” mark or any variation thereof. The Respondent registered the name for the sole purpose of capitalizing on the Complainant’s trade name for his commercial benefit.
According to the Complainant, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, nor has he made a valid noncommercial or fair use of it. The disputed domain name links to the website <HoustonParties.com>, which contains links to motor vehicle-related websites, which are search engines. Further, the web site at the disputed domain name displays a link entitled “Dealer Select” that connects to search engines listing web sites selling cars in competition with the Complainant, and it also links to sites offering broker services for vehicle purchases from numerous dealerships.
The Complainant alleges that the Respondent’s registration and use of the disputed domain name is in bad faith because it disrupts the Complainant’s business by connecting Internet users seeking the Complainant’s dealership to third-party services that directly compete with the Complainant. Further, the Respondent is obtaining a commercial gain from click-through advertising fees: this constitutes bad faith registration and use under ¶ 4(b)(iv) of the Policy.
B. Respondent
The Respondent alleges that he was approached in 1997 by an employee of the Complainant in order to build a software solution for selling automobiles on the Internet. The Respondent duly supplied the disputed domain name, various software products, training, and a complete web site. The Respondent’s software engineers travelled to the Complainant’s business premises in order to take photographs that were used in the web site.
Unfortunately, says the Respondent, his contact person at the Complainant died suddenly and the Complainant subsequently refused to pay for the work performed by the Respondent. Court cases filed against the Respondent were dismissed.
The Respondent states that MUNDAY CHEVROLET is not a registered trademark and that the Complainant does not have exclusive rights to that name, since others around the world use it.
C. Additional Submissions
Complainant
In it Additional Submission, the Complainant reiterates that it has common law trademark rights in the name MUNDAY CHEVROLET and that the Respondent has not demonstrated that he uses the disputed domain name in connection with a bona fide offering of goods or services, or that he otherwise has rights or a legitimate interest in the disputed domain name.
The Complainant states that the Respondent has not denied using the disputed domain name misleadingly and deceptively to divert Internet users to his web sites for commercial gain.
According to the Complainant, the Respondent’s sole basis for continued possession of the domain name is a false claim that he obtained the domain on behalf of the Complainant. The Complainant denies all of the Respondent’s allegations regarding provision of services on behalf of the Complainant, and it provides sworn affidavits to support its denial.
Further, says the Complainant, the Respondent has historically used the disputed domain name to point to web sites featuring, at different times, various competitors of the Complainant, an advertisement to sell the domain name for US $15,000, and adult-oriented content. The Complainant provides printouts from the WayBackMachine (<www.archive.org>) to support these allegations.
Regarding the lawsuits, the Complainant states that it filed a lawsuit in Florida in 2006, but that the case was dismissed without prejudice for lack of personal jurisdiction over the registrant of the domain name.
Respondent
It his Additional Submission, the Respondent submits the 1997 web site that he alleges to have developed and for which he says he was never paid. He reiterates that he was in fact asked to develop that web site by an employee of the Complainant. He states that he has evidence to this effect, but does not produce that evidence.
The Complainant has common law trademarks rights in the name MUNDAY CHEVROLET. Those rights date back to 1995.
The Respondent registered the disputed domain name in 1997.
The disputed domain name is identical to the Complainant’s trademark.
The Respondent has used the disputed domain name to point to web sites which have varied over time, including web sites that contain sponsored advertising links to direct competitors of the Complainant, an advertisement to sell the disputed domain name for US $15,000, and adult-oriented content.
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.
The Complainant has provided ample evidence of its use in commerce of the name MUNDAY CHEVROLET since 1995. Consequently, the Panel finds that the Complainant has established rights in its mark under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The Panel finds that the disputed domain name, which contains the Complainant’s entire mark while removing the space between the terms and adding the generic top-level domain (“gTLD”) “.com” is identical to the mark under Policy ¶ 4(a)(i). 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 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).
The Complainant submits evidence showing that the disputed domain name resolves to a web site which displays information and various third-party links to unrelated web sites, as well as numerous links to competing automobile dealerships. Such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i) or under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Respondent does not dispute this, but states that an employee of the Complainant requested that he develop a web site, which he did. The Respondent states that he acquired the disputed domain name as part of that web site development project, and he states that he was never paid for the project. He thus argues, implicitly, that he has rights to the disputed domain name because of the non-payment of fees owed to him.
But it is well-established that commercial disputes should be resolved by appropriate legal actions, not by “self-enforcement”.
Consequently, the Panel agrees with the conclusions of a previous UDRP panel in a similar case, Ecoyoga Ltd v. siteleader.com, Siteleader Hosting, D2009‑1327 (WIPO Dec. 11, 2009) (finding that “non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent.”); see also UVA Solar GmbH & Co K.G. .v. Mads Kragh, D2001-0373 (WIPO May 7, 2001) ( finding that if there is a dispute between the parties as to sums which one may owe to the other, this is a matter to be resolved in another forum).
Since the Respondent provides no other justification for his registration and use of the disputed domain name, and since he does not provide any evidence to support his allegation that an employee of the Complainant requested that he develop a web site for the Complainant, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant provides evidence showing that the Respondent is using the disputed domain name to divert Internet users to competing automobile dealerships. Consequently, the Panel finds that the Respondent’s use of the disputed domain name is evidence of 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 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).
Further, the Complainant provides evidence showing that the Respondent is deriving revenue from click-through advertising links. This is also evidence of bad faith registration and use of the disputed domain name. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Further evidence of bad faith registration and use is provided by the fact that the Respondent has attempted to sell the disputed domain name for US $15,000 and that he has used the disputed domain name to offer adult-oriented content. Both actions establish bad faith in the sense of the Policy, see Motorola, Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO April 14, 2000); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
The Panel finds that the Respondent registered and used the disputed domain name in bad faith in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mundaychevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 17, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page