Nissan North America, Inc. v. Peter Kraft
Claim Number: FA1203001433586
Complainant is Nissan North America, Inc. (“Complainant”), represented by Micol Cecchi of Nissan North America, Inc, Tennessee, USA. Respondent is Peter Kraft of Tallahassee, Florida. (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <infinitioftallahassee.com> and <tallahasseeinfiniti.com>, registered with Network Solutions, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2012; the National Arbitration Forum received payment on March 8, 2012.
On March 8, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <infinitioftallahassee.com> and <tallahasseeinfiniti.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 March 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2012 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@infinitioftallahassee.com and postmaster@tallahasseeinfiniti.com. Also on March 9, 2012, 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 April 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Nissan North America, Inc. is the exclusive distributor of INFINITI vehicles, parts and accessories, and the sole licensee of the INFINITI trademark in the United States. Over the past 50 years, Nissan has emerged as a leading car company in the United States and the world. Nissan is now one of the largest and most well-known automakers in the world. In the U.S., Nissan has continuously used the INFINITI trademark for over 20 years. Since 1989, Nissan has sold over 1.7 million new Infiniti vehicles that prominently displayed the INFINITI mark. Nissan North America currently has 196 Infiniti dealerships strategically located throughout the United States.
Every year, Nissan spends millions of dollars in advertising and promoting the INFINITI trademarks through a variety of media, including television, radio, magazines, newspapers, billboards, by direct marketing, at auto shows, and via the internet. Complainant advertises on the internet in the United States through its official web site <infinitiusa.com>. Importantly, over 75% of all people shopping for Infiniti motor vehicles use the internet in some part of their product search or their buying process.
As a result of Nissan’s extensive and high-profile promotion of the INFINITI trademark, the Trademark has become instantly recognizable throughout the United States and elsewhere as symbol of high-quality automobiles and related services. Nissan has thus established substantial goodwill in the Trademark, and consumers throughout the United States and elsewhere associate the Trademark with luxury automobiles made by Nissan and with related products and services.
On June 2, 2011, Respondent registered the Domain Names while preparing a bid to submit to Nissan to become the authorized Infiniti dealer in Tallahassee, Florida. Including Respondent, a total of four applicants submitted bids on Friday, June 3, 2011. Respondent did not win the bid, and another bidder was selected to be the authorized Infiniti dealer in the Tallahassee area.
Complainant allows Infiniti dealers to use the INFINITI name in domain names, subject to dealer agreements and website compliance guidelines, which include the requirement that the dealer name appear in the domain name. In fact, Infiniti’s preferred (and most common) naming structure for Infiniti dealers is “Infiniti of (city name).” 1 This is very common in the automotive industry. In this case, the new dealer’s territory is Tallahassee. Consequently, the authorized Infiniti dealer’s dba is “Infiniti of Tallahassee.”
On July 2, 2011, the new authorized Infiniti of Tallahassee dealer contacted Respondent to purchase from Respondent the Domain Names that he had prematurely acquired, but Respondent replied that it would sell the domain names for $50,000. On August 19, 2011, Complainant sent a cease and desist letter to Respondent by mail. Respondent’s counsel replied on September 6, 2011. On October 3, 2011, Complainant wrote a second letter in reply to Respondent’s counsel’s letter. Complainant received no reply to its second letter. The new Infiniti dealer in Tallahassee called Respondent three more times (on November 2, 2011, November 6, 2011, and December 2, 2011) and left voice messages to attempt to purchase the Domain Names at a reasonable price, but Respondent never returned the dealer’s calls.
1 Examples of names used by current dealers are: Infiniti of Cool Springs; Infiniti of Englewood; Santa Monica Infiniti; Infiniti of Clarendon Hills; Infiniti of Ann Arbor; Infiniti of Gwinnett; Clear Lake Infiniti; Infiniti of Denver; Infiniti of Kirkland; Infiniti of Ft. Myers; Lauderdale Infiniti; Infiniti of Tampa; Orlando Infiniti; Infiniti of Melbourne; Infiniti of Hilton Head; Infiniti of Charlotte; Infiniti of Memphis; Infiniti of Mobile; Infiniti of Cincinnati; Infiniti of Columbus
To date, the Domain Names resolve to websites that list a series of links to various third party websites, including links to competitors of Complainant.
In accordance to Paragraph 4(a) of the Policy, Complainant shall prevail in this administrative proceeding upon a showing that:
(a) The disputed Domain Names are identical or confusingly similar to a trademarks or service mark in which the Complainant has rights; and
(b) Respondent has no rights or legitimate interests in respect of the Domain Names;
and
(c) The disputed Domain Names were registered and are being used in bad faith.
[a.] The Domain Names are confusingly similar to trademarks in which the
Complainant has rights.
Registration with the USPTO constitutes sufficient evidence of an entity’s rights in a mark under ICANN Policy ¶4(a)(i). See Toyota Motor Sales U.S.A. Inc. v. The Car Openers Inc., FA 233077 (Nat. Arb. Forum Dec. 31, 2008)(Complainant’s LEXUS registrations with the USPTO held to constitute sufficient evidence of Complainant’s rights in the mark under Policy
¶4(a)(i)). See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”).
When a party without rights to a trademark incorporates that trademark in its entirety into a domain name, that is sufficient to establish that the domain name is identical or confusingly similar to a complainant’s registered mark. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (Nov. 4, 2001)(“the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark>”); see also Berlitz Investment Corporation v. Katelin Adkins, WIPO Case No. D2007-0008 (March 13, 2007).
Further, the Domain Names consist of the INFINITI trademark plus the geographical indicator “Tallahassee” and “of Tallahassee.” It is well-established that domain names that consist of a trademark plus a geographical location are confusingly similar to the trademark at issue. See, e.g., Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 (Feb. 19, 2001) (“The addition of the name of a place to a trade mark, such as the addition of the word "Canada" to "ROLLSROYCE", is a common method for specifying the location of business services provided under the trade mark. The addition of the geographical location to a trade mark does not prevent the domain name from being confusingly similar to the trade mark.”); Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 (Oct. 9, 2003)(“The domain name registered by the Respondent <volvopolska.com> is identical to and confusingly similar to the Complainant’s registered trademark "VOLVO," to which a generic top-level domain name ".com" and a geographically descriptive term for services, "polska" (which means Poland in Polish) have been added. It has previously been held in very many other proceedings before WIPO Panelists that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusing similar to the trademark.”), and Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, WIPO Case No. D2008-1053 (Sep. 3, 2008) (in a case involving the domain names <auditulsa.com> and <tulsaaudi.com>, the panel noted: “The addition of such a descriptive term is not sufficient to avoid a finding of confusing similarity, particularly in view of evidence that AUDI dealerships incorporate the name of the city in which it is located in its name.”); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (March 28, 2001)(“Administrative panels and arbitrators considering similar cases where registrants simply added a geographical name to a registered trademark have found such domain names to be confusingly similar.)”; Toyota Motor Sales, U.S.A., Inc. v. Abraham Dones, FA 874857 (Nat. Arb. Forum Feb. 20, 2007)(“The disputed domain name that Respondent registered, <toyotaofclermont.com>, contains Complainant’s TOYOTA mark in its entirety and adds the geographical designation “of Clermont” as well as the generic top-level domain “.com.” The addition of a geographical designation does not avoid a finding of confusing similarity under Policy ¶4(a)(i), and the addition of the generic top-level domain “.com” is without significance to this analysis. Therefore, the Panel finds that the disputed domain name, <toyotaofclermont.com>, is confusingly similar to Complainant’s TOYOTA mark pursuant to Policy ¶4(a)(i).”).
Finally, as also indicated in Toyota v. Dones, FA 874857, above, the addition of the top level domain <.com> does not add any distinctiveness to the domain names and is irrelevant in the evaluation of whether a domain name is identical or confusingly similar to a trademark. See also Nevada State Bank v. Modern Ltd.-Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003)(“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
In this case, the misleading nature of the Domain Names in question make the Panel’s decision an easy one. Complainant has used the INFINITI trademark for over 20 years. The Trademark has been long registered with the USPTO, and such registrations are valid and incontestable. Accordingly, Complainant has rights to the INFINITI trademark.
The disputed Domain Names are confusingly similar to Complainant’s well-known INFINITI trademark because Respondent’s Domain Names incorporate the INFINITI trademark in its entirety and add the geographical location “Tallahassee.” Indeed, in this circumstance, the Domain Names are identical (in the case of <infinitioftallahassee.com>) and confusingly similar (in the case of <tallahasseeinfiniti.com) to the name of the Infiniti dealer authorized and licensed by Nissan to exercise its business in Tallahassee.
[b.] Respondent has no rights or legitimate interests in respect of the Domain
Names that are the subject of the complaint.
Respondent has no rights or legitimate interests to the Domain Names that are the subject of this Complaint. In making its decision, the Panel may consider any relevant information, including but not limited to ICANN Policy ¶4(c), which seeks to determine:
(i) [w]hether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services;
(ii) [w]hether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or
(iii) [w]hether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, each of these factors requires a decision in favor of Complainant.
First of all, under United States trademark law, a valid and subsisting trademark registration “shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate…” 15 U.S.C. §1057(b) (emphasis added). Complainant has prior and exclusive rights in the Trademark, having first begun use of the Trademark in the United States, and having registered the Trademark with the USPTO, long before Respondent’s initial registration of the disputed Domain Names with the Registrar on June 2, 2011.
Second, Respondent has never been commonly known as “INFINITI” or by the Domain Names. Respondent was never licensed or otherwise permitted or authorized by Nissan in any way to use the INFINITI trademark in his Domain Names, on his websites or in any other manner. The WhoIs information identifies the Registrant of the Domain Names as Peter Kraft, which indicates that neither Respondent nor his business is commonly known by the Domain Names. See Central Valley Automotive d/b/a Central Valley Hyundai v. Chris Shaffer, FA327840 (Nat. Arb. Forum July 22, 2010)(“The Panel finds that the WHOIS information for the disputed domain name identifies “Chris Shaffer” as the registrant of the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding no rights or legitimate interests where respondent was not commonly known by the mark and did not have a license or permission from the complainant to use the trademarked name).
Respondent is co-owner of Kraft Nissan, a Nissan dealership in Tallahassee. Having a Nissan dealership, however, does not authorize Respondent to use the INFINITI brand. The license provided to Nissan dealers does not confer any rights to Complainant’s other brands, including the INFINITI brand. Rather, Respondent has intentionally registered the disputed Domain Names with full knowledge of Complainant’s rights, in the hope of becoming an Infiniti dealer. However, at the time he registered the Domain Names (on June 2, 2011), Respondent had been granted no rights to use the INFINITI brand and therefore it had no rights to register the Domain Names.
Also, Respondent’s use of the Domain Names or of names corresponding to the Domain Names is not in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the Domain Names. The Domain Names resolve to websites that display links for automotive businesses as well as unrelated services. Panels have consistently held that such use is not 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). See Toyota of Des Moines v. Domain Administrator, FA 1244539 (Nat. Arb. Forum March 24, 2009); Toyota Motor Sales, U.S.A., Inc. v. Abraham Dones, FA 874857 (Nat. Arb. Forum Feb. 20, 2007).
In conclusion, Respondent has no right or legitimate interest in the Domains Names. Indeed, these Domain Names now correspond to the name of the authorized Infiniti dealer in Tallahassee, and any use by Respondent would mislead the public into believing that the corresponding websites are owned by the authorized Infiniti dealer or that Respondent is affiliated to Complainant or to the authorized dealer.
[c.] The Domain Names were registered and are used in bad faith.
Respondent registered the Domain Names in bad faith, because, at the time of registration, the INFINITI trademark was well-known, and Respondent had actual knowledge of Complainant’s trademark rights: Respondent owned an authorized Nissan dealership and was, in fact, attempting to purchase an Infiniti dealership. Actual or constructive knowledge of a party’s trademark rights is a factor establishing bad faith. Playboy Enters. Int’l, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675 Aug. 3, 2006) (“… Respondent’s registration of a Domain Name incorporating a very famous mark of which she was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith.”).
Respondent decided to register the Domain Names prior to submitting to Complainant the bid for the Infiniti dealership in Tallahassee, with the intent of preventing any other party from registering the Domain Names. At the time of registering the Domain Names, Respondent knew that the name of the new Infiniti dealer would be in the form of either Domain Name, as it is preferred naming structure to use the brand name and the geographical location of the dealer’s territory.2 However, since, at the time of registration, Respondent had no license to use the INFINITI trademark; had not been awarded an Infiniti dealership in Tallahassee; and had no reason to believe that it might be the winner of the bid, Registrant had no authority to register the Domain Names.
Furthermore, it has been consistently found that, when a domain resolves to a website that displays links to other websites, including competitors’ websites, such use of the domain is evidence of bad faith registration. See, e.g., Toyota of Des Moines v. Domain Administrator, FA 1244539 (Nat. Arb. Forum March 24, 2009); Toyota Motor Sales, U.S.A., Inc. v. Abraham Dones, FA 874857 (Nat. Arb. Forum Feb. 20, 2007)(“Respondent has caused the disputed domain name that contains in its entirety Complainant’s protected mark to display a list of links that lead Internet users seeking Complainant to websites of Complainant’s competitors. This is likely to disrupt Complainant’s business by diverting business away from Complainant.
2 Please refer to footnote no. 1 and related discussion.
Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Finally, Respondent registered not one, but two domain names, which is further evidence of bad faith registration. See, e.g., American Honda Motor Co., Inc. v. Michell Huddleston, WIPO Case No. D2011-0076 (Apr. 1, 2011) (“…the fact that Respondent registered two domains that are confusingly similar to a trademark in which Complainant has rights [in this case, <hondaofgainesville.com> and <hondaofgainesville.net>] adds to the evidence of bad faith.”).
After the bid was concluded and Respondent was told that he had not won, Respondent did not relinquish the Domain Names. Instead, when asked by the new dealer to sell it the Domain Names, Respondent demanded $50,000. Respondent’s excuse to sell at a price way beyond out-of-pocket costs was that it had incurred due diligence costs and expenses in association with its bid. However, the purchase of the Domain Names was but a minuscule fraction of that amount, and the costs related to the bid are irrelevant, because UDRP Policy ¶4(b)(i) clearly refers to “documented out-of-pocket costs directly related to the domain name”.
In The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd, WIPO Case No. D2009-0998 (Sep. 11, 2009), the respondent was found to have offered to sell the domain for an excessive amount when it tried to include costs such as attorneys’ fees associated with registering related companies, attorneys’ fees for trademark work, and auditors, for a grant total of $45,000. The Panel noted: “When the items set out in the computation of the claim are examined, they go far beyond the registration and maintenance of the Domain Name and include a variety of other costs incurred.” See also EMI Records Limited v. Complete Axxxcess, WIPO Case No. D2001-1230 (Dec. 18, 2001) (“The consideration by the Respondent was obviously more than any out-of-pocket costs that the Respondent might have incurred directly related to the domain name in dispute.” (Emphasis added)). In CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 (June 2, 2000), the Panel found that the respondent’s offer to sell the domain name for a “minimum total” of $114,000, which included his “loss of opportunity to use the disputed domain name” in his venture, was in excess of his out of pocket costs, and that, “[u]nder the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that, the domain name has been registered and is being used in bad faith.” (Emphasis added).
In Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (March 28, 2001), the panel found that the respondent had worked at several of complainant’s dealerships and had actual knowledge of the LEXUS trademark and its strength at the time it registered the domains. The panel stated:
The significant goodwill and value of the mark LEXUS is understood by Respondent. Given the fame of the mark LEXUS, it is clear that Respondent registered the Domain Names with full knowledge of Complainant’s rights in the trademark and service mark LEXUS . . . [] Respondent’s conduct prevents Complainant and its authorized dealers from promoting its own products and services and prevents Complainant from using these domain names. [] The result is that Internet traffic intended for Complainant or its authorized dealers can be diverted to Respondent. Respondent’s use of the Domain Names creates a likelihood of confusion with Complainant’s marks. Since Respondent is not licensed to use the mark LEXUS in this manner, Complainant is harmed because Toyota’s valuable trademarks and reputation are being placed into the hands of Respondent over which Complainant has no control. The public is harmed because it is likely to be confused as to the source of the goods and services that may be offered at sites operated under the Domain Names.
Similarly here, Respondent understands the significant goodwill and value of the INFINITI brand; Respondent registered the Domain Names with full knowledge of Complainant’s trademark rights; Respondent’s conduct prevents Complainant’s authorized Infiniti dealer from promoting its own products and services, thereby disrupting its business; and any use of the Domain Names will divert Internet traffic intended for Complainant’s authorized Infiniti dealer, thereby creating a likelihood of confusion. This is especially true given the fact that Respondent is a Nissan dealer, as this is likely to confuse the public into the mistaken belief that this dealer has been awarded the new Infiniti dealership, as well.
The fact that the Domain Names currently resolve to websites that display links to third party websites does not eliminate the likely confusion and the tarnishment of the INFINITI brand, because the inability of customers to reach the website of the authorized Infiniti dealer in Tallahassee will create an unsatisfactory purchasing experience that will inevitably be associated with Complainant. See Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (March 28, 2001) (“None of the Domain Names registered by Respondent resolve to active sites; accordingly, Complainant’s customers are likely to be frustrated in their efforts to reach Complainant’s website and the website of Complainant’s authorized dealers.”). See also Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D2001-0698 (July 25, 2001) (“The Complainants assert the Respondent registered the disputed domain names in bad faith because it has made no use whatever of the domain names. The Panel finds this argument persuasive and notes that other ICANN Panels have found bad faith where a party has passively "warehoused" a domain name fully aware the name contained another party's (in this case famous) trademark.”).
In view of all of the above, it is without question that the Domain Names were registered and are being used in bad faith by Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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.”).
Complainant claims that it has established its rights in the INFINITI mark by registering it with the USPTO (e.g., Reg. No. 1,478,618 registered March 1, 1988). Complainant submits the trademark registration certificate issued by the USPTO to support its claim. Therefore, the Panel finds Complainant has established its rights in the INFINITI mark under Policy ¶4(a)(i) by registering the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also claims Respondent’s <infinitioftallahassee.com> and <tallahasseeinfiniti.com> domain names are confusingly similar to its INFINITI mark. The disputed domain names include Complainant’s entire mark, while merely adding the generic top-level domain (“gTLD”) “.com” and the geographic identifier “tallahassee.” The <infinitioftallahassee.com> domain name adds the generic term “of.” This is in accordance with Complainant’s standard system for allocating domain names to its dealers. The Panel finds Respondent has failed to sufficiently differentiate its disputed domain names from Complainant’s INFINITI, making the two confusingly similar under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark).
The Panel finds Policy ¶4(i) satisfied.
Complainant must first make a prima facie case 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 has 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.”).
Complainant claims Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “Peter Kraft.” Respondent has not offered any evidence to contradict Complainant’s assertions. Although Respondent owns a Nissan dealership in Tallahassee, Complainant has never authorized Respondent to use the mark in conjunction with a domain name or online services. The Panel concludes Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to a website offering links to both unrelated businesses and other automotive businesses that compete directly with Complainant. Respondent has apparently offered to sell the disputed domain names for a large sum of money, although that offer was not made to Complainant and was in response to an inquiry about selling the domain names. The Panel finds using the disputed domain name to offer hyperlinks does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Policy ¶4(ii) satisfied.
Complainant claims Respondent attempted to sell the disputed domain names to Complainant demonstrating bad faith registration and use by attempting to sell the disputed domain names to Complainant for $50,000.00. This Panel is not persuaded an offer to sell in response to an inquiry must demonstrate registration and use in bad faith.
Complainant also asserts Respondent is attempting to inhibit Complainant from supporting its business by reflecting its mark in a domain name. Respondent was bidding on an INFINITI dealership in the Tallahassee area but did not win the bid. Respondent registered the disputed domain names prior to making its losing bid and then would not relinquish them when asked by Complainant to do so. It is clear Respondent is attempting to prevent Complainant (or its local dealer) from exercising its right to use the INFINITI mark in a domain name in light of Complainant’s naming protocol (which Respondent clearly knew as a franchisee of a sister brand). Therefore, the Panel finds Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(b)(ii). See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”); see also YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).
Complainant also claims the disputed domain names disrupt its business, demonstrating bad faith registration and use. The disputed domain names resolves to a website that offers links to both unrelated companies and companies that compete directly with Complainant’s business, like KIA. Internet users seeking out Complainant online might well be diverted to its competitors, where they may then purchase goods that they had intended to purchase from Complainant. The Panel may find that Respondent’s disputed domain names disrupt Complainant’s business, indicating bad faith registration and use 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 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)
Complainant also claims Respondent registered and is using the disputed domain names to confuse Internet users and gain commercially from that confusion, demonstrating bad faith. Respondent’s disputed domain names resolve to a website offering links of both its competitors and unrelated businesses. Respondent generates revenue by collecting click-through fees for each Internet user it diverts to the linked sites. Thus, the Panel concludes Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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).
Respondent had actual knowledge of Complainant’s rights in the INFINITI mark when it registered the disputed domain names, which indicates bad faith registration. Respondent was in the process of bidding on an INFINITI Dealership for sale in the Tallahassee area. Respondent was well-aware of Complainant, its business, its rights in the INFINITI mark and Complainant’s protocol for naming domain names. Respondent had actual notice of Complainant’s rights in the INFINITI mark when it registered the disputed domain name indicating bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); 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 finds Policy ¶4(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <infinitioftallahassee.com> and <tallahasseeinfiniti.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, April 12, 2012
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