Worthington Ford of Alaska, Inc., dba Cal Worthington Ford v. NA DOTSAN / NA
Claim Number: FA1505001619532
Complainant is Worthington Ford of Alaska, Inc., dba Cal Worthington Ford (“Complainant”), represented by Lawrence W. Miles, Jr. of THE MILES LAW FIRM, A Professional Corporation, California, USA. Respondent is NA DOTSAN / NA (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calworthingtonford.com>, registered with eNom, Inc..
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2015; the Forum received payment on May 14, 2015.
On May 15, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <calworthingtonford.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@calworthingtonford.com. Also on May 19, 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 June 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions
1. Policy ¶ 4(a)(i)
a. Complainant has common law rights in the CAL WORTHINGTON FORD mark dating back to its first use in commerce in 1976.
b. Respondent’s <calworthingtonford.com> domain name is identical to Complainant’s CAL WORTHINGTON FORD mark because it is differentiated by only the addition of the generic top level domain (“gTLD”) “.com” and the removal of spaces between the words.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “NA DOTSON” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent used the resolving website to host unrelated advertisements.
3. Policy ¶ 4(a)(iii)
a. Respondent registered the domain for the purpose of profiting commercially by capitalizing on the confusion of Internet users.
b. Respondent registered the domain name with actual knowledge of Complainant’s rights in the CAL WORTHINGTON FORD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of conducting an auto dealership.
2. Complainant has common law rights in the CAL WORTHINGTON FORD mark dating back to its first use in commerce in 1976.
3. The<calworthingtonford.com> domain name was created on October 22, 2001.
4. Respondent has used the website to which the domain name resolves to host unrelated advertisements.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant operates an auto dealership in conjunction with the CAL WORTHINGTON FORD mark. Complainant has not provided evidence of having registered its mark with a trademark agency. However, past panels have found that Policy ¶ 4(a)(i) does not require registration if a Complainant can demonstrate having common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant alleges that it has rights in the CAL WORTHINGTON FORD mark dating back to its first use in commerce in 1976. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning includes length of use of the mark, advertising, and media 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.”). Complainant has provided evidence of secondary meaning in Exhibits 1-5, including the Wikipedia page for Cal Worthington, the founder of Complainant’s business, Complainant’s business license, Complainant’s website and ads for Complainant’s business. As the Panel finds that Complainant’s evidence is sufficient to establish secondary meaning, the Panel finds that Complainant common law rights in the CAL WORTHINGTON FORD mark that have existed since 1976.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAL WORTHINGTON FORD mark. Complainant submits that Respondent’s <calworthingtonford.com> domain name is identical to Complainant’s CAL WORTHINGTON FORD mark because it is differentiated by only the addition of the gTLD “.com” and the removal of spaces between the words. Past panels have found that such changes of a mark in a domain name result in a domain name that is identical to the mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel finds that Respondent’s <calworthingtonford.com> domain name is identical to Complainant’s CAL WORTHINGTON FORD mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAL WORTHINGTON FORD trademark and to use it in its domain name;
(b) Respondent has then used the disputed domain name to resolve to a website used by Respondent to host unrelated advertisements;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known as the disputed domain name. The Panel notes that the WHOIS information lists “NA DOTSON” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). 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). Accordingly, the Panel finds that Respondent is not commonly known by the <calworthingtonford.com> domain name under Policy ¶ 4(c)(ii);
(e)Complainant alleges that Respondent failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because respondent used the resolving website to host unrelated advertisements. Complainant has not provided any documentation of this use, but urges that after Complainant notified the Registrar of Respondent’s use, the Registrar terminated Respondent’s domain name, but could not transfer it. Past panels have found unrelated use of a domain name to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c) (iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). As the Panel agrees with Complainant’s contention, the Panel finds that Respondent has failed to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <calworthingtonford.com> domain name to confuse Internet users about the identity of Respondent. Complainant alleges that Respondent used the resolving website to offer advertisements for businesses and services unrelated to Complainant. Complainant urges that Respondent profited from this use, and did so through attracting Internet users to its website through confusing those users about Complainant’s connection to the website. Although Complainant has not provided evidence to support this allegation, past panels have found the use of a disputed domain to host what is presumably paid advertising constitutes bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). As the Panel agrees with Complainant’s submissions, the Panel finds that Respondent registered and uses the <calworthingtonford.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CAL WORTHINGTON FORD mark. Complainant argues that Respondent used the resolving website to attract Internet users in order to profit from advertisements, as explained above. Complainant urges that such a use would be impossible to do without being aware of Complainant’s mark. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). As the Panel finds that Respondent had actual knowledge of Complainant’s rights in the CAL WORTHINGTON FORD mark at the time of registration, the Panel finds that Respondent registered the <calworthingtonford.com> domain in bad faith under Policy ¶ 4(a)(iii).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CAL WORTHINGTON FORD mark and its use since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calworthingtonford.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 15, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page