Caliber Holdings Corporation v. Euro Capital
Claim Number: FA1907001852728
Complainant is Caliber Holdings Corporation (“Complainant”), represented by Norton Rose of Fulbright US LLP, Texas, USA. Respondent is Euro Capital (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calibercolision.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2019; the Forum received payment on July 18, 2019.
On July 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <calibercolision.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2019 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@calibercolision.com. Also on July 19, 2019, 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 formal Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
On August 13, 2019, Complainant filed a supplemental written statement pursuant to Rule 7 of the Forum Supplemental Rules to the Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). On the following day Respondent also filed a supplemental written statement pursuant to Rule 7 of the Supplemental Rules. Each of these submissions were deemed to be been submitted in a timely manner.
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 formal response from Respondent, but noting the informal submissions provided by Respondent in this matter.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Caliber Holdings Corporation, is the nation’s leading collision repair provider. Complainant has rights in the CALIBER COLLISION mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 4,534,265, registered May 20, 2014). Respondent’s <calibercolision.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire CALIBER COLLISION mark, merely removes a letter “l” and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <calibercolision.com> domain name. Respondent is not licensed or authorized to use Complainant’s CALIBER COLLISION mark and is not commonly known by the Domain Name. Additionally, Respondent is not using the <calibercolision.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects Internet users to the website of Complainant’s competitor. Further, Respondent attempts to divert Internet users by typosquatting.
Respondent has registered and uses the <calibercolision.com> domain name in bad faith. Respondent uses the Domain Name to disrupt Complainant’s business and attract, for commercial gain, users who are then redirected to a website that offers services that compete with Complainant. Moreover, Respondent engages in typosquatting by removing a letter “l” in the CALIBER COLLISION mark in creating the Domain Name. Finally, Respondent must have had constructive knowledge of Complainant’s rights in the CALIBER COLLISION mark prior to registering the Domain Name.
B. Respondent
Respondent failed to submit a Formal Response in this proceeding and did not request a 3-member Panel. On July 23, 2019 and July 26, 2019 Respondent sent two e-mails to the Forum that amount to an informal response. Those are set out in their entirety below:
“This complaint is contested and needs to be immediately retracted before a lawsuit is commenced against all parties involved. Our company makes no representations that this domain is related to Caliber Holdings and therefore the complaint is unfounded. Every single domain in existence is spelled similar to other domain names. For example, Bank of America’s domain is bofa.com. That does not mean anyone someone with the domain bofaa.com or cofa.com can have their domains taken from them and handed to Bank of America because they are similar. Nobody has a right to take anothers online property simply because there is a name spelled somewhat similar to someone elses. Another example would be if someone owned the domain bestbuy.com Best Buy the electronic store does not get to rob the owner of BestBuy.com of their property rights just because it’s a domain that has their company name in it. BestBuy.com could have an unlimited number of meanings and could be a site that sells pet supplies for that matter. Just like Craiglist had to purchase Craigslist.com from the domain owner for millions of dollars in order to obtain it. Craigslist does not immediately own the right to any domain name spelled the same or similar to itself. It has to purchase them if it wants them which it did. Countless companies purchase domains similar to theirs for large sums of money if they feel the domains are beneficial to them. They are not entitled to them automatically. The Supreme court has made this very clear that domain names are immune to copyright. We demand to know the price of a 3 panel committee immediately and we want it on record that this complaint is contested and anyone that compromises our business will be challenged in a court of law here in Texas.”
The Forum then responded to the e-mail above, providing Respondent with the deadline to submit a formal response and the fee for a 3-Member Panel. On July 26, 2019, Respondent sent the additional response below.
“There is no law that states that an internet domain name that is similarly spelled to a company name must be handed over to the company if they want it. That alone is not grounds to take anyone’s virtual property from them. If anything happens to our domain we will sue all parties involved to the fullest extent of the law.”
C. Additional Submissions
Complainant’s supplemental written statement sought to draw the Panel’s attention to Respondent’s registration of the domain name <calibercollision.co> domain name and the existence of a portfolio of 72 domain names, which Complainant submits may infringe the rights of third parties. Complainant’s supplemental written statement implicitly requests that Panel add the domain name <calibercollision.co> to the present proceeding.
Respondent’s supplemental written statement is accompanied by a cover letter, noting that Respondent considers the e-mail of July 23, 2019 to be a formal Response to the Complaint; The Panel has had regard to that response as well as the e-mail of July 26, 2019. Respondent’s supplemental written statement notes that Complainant does not own any trade marks that precisely correspond to the <calibercolision.com> domain name and that, because of that, Complainant should not be able to take the domain name away from Respondent. Respondent also notes that neither the <calibercolision.com> domain name nor the <calibercollision.co> domain name is being used to represent Complainant in any way. Finally Respondent threatens to sue “all parties involved for loss of business profit in association with potential losses as well as legal fees”.
Complainant’s additional submission does not explicitly request that the Complaint be amended to add the <calibercollision.co> domain name but invites Panel to make an order that the <calibercollision.co> domain name be transferred to Complainant.
As a general rule, subject to the procedural requirements of the Provider, domain names held by the same registrant may be added to a complaint before notification to the respondent/formal commencement of the relevant proceeding. When a request to add a domain name is received after the Complaint has been notified to Respondent (and particularly in present the case where the request is received after the Panel has been appointed) the WIPO Jurisprudential Overview 3.0 at ¶ 4.3 provides that “Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed.” See also Confédération nationale du Crédit Mutuel v. iPage, D2013-1574 (WIPO November 28, 2013).
In the present case the <calibercollision.co> domain name was registered before the Complaint was filed and there is no reason to further delay the proceeding to allow re-notification of the amended Complaint. The Panel declines to add the <calibercollision.co> domain name to the present proceeding and makes no orders in respect of that domain name.
Notwithstanding the decision not to add the <calibercollision.co> domain name, the Panel must consider whether to accept the parties’ Additional Submissions. While noting the existence of Supplemental Rule 7, the Panel retains the discretion to decide whether to accept additional submissions. See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant). If an additional submission simply reargues the same points, there is no reason to accept it; on the other hand, if the additional submission addresses arguments in the Response that Complainant could not have anticipated, the Panel may allow the additional submission.
In the present case the Complainant’s supplemental written submission makes facts and arguments that could easily have been asserted in the Complaint. To the extent the additional submission addresses facts or arguments that should have been made in the Complaint, in particular about the number of domain names registered by Respondent (being the result of a reverse Whois search that could have easily been compiled before filing Complainant), the Panel will have limited regard to it.
Respondent’s supplemental written submission simply restates the material that was in Respondent’s July 23 and July 26 e-mails. The Panel will not disregard this submission but note that it adds little to the existing submissions filed in this matter.
Complainant holds trademark rights for the CALIBER COLLISION mark. The Domain Name is confusingly similar to Complainant’s CALIBER COLLISION mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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.
The Panel has reviewed Respondent’s submissions and has confirmed that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve such disputes in accordance the Policy.
Complainant has rights in the CALIBER COLLISION mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 4,534,265, registered May 20, 2014). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <calibercolision.com> domain name is confusingly similar to Complainant’s mark as Respondent incorporates the CALIBER COLLISION mark in its entirety and merely removes the letter “l” and adding the e “.com” generic top-level domain (“gTLD”). Misspelling of a complainant’s mark by removing letters and adding a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire KLEIN TOOLS mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CALIBER COLLISION mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Euro Capital” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website at www.importcollision.com that offers automotive collision repair services under the IMPORT COLLISION name. These services are in direct completion to the automotive collision repair services offered by the Complainant under its CALIBER COLLISION Mark and promoted from its website at www.calibercollision.com. There is no attempt to disclaim or otherwise make clear the absence of any association or connection with Complainant. The use of a domain name to redirect Internet users to Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does 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).”). The Panel has considered the e-mails sent by Respondent and finds that there is no information contained in them that would provide a basis for a finding that Respondent’s use of the Domain Name is for bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, April 19, 2017, Respondent had actual knowledge of Complainant’s CALIBER COLLISION mark. Complainant and its CALIBER COLLISION mark are well known in the field of collision repair services and Domain Name resolves to a website offering services that directly compete with the Complainant. There is no explanation provided, and none are immediately obvious, why a party would register a domain name consisting of a slight misspelling of the CALIBER COLLISION mark and redirect it to the website of a competitor (one trading under a different name) unless it was done with awareness of and an intention to take advantage of the reputation of the CALIBER COLLISION Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s CALIBER COLLISION Mark for commercial gain and to disrupt the business of a competitor by using the confusingly similar Domain Name to resolve to a website operated by a competitor. The use of a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calibercolision.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 17, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page