General Motors LLC v. Quirk Nissan, Inc.
Claim Number: FA1505001619709
Complainant is General Motors LLC (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Quirk Nissan, Inc. (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevynewroads.com>, registered with Register.com, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015.
On May 18, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <chevynewroads.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2015 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@chevynewroads.com. Also on May 27, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant asserts trademark rights in CHEVY and NEW ROADS alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the maker of CHEVROLET automobiles and is the owner of trade mark registrations with the United States Patent and Trademark Office ("USPTO") for CHEVY (inter alia, Reg. No. 1,494,385 from November 23, 1987) and FIND NEW ROADS (Reg. No. 4,700,290, filed Jan. 7, 2013, registered Mar. 10, 2015);
2. Respondent appears to be[1] a NISSAN automobile dealership located in Massachusetts;
3. the disputed domain name was registered on October 7, 2013;
4. there is no evidence that the domain name is in use; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.
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)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for the trademarks CHEVY and FIND NEW ROADS the Panel is satisfied that it has trademark rights in those expressions (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panelists agree that for the purposes of assessing the similarity of the trademark and the domain name, the generic top-level domain gTLD, “.com”, can be ignored (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant’s submission would seem to be that the domain name is confusingly similar to a combination of Complainant’s two trademarks. Complainant asserts that “it is well established that a domain name consisting of two combined trademarks is confusingly similar to those trademarks.”
Panel considers that the position is not nearly so clear is claimed by Complainant. There has been lively debate as to how confusing similarity is to be assessed in cases where a disputed domain name combines more than one trademark of a complainant (as is the case here), or combines a complainant’s trademark with another trader’s (frequently a competitor’s) trademark.
A line of decisions favours the argument which Complainant here would seem to advance (see, for example, McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) finding confusing similarity where the respondent combined the complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name).
Nevertheless, Panel has approached the comparison from first principles and finds that once the gTLD is discounted, the residual term “chevynewroads” is confusingly similar to the registered trademark CHEVY since it takes that distinctive mark and, within the context of Complainant’s business, adds the descriptive words, “new roads”. The trademark is unchanged and it remains the identifiable and distinctive part of the composite term. There is accordingly no need to further enter into the debate regarding portmanteau terms.
Panel finds that the domain name is confusingly similar to, at least, Complainant’s CHEVY trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant makes the unsupported statement that the domain name has been used. In the absence of a Response Panel has no reason to question that claim and so finds that there has been no bona fide use of the domain name either (i) because there has been no use, or (ii) because the publicly available WHOIS information identifies the owner of the domain name as “Quirk Nissan, Inc. Quirk Nissan, Inc.” and so, not only is there no prima facie evidence that Respondent might be commonly known by the disputed domain name, but any likely use would be in connection with a competing car dealership.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant argues for the application of subparagraph 4(b)(iv). Panel cannot agree. Although Panel has found the domain name to be confusingly similar to Complainant’s trademark, the domain name is not shown to be in use and so there is no evidence that Respondent benefits commercially from that confusion.
Nonetheless, Panel finds registration and use in bad faith. There is evidence that the domain name was registered less than one month after the release of a newspaper article featuring the FIND NEW ROADS trademark. Panel finds on the balance of probability that Respondent acted opportunistically at that time and registered the domain name in bad faith.
Further, and given both the proven notoriety of the CHEVROLET / CHEVY names and the fact that Respondent operates a car dealership for a competing marque, Panel finds “use” in bad faith according to the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003.
Complaint has established the third and final limb 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 <chevynewroads.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 30, 2015
[1] Panel has come to this conclusion based on any evaluation of all of the material before it, after taking account of the possibility that an unknown third party has registered the domain name using the name of another.
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