Ferman Motor Car Company, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1803001775482
Complainant is Ferman Motor Car Company, Inc. (“Complainant”), represented by Robert B. Gough of Hill, Ward & Henderson, P.A., Florida, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fermanchevrolet.com>, registered with Internet Domain Service 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2018; the Forum received payment on March 12, 2018.
On March 14, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <fermanchevrolet.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service 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 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2018 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@fermanchevrolet.com. Also on March 21, 2018, 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 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Ferman Motor Car Company, Inc., has used its FERMAN mark in connection with retail automobile and motorcycle dealerships in the Tampa, Florida, and the Tampa Bay area since 1895 which is when Complainant was founded by W. Fred Ferman, Sr. Notably, the FERMAN mark is the surname of the current CEO and President of, Ferman Motor Car Company, Inc., James L. Ferman, Jr.
2. In 1930, Complainant was awarded its first Chevrolet dealership in Tampa, Florida. Complainant spends hundreds of thousands of dollars each year advertising its brand name and mark through various marketing channels, including newspapers, magazines, billboards, radio, and television. As a result, the Complainant’s brand name is extremely well-recognized throughout the Tampa Bay area and beyond.
3. Complainant owns a registration for its FERMAN mark, which was first used in commerce in 1998, through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,840,510 registered Aug. 31, 2010). Complainant also owns a registration for its FERMAN CHEVROLET mark through the Florida Department of State, Division of Corporations (Reg. No. G03035900184, registered Oct. 4, 2003).
4. Respondent’s <fermanchevrolet.com>[i] domain name is confusingly similar and identical to Complainant’s FERMAN and FERMAN CHEVROLET marks as the marks are incorporated entirely into the domain name.
5. Respondent has no rights or legitimate interests in the domain name. Here, Respondent does not use the domain name at issue in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s domain name hosts pay-per-click links to competing automotive services.
6. Respondent’s registration of the <fermanchevrolet.com> domain name is intended to be transferred for valuable consideration in excess of the Respondent’s out-of-pocket costs. Furthermore, Respondent is disrupting Complainant’s business by diverting internet traffic intended for Complainant to Respondent’s website. The domain name is being used for commercial gain which is also bad faith registration. Based on Respondent’s use of the domain name it is implausible that Respondent could not have been aware of Complainant’s rights to its FERMAN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FERMAN mark. Respondent’s domain name is confusingly similar to Complainant’s FERMAN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the FERMAN mark domain name and that Respondent registered and uses the 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 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.”).
Complainant owns a registration for its FERMAN mark through the USPTO (Reg. No. 3,840,510 registered Aug. 31, 2010), and a registration for its FERMAN CHEVROLET mark through the Florida Department of State, Division of Corporations (Reg. No. G03035900184 registered Oct. 4, 2003). Registration of a mark through a state authority or the USPTO is sufficient to demonstrate rights to a mark. 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)); see also MadisonFlatFeeHomes.Com. LLC v. Stuart Meland, FA 1724843 (Forum May 10, 2017) (“Registration of a mark with a state authority can sufficiently evince rights in a mark.”). Accordingly, the Panel finds Complainant has demonstrated trademark rights to its FERMAN and FERMAN CHEVROLET marks.
Complainant also claims common law rights to its FERMAN mark. Per Policy ¶ 4(a)(i), common law rights to a mark may be demonstrated where a mark has gained secondary meaning. See Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since [a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will). The evidence supporting Complainant’s argument is the following. In 1930, Complainant was awarded its first Chevrolet dealership in Tampa, Florida. Complainant has thousands of customers, employees and former employees in the Tampa Bay area. Complainant spends hundreds of thousands of dollars each year advertising the Ferman brand name and mark through various marketing channels, including newspapers, magazines, billboards, radio, and television. As such, the Ferman brand name is extremely well-recognized throughout the Tampa Bay area and beyond. The following dealerships in the Tampa Bay area bear the Ferman name: Ferman Acura, Ferman Chevrolet, Ferman Mazda of Brandon, Ferman Nissan, Ferman BMW, Ferman Chrysler Jeep Dodge RAM of New Port Richey, Ferman MINI, Ferman Volvo, Ferman Buick GMC at Cypress Creek, Ferman Chrysler Jeep Dodge RAM at Cypress Creek, Ferman Ford, and Ferman Mazda of Countryside.
Accordingly, the Panel holds that Complainant’s common law rights predate the registration of the domain name.
Next, Complainant argues Respondent’s <fermanchevrolet.com> domain name is confusingly similar and identical to its FERMAN and FERMAN CHEVROLET marks. Respondent adds the “.com” generic top-level-domain (“gTLD”) to Complainant’s wholly incorporated marks. Similar changes to a mark have been found to be identical per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Consequently, the Panel finds Respondent’s <fermanchevrolet.com> domain name to be identical to Complainant’s FERMAN and FERMAN CHEVROLET marks per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <fermanchevrolet.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The WHOIS information of record names “Maddisyn Fernandes / Fernandes Privacy Holdings” as the registrant of the <fermanchevrolet.com> domain name. No other evidence in the record indicates that Respondent is commonly known by the domain name. Thus, the Panel finds Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent’s use of the <fermanchevrolet.com> domain name is not in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as, instead, Respondent’s domain name resolves to pay-per-click links. Use of a domain name that contains the mark of another to host pay-per-click links for a respondent’s commercial gain does not represent a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise legitimate fair use per Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides screenshot evidence of the resolving website which displays Respondent’s use of the resolving website to host pay-per-click links to competing automotive service websites for Respondent’s presumed commercial gain. As a result, the Panel holds Respondent’s use of the domain name to host pay-per-click links to competing websites is not in accordance with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s FERMAN mark at the time the <fermanchevrolet.com> domain name was registered. Based on the notoriety of the Ferman businesses in the Tampa Bay area and the use of competing pay-per-click links to competing services in the resolving website, the Panel agrees. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“[T]Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Thus, the Panel finds Complainant established bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fermanchevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 19, 2018
[i] According to the WHOIS information of record, Respondent registered the FERMAN mark domain name on September 19, 2002.
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