national arbitration forum

 

DECISION

 

Ron Carter v. ACE Video Productions c/o Cheryl Culkin

Claim Number: FA0701000892999

 

PARTIES

Complainant is Ron Carter (“Complainant”), represented by Michael Nimr, 3205 FM. 528, Alvin, TX 77511.  Respondent is ACE Video Productions c/o Cheryl Culkin (“Respondent”), 16718 Barkentine Ln, Friendswood, TX 77546.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <roncarterchevrolet.com>, registered with Register.com, 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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2007.

 

On January 19, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <roncarterchevrolet.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 January 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2007 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@roncarterchevrolet.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 16, 2007, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <roncarterchevrolet.com> domain name is identical to Complainant’s RON CARTER CHEVROLET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <roncarterchevrolet.com> domain name.

 

3.      Respondent registered and used the <roncarterchevrolet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ron Carter, operates a car dealership in the Houston area and has continuously used the RON CARTER CHEVROLET mark since 1981.  Complainant spends approximately $200,000 per month on television commercials promoting its dealership in the Houston metropolitan area.  

 

Respondent registered the <roncarterchevrolet.com> domain name on January 7, 2000 and uses it to promote competing car dealerships.

 

DISCUSSION

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.  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 (Nat. Arb. 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant does not own a trademark registration for the RON CARTER CHEVROLET mark but the Panel finds that ownership of a trademark registration is not required for Complainant to demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Complainant has operated a car dealership under the RON CARTER CHEVROLET mark since 1981.  Over these twenty-five years, the RON CARTER CHEVROLET mark has no doubt acquired secondary meaning in connection with Complainant.  As a result, the Panel finds that Complainant has establishing common law rights in the mark for purposes of satisfying Policy ¶ 4(a)(i).  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).

 

Respondent’s <roncarterchevrolet.com> domain name differs from Complainant’s RON CARTER CHEVROLET mark functionally in that Respondent has omitted the space between terms and added the generic top-level domain “.com.”  As both alterations are merely functional, they are largely irrelevant to a Policy ¶ 4(a)(i) analysis.  Consequently, the Panel finds the contested domain name to be identical to the mark under Policy ¶ 4(a)(i).  See W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).

 

The Panel concludes that Complainant has satisfied this element of the Policy.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the <roncarterchevrolet.com> domain name.  Complainant has the initial burden of making a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <roncarterchevrolet.com> domain name.  See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

There is no evidence in the record that Respondent is commonly known by the <roncarterchevrolet.com> domain name.  Respondent has registered the domain name under the name “ACE Video Productions c/o Cheryl Culkin,” and Complainant has not authorized or licensed Respondent to register a domain name incorporating its RON CARTER CHEVROLET mark.  Consequently, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometer.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent’s <roncarterchevrolet.com> domain name resolves to a website promoting car dealerships in direct competition with Complainant.  In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that the respondent had no rights or legitimate interests in the <jawsoflife.com> domain name as it was simply misdirecting Internet users searching for the complainant to the website of one of the complainant’s competitors.  Because Respondent is also diverting Internet users seeking information on Complainant’s car dealership to the websites of Complainant’s direct competitors and is likely receiving click-through fees, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). 

 

The Panel concludes that Complainant has satisfied this element of the Policy.

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <roncarterchevrolet.com> domain name to redirect Internet users to a website with links to Complainant’s direct competitors in the automobile industry, potentially disrupting Complainant’s business.  In EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000), the panel concluded that the respondent had registered and used the <eebay.com> domain name in bad faith by using it to promote auction sites competing with the complainant.  Similarly, Respondent’s use of the disputed domain name to feature competing car dealerships indicates that Respondent has registered and used the <roncarterchevrolet.com> domain name in order to disrupt Complainant’s business in bad faith according to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).

 

By using the <roncarterchevrolet.com> domain name to divert Internet users to competing websites, Respondent has also attempted to attract, for commercial gain, consumers seeking information on Complainant’s car dealership in order to presumably profit from click-through fees.  In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees.  Likewise, Respondent is taking advantage of consumer confusion as to the source, affiliation, sponsorship or endorsement of the disputed domain name and likely profiting from the goodwill associated with the RON CARTER CHEVROLET mark in the form of click-through fees.  The Panel finds Respondent’s registration and use of the <roncarterchevrolet.com> domain name to be in bad faith according to Policy ¶ 4(b)(iv).  See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).

 

The Panel concludes that Complainant has satisfied this element of the Policy.

 

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 <roncarterchevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  March 2, 2007

 

 

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