ADESA, Inc. v. James Louis
Claim Number: FA1706001736761
Complainant is ADESA, Inc. (“Complainant”), represented by Louis T. Perry of Faegre Baker Daniels LLP, Indiana, USA. Respondent is James Louis (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adesa.org>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on June 21, 2017; the Forum received payment on June 21, 2017.
On June 22, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adesa.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2017 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@adesa.org. Also on June 22, 2017, 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 July 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.
2. Respondent does not have any rights or legitimate interests in the <adesa.org> domain name.
3. Respondent registered and uses the <adesa.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,783,173, registered July 20, 1993) for its ADESA mark, used in connection with vehicle sales.
Respondent registered the <adesa.org> domain name on May 6, 2013, and uses it to redirect Internet users to Respondent’s website <hearselimo.com>, which directly competes with 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(f), 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 (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 Panel finds that Complainant has rights under Policy ¶ 4(a)(i) in the ADESA mark through its registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark, as it contains the entire mark and merely adds the gTLD “.org.” Panels routinely find that slight differences between domain names and registered marks, such as the addition of a “gTLD” or removal of a space, are irrelevant and do not distinguish the domain name from the mark incorporated therein. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”) Accordingly, the Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 (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 (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 argues that Respondent has no rights or legitimate interests in the <adesa.org> domain name and that Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the ADESA mark in any way. The WHOIS information of record identifies Respondent as “James Louis.” Thus, the Panel finds that Respondent is not commonly known by the <adesa.org> domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.).
Complainant further argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant demonstrates that Respondent uses the disputed domain name to redirect Internet users to <hearselimo.com>, which offers used cars for sale in direct competition with Complainant’s vehicle auction services. Using an identical or confusingly similar domain name to redirect Internet users to a website that directly competes with Complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Michelin North America, Inc. v. Ross Blankenship, FA1705001730937 (Forum June 12, 2017) (finding that respondent has no rights or legitimate interests in the subject domains under Policy ¶ 4(c)(i) & (iii) where respondent used complainant’s trademarks in domain names that resolve to another domain and website selling products in competition with complainant’s business.). Accordingly, the Panel finds that Respondent is not using the <adesa.org> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) & (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith by diverting Internet users from Complainant to Respondent’s competing website, thus disrupting Complainant’s business. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See Robinhood Markets, Inc. v. Money Ferrari, FA1705001729682 (Forum June 5, 2017) (citing DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating complainant’s mark to divert complainant’s customers to respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)).
Complainant provided a screenshot of the website resolving from the <adesa.org> domain name, showing that Respondent redirects users to <hearselimo.com>, where it competes with Complainant. The Panel finds that Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name for its own benefit, which constitutes bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent must have had actual knowledge of the mark because of Respondent’s inclusion of the entire ADESA mark in a domain name that engages in the same industry as Complainant. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (finding bad faith where the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied 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 <adesa.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 19, 2017
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