MAR-Ocean, LLC d/b/a Ocean Cadillac v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1503001611654
Complainant is MAR-Ocean, LLC d/b/a Ocean Cadillac (“Complainant”), represented by Marc E. Brandes of Kurkin Brandes LLP, Florida, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), New Providence, Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oceancadillac.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2015; the Forum received payment on March 26, 2015.
On March 27, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <oceancadillac.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 March 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2015 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@oceancadillac.com. Also on March 31, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses the OCEAN CADILLAC mark in connection with its business as a family owned and operated franchise Cadillac dealer. Complainant has established common law rights in the mark through secondary meaning, showing rights in the mark. Respondent’s <oceancadillac.com> domain name is confusingly similar because it merely eliminates the spacing between words of the mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <oceancadillac.com> domain name. Respondent is not commonly known by the disputed domain name. Additionally, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, the resolving site features click-through hyperlinks to third-party competitors of Complainant.
Respondent is using the <oceancadillac.com> domain name in bad faith disruption of Complainant’s business because the hyperlinks associated with the disputed domain name’s resolving page divert Internet users to third-party automotive dealers which compete with Complainant. Further, such hyperlinks presumably result in commercial gain for Respondent, imputing bad faith attraction for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
The Panel requested and Complainant submitted additional evidence as to the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Ocean Cadillac has been a franchised Cadillac dealer since 1982 and has been authorized by GM since 1982 to use the trademark name Ocean Cadillac. Pursuant to the GM Dealer Sales and Service Agreement Standard Terms and Conditions, GM or affiliated companies are the exclusive owners or licensees of the various trademarks, service marks, names and designs used in connection with products and services. Ocean Cadillac has been granted a non-exclusive right to display marks in the form and manner approved by GM in the conduct of its dealership business. This includes Ocean Cadillac’s use of the trademark Oceancadillac.com as a domain name on the Internet. GM estimates that Ocean Cadillac has sold approximately 11,550 new vehicles, $4,000,000, all under the name Ocean Cadillac. This estimate is based upon sales records currently available.
Complainant, MAR-Ocean, LLC d/b/a Ocean Cadillac, uses the OCEAN CADILLAC mark in connection with its business as a family owned and operated franchise Cadillac dealer. Ocean Cadillac has been a franchised Cadillac dealer since 1982 and has been authorized by GM since 1982 to use the trademark name Ocean Cadillac. Complainant has established common law rights in the mark through secondary meaning, showing rights in the mark.
Respondent, Domain Admin / Whois Privacy Corp., < registered the <oceancadillac.com> domain name on September 16, 2010. Respondent’s the resolving website features click-through hyperlinks to third-party competitors of Complainant.
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 does not have a trademark registration for the OCEAN CADILLAC mark. However, Complainant may establish rights in the mark by establishing secondary meaning through use in commerce and consumer recognition. 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.”). Further, a complainant need not establish rights in the same country in which a respondent operates to succeed under Policy ¶ 4(a)(i). 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant has established secondary meaning of the OCEAN CADILLAC mark sufficient to show common law rights pursuant to Policy ¶ 4(a)(i). Ocean Cadillac has been a franchised Cadillac dealer since 1982 and has been authorized by GM since 1982 to use the trademark name Ocean Cadillac. GM has granted Ocean Cadillac a non-exclusive right to display marks in the form and manner approved by GM in the conduct of its dealership business. This includes Ocean Cadillac use of the trademark Oceancadillac.com as a domain name on the Internet. GM estimates that Ocean Cadillac has sold approximately 11,550 new vehicles, $4,000,000, all under the name Ocean Cadillac.
Respondent’s <oceancadillac.com> domain name is confusingly similar to the OCEAN CADILLAC mark under Policy ¶ 4(a)(i).because the domain name merely eliminates the spacing between words of the mark and adds the “.com” gTLD. Such minimal alterations are insufficient to overcome a finding of confusing similarity 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”).
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 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).
Respondent has no rights or legitimate interests in the <oceancadillac.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Domain Admin / Whois Privacy Corp.” as registrant of record. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The resolving site features click-through hyperlinks to third-party competitors of Complainant. Respondent presumably receives referral fees. Respondent’s website displays the following hyperlinks: “The Cadillac Sale”, “Cadillac CTS For Sale”, “Used Cadillac CTS”, “2014 Cadillac CTS Offer”, and “Cadillac CTS Savings.” In ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), the Panel found that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent is using the <oceancadillac.com> domain name in a bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) because the hyperlinks associated with the disputed domain name’s resolving page divert Internet users to third-party automotive dealers which compete with Complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, Respondent has registered and use the <oceancadillac.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent’s competing hyperlinks presumably result in commercial gain for Respondent, imputing bad faith attraction for commercial gain under Policy ¶ 4(b)(iii). In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) the Panel found 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.”
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oceancadillac.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 2, 2015
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