Aftermarket Auto Parts Alliance. lnc. v. Garry Chernoff / NetIncome Ventures Inc
Claim Number: FA1106001396437
Complainant is Aftermarket Auto Parts Alliance. lnc. (“Complainant”), represented by Harry B. Ray of Harry B. Ray & Associates, PLLC, Tennessee, USA. Respondent is Garry Chernoff / NetIncome Ventures Inc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bumpertobumper.com>, registered with Moniker.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2011; the National Arbitration Forum received payment on June 29, 2011.
On July 1, 2011, Moniker confirmed by e-mail to the National Arbitration Forum that the <bumpertobumper.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 July 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@bumpertobumper.com. Also on July 6, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <bumpertobumper.com> domain name is identical to Complainant’s BUMPER TO BUMPER mark.
2. Respondent does not have any rights or legitimate interests in the <bumpertobumper.com> domain name.
3. Respondent registered and used the <bumpertobumper.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aftermarket Auto Parts Alliance. lnc., owns the BUMPER TO BUMPER mark, which it has used in commerce since 1973 in connection with its retail auto part store services. Complainant holds a number of trademark registrations for its BUMPER TO BUMPER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,247,288 registered August 2, 1983).
Respondent, Garry Chernoff / NetIncome Ventures Inc, registered the <bumpertobumper.com> domain name on August 10, 2008. The disputed domain name resolves to a directory website featuring both related and unrelated links to Complainant’s auto parts business. Respondent attempted to sell the <bumpertobumper.com> domain name to Corey Bartlett for $50,000 through an e-mail correspondence. Mr. Bartlett is an employee of one of Complainant’s licensees.
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 argues that it has demonstrated its rights in the BUMPER TO BUMPER mark. A complainant may demonstrate its rights in a mark through trademark registration with a national authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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). Past panels have determined that a complainant is not required to register its mark in the same country where respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also 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). Here, Complainant holds a number of trademark registrations with the USPTO (e.g., Reg. No. 1,247,288 registered August 2, 1983). The Panel holds that Complainant has established rights in the BUMPER TO BUMPER mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <bumpertobumper.com> domain name is identical to its BUMPER TO BUMPER mark. The disputed domain name incorporates the mark in its entirety and only changes it by deleting spaces between the words of the mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting spaces does not avoid a finding that the domain name is identical to Complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). Additionally, the Panel finds that the affixation of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel concludes that Respondent’s <bumpertobumper.com> domain name is identical to Complainant’s BUMPER TO BUMPER mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel found that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). Complainant has made a prima facie case, shifting the burden to Respondent. Due to Respondent’s failure to submit a Response to the Complaint, the Panel is free to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel elects to first examine the evidence to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent has not been commonly known by the <bumpertobumper.com> domain name. The WHOIS information identifies the domain name registrant as “Garry Chernoff / NetIncome Ventures Inc,” which is not similar to the disputed domain name. Moreover, Complainant asserts that Respondent has not been licensed to use Complainant’s BUMPER TO BUMPER mark. In light of these findings, the Panel holds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See 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); see also 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).
The disputed domain name resolves to a directory website featuring competing auto parts links and noncompeting third-party links. Respondent likely generates click-through fees from these links. The Panel finds that Respondent’s disputed domain name redirects Internet users to various third-party links and is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant claims that Respondent attempted to sell the <bumpertobumper.com> domain name to Corey Bartlett for $50,000 via e-mail correspondence. Mr. Bartlett is an employee of one of Complainant’s licensees. The Panel finds that Respondent’s offer to sell the disputed domain name far in excess of its out-of-pockets costs incurred is evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant alleges that Respondent registered the <bumpertobumper.com> domain name for the primary purpose of selling it. Complainant claims that Respondent offered to sell the disputed domain name to Mr. Bartlett, an employee of Complainant’s licensee, for $50,000. The Panel concludes that Respondent’s eagerness in selling the disputed domain name indicates bad faith under Policy ¶ 4(b)(i). See 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 Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant contends that Respondent registered and is using the disputed domain name to divert Complainant’s potential customers to various websites, some directly competing with Complainant’s business. Internet users intending to purchase Complainant’s auto parts products and services may purchase similar products from a competitor as a result of Respondent’s directory website. The Panel finds that Respondent’s registration and use of the <bumpertobumper.com> domain name does disrupt Complainant’s business in the auto parts industry and constitutes bad faith pursuant to 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel presumes that Respondent collects click-through fees from the aforementioned links on the resolving website. Complainant claims that Respondent registered and is using the disputed domain name, identical to Complainant’s BUMPER TO BUMPER mark, in order to create a likelihood of confusion as to Complainant’s affiliation with the website and featured third-party links. Respondent profits from this confusion through the receipt of click-through fees. The Panel concludes that Respondent’s directory website is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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).
The Panel finds that Policy ¶ 4(a)(iii) has 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 <bumpertobumper.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 29, 2011
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