national arbitration forum

 

DECISION

 

Milton Ruben Chevrolet, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin

Claim Number: FA1304001497253

PARTIES

Complainant is Milton Ruben Chevrolet, Inc. (“Complainant”), represented by Kyle Anne Citrynell, Kentucky, USA.  Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <miltonrubenchevrolet.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2013; the National Arbitration Forum received payment on April 29, 2013.

 

On May 2, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <miltonrubenchevrolet.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 May 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2013 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@miltonrubenchevrolet.com.  Also on May 9, 2013, 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 June 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <miltonrubenchevrolet.com> domain name is confusingly similar to Complainant’s MILTON RUBEN CHEVROLET mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <miltonrubenchevrolet.com> domain name.

 

3.    Respondent registered and used the <miltonrubenchevrolet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Milton Ruben Chevrolet, Inc., has used the MILTON RUBEN CHEVROLET mark in conjunction with the sale of automobiles since 1982.

 

Respondent registered the <miltonrubenchevrolet.com> domain name on October 3, 2005, and uses it to provide links to other websites, many of which compete with Complainant.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant, Milton Ruben Chevrolet, Inc., states that it uses the MILTON RUBEN CHEVROLET trademark in conjunction with the sale of automobiles, automobile parts, and automobile accessories, specifically “Chevrolet” brand automobiles.  Complainant contends that it is generally known by the name MILTON RUBEN CHEVROLET and has used the MILTON RUBEN CHEVROLET mark since 1982.  Complainant does not own a trademark registration for the MILTON RUBEN CHEVROLET mark.  The Panel notes, however, that registration of the trademark by Complainant is not necessary under Policy ¶ 4(a)(i).  See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).

 

Complainant provides evidence of prominent and long-standing use of the MILTON RUBEN CHEVROLET mark in its advertising, on webpages, Facebook, print ads, and elsewhere.  Complainant states that it is unaware of any other person or entity using the name MILTON RUBEN in the automobile industry or otherwise.  In the absence of any argument or evidence to the contrary, the Panel finds that Complainant’s MILTON RUBEN CHEVROLET mark has achieved a secondary meaning via advertising, social media, and commercial use, and has thereby established common law rights in the mark under 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).

 

Respondent’s <miltonrubenchevrolet.com> domain name is identical to Complainant’s MILTON RUBEN CHEVROLET name and trademark, but for the gTLD “.com” and the deletion of the spaces in Complainant’s mark.  These minor changes do not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, the Panel finds that Respondent’s <miltonrubenchevrolet.com> domain name is identical to Complainant’s MILTON RUBEN CHEVROLET mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have 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 that Respondent is not known by the name MILTON RUBEN, MILTON RUBEN CHEVROLET or any name similar to MILTON RUBEN.  The WHOIS record identifies “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant of the domain name.  Respondent fails to provide any evidence that it is known by the domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name 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).

 

Complainant asserts that on the website <miltonrubenchevrolet.com>, Respondent provides links to other websites, many of which are automobile websites that compete with Complainant, and provides evidence that the disputed domain name resolves to a links with titles such as “VW Official Site,” “Chevy 2013 Sale Prices,” “Find Used Cars for Sale.”  Previous panels have found that a respondent did not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use when the website resolving from the disputed domain name displays links which directly compete with the complainant’s business.  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008).  The Panel thus finds that Respondent’s use of the domain name to provide competing links is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s <miltonrubenchevrolet.com> domain name provides links to Complainant’s competitors, with titles such as “2012 Car Clearance,” “New Car Clearance 2012,” and “Chevrolet Clearance Sale.”  The Panel finds that this disrupts Complainant’s business, and thus Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant.  The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant contends that Respondent’s intent in registering the domain name at issue is to create a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website to attract and divert Internet users to Respondent’s own business, or at least away from Complainant’s business. The Panel agrees and finds that Respondent is using the disputed domain name to attract consumers to its own website for commercial gain, demonstrating bad faith use and registration 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).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <miltonrubenchevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  June 11, 2013

 

 

 

 

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