Win Kelly Chevrolet L.L.C. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1307001510638
Complainant is Win Kelly Chevrolet L.L.C. (“Complainant”), represented by Oliver Edwards of Law Office of Oliver Edwards LLC, Maryland, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <winkellychevrolet.com>, registered with Pdr Ltd. d/b/a Publicdomainregistry.Com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 19, 2013; the National Arbitration Forum received payment July 19, 2013.
On July 20, 2013, Pdr Ltd. d/b/a Publicdomainregistry.Com initially confirmed by e-mail to the National Arbitration Forum that the <winkellychevrolet.com> domain name is registered with Pdr Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the name, and it again confirmed the above mentioned information Jul 22, 2013. Pdr Ltd. d/b/a Publicdomainregistry.Com verified that Respondent is bound by the Pdr Ltd. d/b/a Publicdomainregistry.Com registration agreement and 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 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@winkellychevrolet.com. Also on July 31, 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 August 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant uses the WIN KELLY mark in connection with its sales and services of automobiles, including Chevrolet brand automobiles. Complainant is a certified Chevrolet dealer and licensed to use the CHEVROLET trademark in connection with Complainant’s sales and service of motor vehicles and parts. See Complainant’s Exhibit K. The CHEVROLET mark is a registered trademark of General Motors LLC, and registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 216,070 registered August 3, 1926). See Complainant’s Exhibit L. Complainant’s WIN KELLY formative names are of record with the Maryland Department of Assessments and Taxation, including such names as “Win Kelly Chevrolet L.L.C.,” and other similar names. Complainant owns marks registered with the Maryland Department of State (Reg. No. 1998/00541 registered July 30, 1998) for the WIN KELLY AUTOMART/DISCOUNTER mark and design. See Complainant’s Exhibit F. Complainant also owns domain names incorporating the WIN KELLY mark, including <winkelly.com>, <winkellybuik.com>, and <winkellypontiac.com>, among others. Complainant has used its marks continuously since 1994, and uses the WIN KELLY formative marks to promote its services extensively through advertising. Complaint has spent six figure dollar sums for each of the last four years to promote its products and services. Complainant has established common law trademark rights in its WIN KELLY mark in addition to its rights in its registered marks.
Respondent registered the <winkellychevrolet.com> domain name between October 9, 2012, and December 20, 2012. The <winkellychevrolet.com> domain name is identical to Complainant’s WIN KELLY mark, combined with the CHEVROLET mark. Respondent uses the <winkellychevrolet.com> domain name to host a website that displays automobile related text, advertising, and hyperlinks, which both increase confusion with Complainant’s marks, and demonstrate Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <winkellychevrolet.com> domain name, nor does it have permission from Complainant to use the combination in any way. Respondent’s bad faith registration and use is demonstrated by its knowledge of Complainant’s prior rights in the mark, and its primary intent of registering the domain name to sell or transfer it to Complainant for valuable consideration.
Complainant established that it has rights to and legitimate interests in the marks contained in their entirety within the disputed domain name.
Respondent has no rights to or legitimate interests in the mark and domain name using Complainant’s protected marks.
The domain name is confusingly similar to both of Complainant’s protected marks.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant claims that it has rights to use the CHEVROLET mark as a licensed dealer of CHEVROLET products and services, that these rights are conferred by the mark’s owner, General Motors LLC. General Motors LLC; and that the owner holds trademark registrations for the CHEVROLET mark with the USPTO (e.g., Reg. No. 216,070 registered August 3, 1926). The Panel finds that where a complainant holds trademark rights to a mark registered with the USPTO via assignment, the Complainant satisfies Policy ¶ 4(a)(i). See Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment). The Panel additionally finds that neither the licensor of the CHEVROLET mark, nor Complainant, are required to register the mark in the Respondent’s country of residence; and since Respondent appears to be a resident of Chile, Complainant’s rights as a licensee in the CHEVROLET mark exist as a result of the USPTO registration of the mark, pursuant to Policy ¶ 4(a)(i). See 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).
A complainant may demonstrate rights in a mark through common law rights, demonstrated by showing development of a secondary meaning in the mark. 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). The Panel finds that Complainant may prove, by a secondary meaning in the WIN KELLY mark, that it has rights in the mark sufficient to satisfy Policy ¶ 4(a)(i). Complainant contends that its rights in the WIN KELLY mark originate from its continuous and extensive use of the mark in commerce from 1994 to the present. Complainant argues that it has spent significant resources to develop and promote its WIN KELLY mark and that the products and services offered thereunder include spending up to six figure amounts on media advertisement. See Complainant’s Exhibit H. The Panel finds that Complainant’s substantial use and promotion of the WIN KELLY mark establishes Complainant’s rights through common law dating back to 1994, pursuant to Policy ¶ 4(a)(i). 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.”).
Complainant argues that the <winkellychevrolet.com> domain name is identical to Complainant’s marks, in that the domain name uses an identical spelling and wording, with the exception of word spacing. Omitting spaces in a mark do not sufficiently distinguish a domain name from a mark. 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).”). Complainant alleges that the presence of the generic top-level domain (“gTLD”) “.com” does not detract from confusion with Complainant’s marks. The Panel finds as well that by combining two of Complainant’s marks, eliminating the spacing, and adding a gTLD, the <winkellychevrolet.com> the resulting domain name is not identical, but becomes confusingly similar to each of Complainant’s WIN KELLY and CHEVROLET marks, pursuant to Policy ¶ 4(a)(i). 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); see also 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to both of Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show that it does have such 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 makes the contention that Respondent is not commonly known by the <winkellychevrolet.com> domain name, relying on Respondent’s lack of trademark rights in either of the marks included in the domain name. Complainant asserts that it has not given permission for Respondent to use the WIN KELLY or CHEVROLET marks in any manner or combination, nor has Complainant’s licensor, General Motors LLC. The Panel notes that Respondent did not respond to the Complaint, therefore it does not defend any rights or legitimate interests in the disputed domain name insofar as a finding that it is commonly known by the domain in question. The Panel finds that without express permission to use the marks--and Respondent does not defend any such trademark rights in the marks—it is appropriate to find that Respondent is not commonly known by the <winkellychevrolet.com> domain name pursuant to a Policy ¶ 4(c)(ii) analysis. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent fails to make a legitimate noncommercial or fair use of the domain name, and instead misleadingly diverts consumers to webpages containing sponsored and pay-per-click advertising where consumers reach pages hosted by Complainant’s competitors. See Complainant’s Exhibit P. Previous panels have made findings that hosting competing pay-per-click links at resolving websites does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). The Panel agrees and finds that Respondent does not use the <winkellychevrolet.com> domain name in a Policy ¶ 4(c)(i) bona fide offering of goods or services or in a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant makes the assertion that Respondent registered the <winkellychevrolet.com> domain name with the primary intent to sell the domain name to Complainant for consideration in excess of the registration costs. Complainant includes its Exhibit S, depicting the GoDaddy.com auction listing screenshot, which was taken July 3, 2013, as evidence of Respondent’s bad faith. The panel in Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), stated that the respondent’s bad faith was shown by requesting monetary compensation beyond out-of-pocket costs spent registering the domain. The Panel notes that Complainant’s exhibit does not mention a specific price for the domain name. The Panel may, however, find that by attempting to sell the domain name at an auction site, Respondent may be found to have registered the disputed domain name in bad faith under a Policy ¶ 4(b)(i) analysis.
Complainant contends that Respondent attempts to make a commercial gain by misleadingly diverting consumers to its hosted website, which contains pay-per-click advertising sponsored by competitors of Complainant, as well as links to brands of motor vehicles not offered by Complainant. Complainant argues that Respondent intentionally creates a likelihood of confusion with Complainant’s marks as to the affiliation between Complainant and Respondent. The panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), held that the respondent’s use of the domain name to operate a website featuring links to competing and noncompeting commercial entities from which the respondent was presumed to receive referral fees was evidence of bad faith registration and use. The Panel likewise finds that this Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv) is shown by the hosting of a website resolving from the disputed domain name to display competing and non-competing hyperlinks, thus creating consumer confusion.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <winkellychevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 10, 2013.
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