Sterling Custom Coach Builders, LLC v. Matt Alexander
Claim Number: FA2001001878631
Complainant is Sterling Custom Coach Builders, LLC (“Complainant”), represented by John A. Thomas, US. Respondent is Matt Alexander (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sterlingcustomcoachbuilder.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2020; the Forum received payment on January 20, 2020.
On January 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sterlingcustomcoachbuilder.com> 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 January 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 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@sterlingcustomcoachbuilder.com. Also on January 22, 2020, 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.
A timely Response was received and determined to be complete on March 9, 2020.
On March 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Sterling Custom Coach Builders, LLC, specializes in luxury customized vehicle builds and conversions.
Complainant has common law rights in the STERLING CUSTOM COACH BUILDERS mark because Complainant has used the mark for its business continuously since 2017, and the mark has acquired customer recognition as a result of such use. Respondent’s <sterlingcustomcoachbuilder.com> domain name is identical or confusingly similar to Complainant’s STERLING CUSTOM COACH BUILDERS mark as it differs from the mark by only one letter and uses the fanciful term “sterling” in its entirety.
Respondent has no rights or legitimate interests in the <sterlingcustomcoachbuilder.com> domain name. Respondent is not authorized to use Complainant’s STERLING CUSTOM COACH BUILDERS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to address a website displaying grievances against a third party who was associated with a now-insolvent custom vehicle business acquired by Complainant.
Respondent registered and uses the <sterlingcustomcoachbuilder.com> domain name in bad faith. The at-issue domain name is identical or confusingly similar to the STERLING CUSTOM COACH BUILDERS mark, but does not include a derogatory word such as <trademarksucks.com>, thus, users looking for Complainant’s website could mistakenly find Respondent’s website. Additionally, the criticism displayed on the <sterlingcustomcoachbuilder.com> website is directed toward a third party and not Complainant.
B. Respondent
Respondent contends as follows:
Respondent, Matt Alexander, is the owner of the <sterlingcustomcoachbuilder.com> domain name.
Complainant does not have rights in the STERLING CUSTOM COACH BUILDERS mark because it has not filed for a trademark registration in the State of Missouri nor with the United States Patent and Trademark Office. Rather, Complainant merely uses “Sterling Custom Coach Builders” as a trade name in Missouri. Complainant cannot claim common law rights because the state of Missouri does not grant common law trademark rights. Sterling is not a fanciful term. Complainant has not acquired substantial customer recognition because its gross revenue indicates it has only garnered a small amount of business.
Complainant has not advertised outside of its website at the <sterlingcustomcoachbuilders.com> domain name. Complainant has not used a TM designation after the term “Sterling Custom Coach Builders” on its website. Respondent does not pay for Google advertising or otherwise influence Google’s search result algorithm, so Respondent should not be held accountable for its domain name showing as the third or fourth result when a user performs a Google search for “Sterling Custom Coach Builders.”
Respondent does not commercially benefit from its use of the <sterlingcustomcoachbuilder.com> domain name; rather, it uses the domain name for a noncommercial, fair use. Specifically, Respondent uses the domain name for noncommercial criticism, a “public archive of information on the topic of Sterling Custom Coach Builders, any or all of their respective agents, board members, stock holders, or other parties associated with them and subsequent take-over of Chalmers Automotive.” The statements on the disputed domain name’s website are all true and publicly available elsewhere; the statements are merely compiled for display on the disputed domain name’s resolving webpage.
Respondent has not demonstrated bad faith as the disputed domain name is used for noncommercial criticism.
Complainant filed this dispute with malice in order to reveal the owner of the domain name, so that Complainant could harass, intimidate, and defame Respondent and reverse hijack the disputed domain name.
Complainant has rights in the STERLING CUSTOM COACH BUILDERS mark.
Complainant’s rights in the STERLING CUSTOM COACH BUILDERS mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <sterlingcustomcoachbuilder.com> domain name to address a website that is designed to criticize a third-party.
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.
The at-issue domain name is identical to a trademark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case Complainant proffers evidence of the STERLING CUSTOM COACH BUILDERS mark’s having acquired secondary meaning through Complainant’s public use of such mark over a period of approximately 3 years. Additionally, Complainant’s states in its sworn-to complaint that the STERLING CUSTOM COACH BUILDERS mark is used in support of Complainant’s custom coachwork business and that it has invested $57,000 in advertising related to the STERLING CUSTOM COACH BUILDERS brand. Respondent’s notion that Complainant has offered insufficient evidence to confer common law rights regarding Complainant‘s advertising expenditure and/or continuous use regarding the STERLING CUSTOM COACH BUILDERS mark, is misplaced. The statements in Complainant’s filing are ascribed to “under the penalty of perjury” by Complainant’s president and constitute competent evidence indicating that Complainant has significantly invested in advertising regarding the STERLING CUSTOM COACH BUILDERS mark and has used the mark continuously for a period of years. Further, Respondent’s offers no evidence which overcomes Complainant’s sworn contentions. In light of the foregoing, the Panel finds that Complainant has acquired common law trademark rights in the STERLING CUSTOM COACH BUILDERS mark sufficient for the purposes of Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Next, Respondent’s <sterlingcustomcoachbuilder.com> domain name is confusingly similar to Complainant’s STERLING CUSTOM COACH BUILDERS trademark. The domain name contains Complainant’s entire trademark less its spaces and final “s,” all followed by the top-level domain name “.com.” The differences between the at-issue <sterlingcustomcoachbuilder.com> domain name and Complainant’s STERLING CUSTOM COACH BUILDERS trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) that Respondent’s <sterlingcustomcoachbuilder.com> domain name is confusingly similar to Complainant’s STERLING CUSTOM COACH BUILDERS trademark. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “[c]hanging a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <sterlingcustomcoachbuilder.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Matt Alexander.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <sterlingcustomcoachbuilder.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Next, Respondent uses the at-issue domain name to direct internet users to a website which appears to be a one-sided critic of a third party whose only connection with the Complainant is that Complainant purchased the physical assets from said third party. Respondent use of the confusingly similar domain name diverts internet users away from Complainant’s <sterlingcustomcoachbuilders.com> domain name where Complainant advertises and promotes its business, to a website focused on Respondent’s grievances against the third party. There, Respondent criticizes and maligns the third-party predecessor in interest to Complainant’s assets. Respondent’s use of the confusingly similar domain name to address Respondent’s critical website gives the impression to website visitors that Complainant is somehow substantively associated with the criticism that is the focus of the website, when there is no such association. Respondent’s use of the confusingly similar <sterlingcustomcoachbuilder.com> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent fails to offer evidence which shows that notwithstanding the foregoing Respondent has rights and legitimate interests in the at-issue domain name. Therefore, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name to direct internet traffic to a website that offers one sided criticism of a third party. Complaint denies any connection between the third-party target of the website’s critical content and Complainant but for the fact that Complainant once purchased assets from such party. Respondent offers no disclaimer regarding the relationship between the website and Complainant. However, a cursory review of the <sterlingcustomcoachbuilder.com> website gives the impression that Complainant, whose domain name and trademark are near identical to the at-issue domain name, is somehow materially affiliated with the target of Respondent’s grievances when it is not. By creating such a disparaging false impression Respondent disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the <sterlingcustomcoachbuilder.com> domain name pursuant to Policy ¶ 4(b)(iii) and otherwise. See Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., D2009-0062 (WIPO March 25, 2009) (“the non-commercial use which is permitted by paragraph 4(c)(iii) must still be ‘fair’ or ‘legitimate’[.] . . . Prime among the considerations [for a non-commercial criticism site to qualify as ‘fair’ or ‘legitimate’], is the criticism website itself must not mislead site visitors into thinking that it is the site of the trademark owner, or that it is somehow authorized or endorsed by the trademark owner.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sterlingcustomcoachbuilder.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 16, 2020
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