Rodney Cobb Chevrolet v. PPA Media Services / Ryan G Foo
Claim Number: FA1209001461908
Complainant is Rodney Cobb Chevrolet (“Complainant”), represented by Eric Menhart of Lexero Law, Washington, D.C., USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rodneycobb.com>, registered with Internet.bs Corp.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2012; the National Arbitration Forum received payment on September 10, 2012.
On September 13, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <rodneycobb.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 September 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@rodneycobb.com. Also on September 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law deemed applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts common law trademark rights in RODNEY COBB/ RODNEY COBB CHEVROLET and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has been a “Chevrolet” motor car dealer since 1985, trading under the name RODNEY COBB CHEVROLET for much of that time.
2. Complainant has used the domain name <rodneycobbchevrolet.com> in connection with that business for over 9 years.
3. Moreover, between 2002 and 2007 Complainant was the owner of the disputed domain name.
4. The disputed domain name was registered on February 1, 2010.
5. The domain name resolves to a website that offers “Chevrolet” motor cars for sale.
6. The domain name is also for sale.
7. There is no commercial agreement between the parties and Complainant has not authorized Respondent in any way.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant has no registered rights but relies on a claim to RODNEY COBB as a common law trademark. In particular, Complainant asserts that it has those rights by reason of substantial and long-term use of the name in commerce as a trademark since 1985.
In support of that claim Complainant annexes a host of miscellaneous advertising and promotional ephemeria, none which by itself would satisfy the standard of proof required to establish secondary meaning and a common law reputation (see Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also 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).
In this case the evidence of alleged trademark rights consists primarily of business stationary, local newspaper and Yellow Pages advertisements, images from Complainant’s website, advertorials, and the like. Much of this material is either undated or of recent vintage and is of little weight in showing long standing use of the words RODNEY COBB as a trademark in commerce. Moreover, much of the material does not use the words RODNEY COBB, simpliciter, but either RODNEY COBB CHEVROLET, or from a period after April 2012 when two former dealerships merged their businesses, RODNEY COBB CHEVROLET, BUICK, GMC.
The Panel has distilled the best of this evidence which can be summarized as proof of the incorporation of “Rodney Cobb Chevrolet, Inc.” in 1985; advertisement for the business of RODNEY COBB CHEVROLET reproduced from 2002 via the “Wayback Machine”; and certain radio and print advertising which, although from only 2011, goes some way to showing a local presence of the business in Easton, Ohio.
Had Respondent replied to the Complaint, it might have had something to say about the adequacy of that material to show trademark rights in RODNEY COBB. Absent a Response, the Panel reminds itself of what it said in the case of Patrick Jaguar, LLC, d/b/a Patrick Land Rover v. Chris Batozech, Claim Number: FA0805001190348 (July 2, 2008), a dispute between two motor vehicle dealers:
The name is part of Complainant’s company name. It appears prominently on its showroom premises and on its various websites. This Panel has no doubt that the name is being used as a trademark and the only important issue is whether there is sufficient indication of use and reputation to support common law trademark rights.
It is said that a complainant has common law rights if it could sustain an argument of passing off. It was said in one passing off case that:
The nature and degree of business activity will differ from case to case. …A business has goodwill attached to it in a particular place if there is an attraction among people there to do business with it. … In many cases distance or the nature of the business will make it unlikely that anyone could be so attracted[i]
Passing off actions have, however, frequently succeeded based on regional reputation or goodwill, especially in cases of localized service providers such as restaurants, builders, hairdressers, and similar service providers. There is a respectable argument that main line motor dealers fall into that category. They provide not just new car sales, but typically sales of approved used cars of the same make(s), provide servicing of those vehicles, provide courtesy cars, deal with warranty claims, offer trade-in services, and today frequently provide a range of ancillary services. Their customer base is typically local.
By the narrowest of margins, Panel is prepared to find that Complainant has established that RODNEY COBB/ RODNEY COBB CHEVROLET operates as a common law trademark and so finds that Complainant has requisite rights for the purpose of this aspect of the Policy.
Panel is also satisfied that the disputed domain name is legally identical to Complainant’s trademark. The disputed domain name takes the trademark and merely adds non-distinctive gTLD, “.com” (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “PPA Media Services / Ryan G Foo” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant contends that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name because Respondent uses the disputed domain name to advertise motor vehicles, specifically Chevrolet branded motor vehicles, at the resolving website. The Panel is in full agreement with that submission (see United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), stating that the disputed domain name was used host a website that displayed the complainant’s mark and links to the complainant’s competitors, which the panel found to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
In addition, Complainant provides evidence that the domain name is for sale at www.sedo.com. Again, this is indicative of a prima facie case that Respondent lacks rights or interests in the disputed domain name.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be identical to Complainant’s trademark. Complainant submits evidence of screenshots of the web page corresponding with the disputed domain name. Panel notes hyperlinks to various commercial websites offering goods competitive with Complainant’s services. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this website associated with the disputed domain name. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rodneycobb.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 23, 2012
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