Radley Automotive Group, Inc. v. Domain
Active Pty. Ltd.
Claim
Number: FA0412000386012
Complainant is Radley Automotive Group, Inc. (“Complainant”),
represented by William L. Klima, of Klima Law Offices, P.L.L.C.,
P.O. Box 2855, Stafford, VA 22555-2855.
Respondent is Domain Active Pty.
Ltd. (“Respondent”), P.O. Box 262, Clayfield, QLD 4011, AU.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <radleyacura.com>, registered with Fabulous.com
Pty Ltd.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
21, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 22, 2004.
On
December 22, 2004, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <radleyacura.com> is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
December 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 17, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@radleyacura.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Honorable
Paul A. Dorf (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <radleyacura.com>
domain name is confusingly similar to Complainant’s RADLEY mark.
2. Respondent does not have any rights or
legitimate interests in the <radleyacura.com> domain name.
3. Respondent registered and used the <radleyacura.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Radley Automotive Group, Inc., owns and operates an authorized Acura automobile
dealership in Falls Church, Virginia, servicing the greater metropolitan
Washington D.C. area.
Complainant has
registered the RADLEY mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,557,747 issued April 9, 2002).
Respondent
registered the <radleyacura.com> domain name on September 18,
2002. Respondent’s domain name resolves
to a website that features links to various competing new and used automobile
dealers and financers.
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."
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.
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.
Complainant has
established rights in the RADLEY mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <radleyacura.com>
domain name is confusingly similar to Complainant’s RADLEY mark because the
domain name incorporates the mark in its entirety and adds the term
“acura.” The term “acura” effectively
describes Complainant and Complainant’s business, as Complainant is an
authorized Acura dealer. Thus, the
addition of the term “acura” does not negate the confusingly similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See G.D. Searle & Co.
v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002)
(“The Panel concludes that the
<viagra-propecia-xenical-celebrex-claritin-prescriptions.com> domain name
is confusingly similar to Complainant’s CELEBREX mark because the mere addition
of related competing products’ names in the domain name does not defeat a
confusing similarity claim.”); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where respondent combined Complainant’s POKEMON
and PIKACHU marks to form the <pokemonpikachu.com> domain name); see
also Marriott Int’l, Inc. v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Furthermore, the
addition of the generic top-level domain “.com” does not distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Since Respondent
has failed to respond to the Complaint, the Panel accepts all reasonable claims
and allegations brought forth by Complainant as true and accurate. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the Complaint to be deemed true); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17,
2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
In addition, the
Panel interprets Respondent’s failure to respond to the Complaint as an
admission that Respondent lacks rights and legitimate interests in the <radleyacura.com>
domain name. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a response or
provided the Panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
There is nothing in the record to suggest that Respondent is
commonly known by the <radleyacura.com> domain name. Furthermore, there is nothing in the record
indicating that Respondent is licensed or authorized to register domain names
featuring the RADLEY mark. Therefore,
the Panel concludes that Respondent lacks rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii).
See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights
in the mark precede Respondent’s registration; (3) Respondent is not commonly
known by the domain name in question); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
Moreover,
Respondent’s domain name, which contains a confusingly similar variation of
Complainant’s mark, resolves to a website that features links to competing
automobile dealers and financers. Such
use is neither a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”)
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <radleyacura.com> domain name, which is a confusingly
similar variation of Complainant’s RADLEY mark, to market competing automobile
dealers and financers. Such competing
use is evidence that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business).
Respondent had
constructive or actual knowledge of Complainant’s RADLEY mark due to
Complainant’s registration of the mark with the USPTO. Furthermore, the Panel infers that
Respondent had actual knowledge of Complainant’s mark because Respondent uses the
domain name to market competing services.
Since Respondent registered the domain name with actual or constructive
knowledge, such registration constitutes bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
Moreover,
Respondent has registered and used the <radleyacura.com> domain
name to operate a website featuring links to Complainant’s competitors. The Panel infers that Respondent receives
click-through fees for diverting Internet users to these competing
websites. Additionally, since the
disputed domain name is a confusingly similar variation of Complainant’s RADLEY
mark, the likelihood of consumer confusion is high. Therefore, Respondent’s opportunistic use of the domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <radleyacura.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
February 18, 2005
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