Corwin Automotive Group v. D Pontiac
Claim Number: FA1703001721320
Complainant is Corwin Automotive Group (“Complainant”), represented by Ernest Grumbles of Adams Grumbles LLP, Minnesota, USA. Respondent is D Pontiac (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <corwintoyota.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2017; the Forum received payment on March 10, 2017.
On March 13, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <corwintoyota.com> domain name 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2017 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@corwintoyota.com. Also on March 21, 2017, 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 April 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink 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, Corwin Automotive Group, is a large automotive sales and service provider based in Fargo, North Dakota. In connection with this business, Complainant uses the CORWIN mark to promote its goods and services. Complainant has rights in the CORWIN mark based upon its 100-year history of using the mark, as well as a pending application with the United States Patent and Trademark Office (“USPTO”) (e.g., Ser. No. 87319471, filed Jan. 31, 2017). Respondent’s domain name, <corwintoyota.com>, is confusingly similar to Complainant’s CORWIN mark as it contains the mark in its entirety and appends the descriptive term “Toyota” and the generic top level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <corwintoyota.com>. Respondent is not commonly known by the disputed domain name and has failed to use <corwintoyota.com> for a bona fide offering of goods or services a legitimate noncommercial or fair use. Instead, the resolving page diverts Internet users looking for Complainant or Complainant’s goods and services to websites advertising services via pay-per-click advertisements and malicious software downloads.
Respondent should be considered to have registered and utilized <corwintoyota.com> in bad faith. Respondent registered the disputed domain name to intentionally attract Internet users looking for Complainant to Respondent’s websites for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <corwintoyota.com> domain name.
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(f), 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 (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.”).
Complainant argues it has used the CORWIN mark in connection with its automobile sales and service, lease financing, and online vehicle information. Complainant has a pending application with the USPTO (e.g., Ser. No. 87319471, filed Jan. 31, 2017). Registration of a mark with the USPTO is not required to establish rights in the mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant asserts common law rights in the CORWIN mark dating back to the first use of the mark in commerce in 1916. Complainant states it has used the CORWIN mark continuously in connection with its various automobile dealerships and is nationally known by the mark, with sales totaling over 500,000 vehicles. Complainant contends it CORWIN Toyota dealership in Fargo, ND has been in operation since 1985, with sales totalling over $110,000,000. Evidence of secondary meaning in a mark can support a finding that a complainant has common law rights in the mark. See Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in September 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). The Panel agrees that Complainant has established secondary meaning in the CORWIN mark. The Panel finds Complainant’s uncontested claims to be sufficient to establish the CORWIN mark has taken on a secondary meaning as it relates to Complainant’s business, and Complainant has common law rights in the mark.
Next, Complainant argues that Respondent’s domain name, <corwintoyota.com>, is confusingly similar to Complainant’s CORWIN mark as it contains the mark in its entirety and appends the descriptive term “Toyota” and the gTLD “.com.” The addition of descriptive words and gTLD’s are insufficient to differentiate a mark from a domain name pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that <corwintoyota.com> is confusingly similar to Complainant’s CORWIN mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <corwintoyota.com> as Respondent is not commonly known by <corwintoyota.com>, nor has Respondent been authorized by Complainant to register the domain name. Where a Response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially when a privacy service was utilized. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). The WHOIS information of record identifies Respondent first as “Domain Hostmaster, Customer ID : 72459717226243,” but per removal of the privacy sheild by the registrar as a result of the initiation of this proceeding, “D Pontiac” was revealed as the owner. The Panel finds pursuant to Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Next, Complainant argues that Respondent’s failure to use <corwintoyota.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use further demonstrates Respondent’s lack of rights or legitimate interests in the domain name. The resolving page diverts Internet users looking for Complainant or Complainant’s goods and services to search results, websites advertising services via pay-per-click advertisements, and malicious software downloads. Use of a resolving website to divert Internet users looking for Complainant or Complainant’s goods to advertising and malicious software downloads is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Respondent’s resolving website does not contain content and merely redirects users to other websites containing malicious content or advertising for similar car purchasing services. The Panel finds that Respondent has failed to use <corwintoyota.com> in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, which further demonstrates and finds further evidence of Respondent’s lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent has registered and is using <corwintoyota.com> in bad faith by intentionally attracting Internet users looking for Complainant to Respondent’s websites for Respondent’s commercial gain. Use of a domain name to divert customers seeking a complainant’s business for commercial gain can evidence a finding that a respondent has registered and used a disputed domain name in bad faith per Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent’s website resolves to pages containing competing advertisements and/or malicious software downloads, presumably for Respondent’s benefit. The Panel finds that Respondent has registered and used <corwintoyota.com> in bad faith pursuant to Policy ¶¶ 4(b)(iv).
Complainant argues that Respondent’s bad faith registration and use is further evidenced by the redirection to malicious software downloads via <corwintoyota.com>. Use of a domain name to redirect Internet users looking for Complainant’s website to malicious software downloads can provide support of a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been registered, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Respondent’s resolving website subjected users to pop-up advertising designed to deceive Internet users into installing malicious software. The Panel agrees with Complainant and finds more evidence of Respondent’s bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <corwintoyota.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 19, 2017
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