Ron Carter v. ACE Video Productions c/o Cheryl Culkin
Claim Number: FA0701000892999
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”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <roncarterchevrolet.com>, registered with Register.com, Inc.
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
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
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
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 <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.
Complainant, Ron Carter, operates a car dealership in the
Respondent registered the <roncarterchevrolet.com> domain name on
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.
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
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.
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
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.
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
The Panel concludes that Complainant has satisfied this element of the Policy.
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
Dated: March 2, 2007
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