McWhinney Holding Company, LLLP v. wayne
volack
Claim Number: FA0607000748034
PARTIES
Complainant is McWhinney Holding Company, LLLP (“Complainant”), represented by Miriam Trudell, of Sheridan Ross P.C., 1560 Broadway, Suite 1200, Denver, CO 80202. Respondent is wayne volack (“Respondent”), 1305 Krameria St, Suite 174, Denver, CO 80220.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <autoplexatcenterra.com>, <centerraautoplex.com>, <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com>, <centerrahome.com>, <centerrahomes.com>, <centerramall.com>, <centerramotorplex.com>, <centerratoyota.com>, <motorplexatcenterra.com>, <motorplexcenterra.com> and <shopsatcenterra.com> registered with Go Daddy Software, Inc.
PANEL
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.
P-E H Petter Rindforth as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 13, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 14, 2006.
On July 13, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <autoplexatcenterra.com>, <centerraautoplex.com>, <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com>, <centerrahome.com>, <centerrahomes.com>, <centerramall.com>, <centerramotorplex.com>, <centerratoyota.com>, <motorplexatcenterra.com>, <motorplexcenterra.com> and <shopsatcenterra.com> domain names are registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. 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 July 18, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 7, 2006 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@autoplexatcenterra.com, postmaster@centerraautoplex.com, postmaster@centerrabmw.com,
postmaster@centerrachevrolet.com, postmaster@centerradodge.com, postmaster@centerragmc.com,
postmaster@centerrahome.com, postmaster@centerrahomes.com, postmaster@centerramall.com,
postmaster@centerramotorplex.com, postmaster@centerratoyota.com, postmaster@motorplexatcenterra.com,
postmaster@motorplexcenterra.com and postmaster@shopsatcenterra.com by e-mail.
A timely Response was received and determined to be complete on August
7, 2006.
A timely Additional Submission from the Complainant was received and
determined to be complete on August 9, 2006.
A timely Additional Submission from the Respondent was received and
determined to be complete on August 14, 2006.
On August 15, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr. P-E H Petter Rindforth as Panelist.
On August 23, 2006, the Panel
issued an Administrative Panel Procedural Order No. 1, referring to the fact
that the disputed domain names <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com>, and <centerratoyota.com>, are combinations of two separate trademarks,
owned by separate entities, and that a transfer of these domain names to the
Complainant may interfere with the rights of the third party trademark holders
(the holders of the BMW, CHEVROLET, DODGE, GMC and TOYOTA marks).
The Panel Order requested the Complainant provide the Panel with a signed letter of support from an authorized representative of each of the third party trademark holders, indicating support for the Complaint and consent to the Panel issuing an order transferring the disputed domain names <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com> and <centerratoyota.com>. The Complainant was given until September 4, 2006, to send the said letter to the Forum, and the due date for the decision was extended to September 6, 2006. Complainant’s response to the Panel Order was timely received by the Forum on August 23, 2006.
RELIEF SOUGHT
Complainant requests that the domain names <autoplexatcenterra.com>, <centerraautoplex.com>, <centerrahome.com>, <centerrahomes.com>, <centerramall.com>, <centerramotorplex.com>, <motorplexatcenterra.com>, <motorplexcenterra.com> and <shopsatcenterra.com> be transferred from Respondent to
Complainant.
Complainant requests, as reply to the Panel Order, that the domain
names <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com>
and <centerratoyota.com> be cancelled.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of one federal service mark registration for CENTERRA (No 3,088,197 – filed June 12, 2000 and registered May 2, 2006) and two pending federal service mark applications for CENTERRA and MOTORPLEX AT CENTERRA (as proved in Exhibit A of the Complaint).
Complainant claims to have been using the mark CENTERRA in connection with real estate related services, and more particularly, a commercial and residential real estate development area in Loveland, Colorado, since at least as early as September 2000. Complainant further states that the mark MOTORPLEX AT CENTERRA has been used in connection with the automobile dealership complex of its CENTERRA development since at least as early as October 28, 2005, and announced the planned opening of the MOTORPLEX AT CENTERRA complex in a press release on December 13, 2004 (Exhibit C).
Complainant claims to have unregistered common law trademark rights in “MOTORPLEX AT CENTERRA” for a car dealership complex.
Complainant argues that all of the fourteen disputed domain names are either nearly identical or confusingly similar to Complainant’s marks, with minor omissions, replacing MOTORPLEX with the generic AUTOPLEX, adding generic terms such as “Shops,” “Homes,” and “Malls” to CENTERRA, or reversing the primary terms of Complainant’s marks.
With regard to the domain names <centerrabmw.com>, <centerrachevrolet.com>,
<centerradodge.com>, <centerragmc.com> and <centerratoyota.com>,
these names incorporate Complainant's CENTERRA mark, which it uses in
connection with a car dealership complex, and also incorporate third party
marks of car companies, BMW, DODGE, TOYOTA, CHEVROLET and GMC.
Complainant
declares that the Respondent has no rights or legitimate interests in respect
of the domain names. Respondent has not
used the domain names in connection with a bona fide offering of goods
or services, but is using them to
misdirect Internet users to various search engine sites, which include links to
competitors of Complainant.
Finally,
Complainant states that Respondent has registered and is using the domain names
in bad faith.
Complainant’s
marks are known by registration and/or by press releases and reports in local
newspapers, all predating Respondent’s registration of the fourteen domain
names. Thus, Respondent was either actually aware or constructively aware of
Complainant’s marks at the time of the registration of the domain names.
Complainant concludes that Respondent has registered the domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct. In addition, the Respondent has registered other domain names confusingly similar to trademarks owned by third parties (WHOIS records for these domain names provided as Exhibits K – R of the Complaint).
B. Respondent
Respondent states that the mark CENTERRA is not exclusive to Complainant, as there are a number of other registered trademarks – of other entities – using the same term.
Complainant’s mark is not famous, nor is it distinctive and the pending application for CENTERRA has not proceeded to registration after more than five years. Registration of CENTERRA or MOTORPLEX AT CENTERRA is not assured or guaranteed.
Complainant’s registration for CENTERRA is for the plain word with no additional words. Complainant is not the holder of the domain names <centerra.com>, but is using <centerracolorado.com>.
Respondent points out that under Complainant’s identified website news section of events associated with Complainant there is no mention anywhere of a shopping complex, motorplex, press releases or any activity anywhere, at any time for the last 5 years. Therefore, there is no public association with Complainant’s mark, source, goods and services.
Respondent argues that his registered domain names either incorporate common words in which Complainant has no exclusive rights, or – such as for <centerrabmw.com>, <centerrachevrolet.com>, etc. – are unrelated to Complainant’s goods and services.
Respondent refers to the fact that at the bottom of each of the websites connected to the domain names, there is a disclaimer that states that the domain owner and Sedo maintain no relationship with reference to any specific service or trademark and domain owner.
Respondent claims to have established rights and legitimate interest in all of the disputed domains i) because they incorporate a generic term, and ii) he has used the domain names more than eighteen months prior to any notification of this dispute in connection with a bona fide offering of goods and services.
Respondent denies he had actual knowledge of Complainant in the CENTERRA mark at the time the domain names were registered.
Further, Respondent denies any responsibility for the links on Respondent’s websites, as they are auto-generated by a third party (Sedo) and change all the time.
There are no disputes or complaints concerning any of Respondent’s other domain names.
Respondent denies having registered the fourteen domain names with the intent to sell or disrupt Complainant’s business, to prevent Complainant from reflecting its mark in a domain name, or to confuse people looking for Complainant’s website by creating a likelihood of confusion.
C. Additional Submissions
Complainant:
Complainant’s position remains the same that all fourteen domain names are virtually identical and confusingly similar to the service marks CENTERRA and MOTORPLEX AT CENTERRA in which Complainant has rights.
The U.S. Application Serial No. 76/068605 for the mark CENTERRA is now registered for the services of “real estate management, real estate listing, real estate agencies, real estate investment and leasing of real property,” providing a nationwide constructive use date of the mark CENTERRA of June 12, 2000 for such services.
Respondent registered all fourteen domain names containing the marks CENTERRA and MOTORPLEX AT CENTERRA well after June 12, 2000, the date Complainant’s rights were established in CENTERRA through Complainant's filing of its U.S. Application and well after Complainant’s announcements in press releases of its use of MOTORPLEX AT CENTERRA.
With regard to Respondent’s claims that (a) Complainant’s mark is not famous, (b) Complainant is not the owner of <centerra.com>, <centerra.net>, or <centerra.org>, (c) Complainant’s mark CENTERRA is not distinctive/Complainant is not the exclusive owner of the CENTERRA mark, these claims are not required elements to prove a violation of ICANN’s UDRP Policy.
Respondent has not shown that he has any rights or legitimate interests in respect of the domain names. Since Respondent admits to having no knowledge of the links provided on all the web sites in question, Respondent cannot be found to be using the domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Complainant disagrees with Respondent’s assertion that there is no likelihood of confusion between his use of the domains and Complainant’s marks.
Respondent cites to the existence of a disclaimer that appears at the bottom of all fourteen web pages. However, numerous Panels have noted that disclaimers do not negate a likelihood of consumer confusion and do not negate a finding of bad faith use and registration of a domain name. In addition, numerous Panels have found that domain name owners utilizing Sedo’s domain parking services have registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant notes that not all of the domain names have been in use for over eighteen months, since some domains were registered as recently as September 2005 and November 2005.
Respondent:
The CENTERRA mark is not famous or even distinctive to Complainant and Complainant has not submitted any evidence of actual confusion of this requested trademark and Respondent’s domain names.
Respondent has been utilizing all motorplex, autoplex, Centerra car domain names, homes, mall, and shops at Centerra domains for over one year prior to initiation of any Complaint filed by Complainant.
Any potential buyers associated with Complainant will never use the Internet. The consumers of Respondent and Complainant are clearly different from each other, and Respondent is not associated with any of the goods and services of Complainant.
FINDINGS
Complainant is the owner of the U.S. Trademark Registration No. 3,088,197 – filed June 12, 2000, and registered May 2, 2006 – in respect of “real estate management, real estate listing, real estate agencies, real estate investment and leasing of real property,” International Class 36. Complainant is also the owner of the U.S. Application No. 76/068,605 for the mark CENTERRA (now registered) and U.S. Application No. 78/897,297 for the mark MOTORPLEX AT CENTERRA.
Respondent registered the disputed domain names between November 24, 2003 and November 9, 2005.
On June 8, 2006, Complainant contacted
Respondent by e-mail demanding Respondent to discontinue the use of all of the
fourteen domain names and to transfer them to Complainant (Exhibit H of the
Complaint). Respondent replied on June
20, 2006 (Exhibit I), denied the allegations made by Complainant and referred
to the same arguments as in the above Response.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 CENTERRA trademark in the U.S. through registration No. 3,088,197 (filed
June 12, 2000 and registered May 2, 2006). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also 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.”).
The Panel also finds that the effective date of Complainant’s rights in the CENTERRA mark pursuant to Policy ¶ 4(a)(i) is the filing date of Complainant’s trademark registration with the USPTO.
Regarding the pending trademark application for MOTORPLEX AT CENTERRA, the Panel is not convinced by Complainant’s arguments that Complainant has established unregistered common law rights in the same, based on the limited evidence of use.
Respondent’s domain name registrations <autoplexatcenterra.com>, <centerraautoplex.com>, <centerrahome.com>, <centerrahomes.com>, <centerramall.com>, <centerramotorplex.com>, <motorplexatcenterra.com>, <motorplexcenterra.com> and <shopsatcenterra.com>
all incorporate
Complainant’s mark CENTERRA, in combination with generic words which are – in
addition – more or less associated with Complainant’s business activities.
The mere addition of generic terms to a mark
is insufficient to distinguish Respondent’s domain names from Complainant’s
mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term).
Respondent’s domain name registrations <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com>, and <centerratoyota.com> incorporate
Complainant’s mark CENTERRA and the marks of third parties. The addition of famous car trademarks to
Complainant’s mark does not alter the fact that these domain names are similar
to CENTERRA and associated with Complainant’s business related to MOTORPLEX AT
CENTERRA.
Furthermore, the addition of the generic top-level
domain “.com” is insufficient to distinguish the domain names from Complainant’s mark.
Accordingly, the
Panel finds that the disputed domain names are all confusingly similar to
Complainant’s CENTERRA trademark.
Policy ¶ 4(a)(i) has been
satisfied.
Respondent is obviously not an authorized agent or licensee of Complainant’s products or services and has no other permission to apply for any domain name incorporating Complainant’s trademarks. Respondent is not commonly known by the domain names.
Complainant avers that Respondent is using the disputed domain names to operate websites offering links to third-party websites, some of which compete with Complainant’s business. Respondent claims to have established rights in the domain names through this use, however it is well established that such use cannot constitute a bona fide use of the domain names pursuant to Policy ¶ 4(c)(i) of the UDRP. See TM Acquisition Corp. v. Gary Lam, FA 280499 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s CENTERRA mark and therefore Respondent registered and used the domain names in bad faith. Registration of a domain name that is confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Even if no CENTERRA mark was registered in the name of Complainant by the time of Respondent’s fourteen domain name registrations, there were pending applications. Respondent has, in his Response, demonstrated his knowledge of and ability to search the USPTO Registry and the fact that he registered no less than fourteen domain names incorporating Complainant’s mark, according to pending applications and use, strongly suggests that Respondent had Complainant’s CENTERRA marks in mind. 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.”).
In addition, Respondent registered some of the disputed domain names soon after the press release regarding Complainant’s development of real estate. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Furthermore, Complainant asserts that Respondent’s disputed domain names resolve to websites featuring links to third-party websites, some of which compete with Complainant, and for which Respondent presumably achieves commercial gain. The Panel therefore finds that Respondent is using the disputed domain names to divert Internet users to Respondent’s websites for commercial gain.
Respondent has also registered five domain names that are combinations of Complainant’s mark CENTERRA and well known automobile trademarks. In commenting on this fact, Respondent’s only statement is that “these domains are unrelated to Complainant’s Goods and Services.” The Panel finds it most likely that Respondent is well aware of the fact that the said trademarks are the property of other entities and that Respondent has no rights to use them or incorporate them in any domain names. The registration of these five domain names adds to the conclusion that Respondent registered, and is using, all fourteen domain names in bad faith.
Referring to all the
above circumstances, the Panel concludes that Respondent has registered and
used the domain names in bad faith. The
Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autoplexatcenterra.com>, <centerraautoplex.com>, <centerrahome.com>, <centerrahomes.com>, <centerramall.com>, <centerramotorplex.com>, <motorplexatcenterra.com>, <motorplexcenterra.com> and <shopsatcenterra.com> domain names be TRANSFERRED from
Respondent to Complainant, and that the <centerrabmw.com>, <centerrachevrolet.com>, <centerradodge.com>, <centerragmc.com>, and <centerratoyota.com> domain
names be CANCELLED.
P-E H Petter Rindforth, Panelist
Dated: September 6, 2006
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