AM General LLC v. Tom Dooley
Claim Number: FA2007001903103
Complainant is AM General LLC (“Complainant”), represented by Gerard T. Gallagher of Barnes & Thornburg LLP, US. Respondent is Tom Dooley (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehumveeking.com>, registered with 123-Reg Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2020; the Forum received payment on July 7, 2020.
On July 8, 2020, 123-Reg Limited confirmed by e-mail to the Forum that the <thehumveeking.com> domain name is registered with 123-Reg Limited and that Respondent is the current registrant of the name. 123-Reg Limited has verified that Respondent is bound by the 123-Reg Limited 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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2020 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@thehumveeking.com. Also on July 13, 2020, 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 August 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
On August 5, 2020, Respondent requested for additional time to respond because of COVID 19. On the same day, the Forum responded to Respondent’s request to the effect that:
The commencement emails and Written Notice were sent to Tom Dooley using the specified contact details, on July 13, 2020. Response was due by 11:59pm Central Time on August 3, 2020. Forum did not receive a response or a request for an Extension to file a response by the deadline. At this time the matter is with a Panelist and the time for filing a response has past.
On August 5, 2020, Complainant requested that the Panel deny Respondent’s request for additional time to respond to the Complaint in this matter. In the current matter, the Forum served Respondent with Written Notice of the Complaint (which set forth the deadline for Respondent to file a response) and the Complaint on July 13, 2020. The Notice and Complaint were sent to the very same e-mail address that Respondent uses today to request additional time. It would thus appear that Respondent had notice of the Complaint and the deadline for response no later than July 13, 2020. Furthermore, the current Covid-19 situation is obviously not a new development. If Respondent required more time, Respondent should have requested the additional time prior to expiration of the deadline for response. In light of the prior matter, Respondent is well aware of the consequences of failing to timely respond.
As the Panel agrees with Complainant, the Panel decided not to grant ‘Additional Time to Respond.’
A. Complainant
i) Complainant, AM General LLC, offers various goods and services in connection with its Humvee vehicle. Complainant has rights in the HUMVEE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,697,530, registered June 30, 1992). The disputed domain name <thehumveeking.com> is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s HUMVEE mark and simply adds the terms “the” and “king” as well as the “.com” generic top-level domain (“gTLD”) to form the disputed domain name.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to divert Internet users to Respondent’s website and trades off the goodwill associated with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent engages in a pattern of bad faith registration as evidenced by previous UDRP cases in which Respondent used the HUMVEE mark. Additionally, Respondent uses the disputed domain name to mislead and divert Internet users to Respondent’s website for commercial gain. Furthermore, Respondent had constructive and/or actual notice of Complainant’s rights in the HUMVEE mark based on the distinctiveness of the mark, registration with the USPTO, and previous UDRP rulings against Respondent that involved the HUMVEE mark.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on February 22, 2020.
2. Complainant has established rights in the HUMVEE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,697,530, registered June 30, 1992).
3. The resolving webpages of the disputed domain show that Respondent offers Complainant’s products and represents itself as “The HUMVEE King.”
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the HUMVEE mark based on registration with the USPTO (e.g., Reg. No. 1,697,530, registered June 30, 1992). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the HUMVEE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s HUMVEE mark and simply adds the terms “the” and “king” as well as a gTLD. The addition of generic terms and a gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to the HUMVEE mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to identify a respondent and even if a respondent appears to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). The WHOIS information of record notes “Tom Dooley” as the registrant and no information suggests Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to mislead and divert Internet users to Respondent’s website and trades off of the goodwill associated with Complainant. Under Policy ¶¶ 4(c)(i) and (iii), the use of a disputed domain name to divert Internet users to a respondent’s website and confuse consumers into believing an affiliation exists between the respondent and complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpages of the disputed domain showing Respondent offering Complainant’s products and representing itself as “The HUMVEE King.” Therefore, the Panel agrees with Complainant and finds that Respondent is not using the disputed domain name for 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith as evidenced by Respondent’s previous registration of a domain name featuring the HUMVEE mark and the UDRP ruling against Respondent in that case. Previous UDRP rulings against a respondent and a respondent’s registration of multiple domains featuring a complainant’s mark is considered evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”); see also YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Complainant provides WHOIS information showing Respondent previously registered the “humveeking.com” domain and that Respondent registered the <thehumveeking.com> domain name two days after a transfer of the “humveeking.com” domain to Complainant was granted. Thus, the Panel agrees with Complainant and finds that Respondent engages in a pattern of bad faith registration and therefore registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the domain name to divert Internet users to its website for commercial gain. The use of a disputed domain name to confuse consumers and divert them to a website offering competing products may be considered bad faith registration and use under Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). The Panel recalls that Complainant provides screenshots of Respondent’s website which diverts potential consumers of Complainant and offers Complainant’s products for sale. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thehumveeking.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 14, 2020
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