Interstate Auto Center, Inc. v. New Ventures Services, Corp
Claim Number: FA2108001960330
Complainant is Interstate Auto Center, Inc. (“Complainant”), represented by Patrick J. Knecht, South Dakota, USA. Respondent is New Ventures Services, Corp (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interstateautocenter.com>, registered with Network Solutions, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 19, 2021. The Forum received payment on August 19, 2021.
On August 23, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <interstateautocenter.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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”).
In response to a deficiency letter from the Forum dated August 24, 2021, Complainant submitted an Amended Complaint to the Forum.
On August 26, 2021, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2021 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@interstateautocenter.com. Also on August 26, 2021, 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 September 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Interstate Auto Center, Inc., engages in the business of selling repairable vehicles. Complainant possesses common law trademark rights to the mark INTERSTATE AUTO CENTER in the geographic region where Complainant does business, which is nationwide. Complainant first began using the INTERSTATE AUTO CENTER mark in connection with its business in 1993 and has continuously used the mark since that time. Through Complainant’s continuous use, Complainant has established significant common law rights in its INTERSTATE AUTO CENTER mark. The <interstateautocenter.com> domain name is identical or confusingly similar to Complainant’s mark.
Complainant registered and has been using the domain name <interstateautocenter.com> since February of 1999. Unbeknownst to Complainant, Complainant’s registration of the domain name <interstateautocenter.com> lapsed on February 25, 2021. Shortly thereafter, Respondent acquired the domain name. The domain name compromises Complainant’s common law rights to the mark INTERSTATE AUTO CENTER in its entirety, as the domain name is now being used to detract Complainant’s customers away from Complainant’s business.
Respondent lacks rights and legitimate interests in the <interstateautocenter.com> domain name. Respondent is not commonly known by the domain name and does not use it for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent hijacked Complainant’s INTERSTATE AUTO CENTER mark as a domain name when Complainant’s registration was inadvertently allowed to lapse. Respondent is currently using the domain name to divert Internet users to a “directory site” with links to the websites of competing third parties for which Respondent likely receives “pay-per-click” revenue.
Respondent registered and uses the <interstateautocenter.com> domain name in bad faith because Respondent registered the domain name after Complainant’s registration was inadvertently allowed to lapse. Additionally, Respondent is wrongfully earning advertising revenue by displaying hyperlinks advertising Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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’).
Respondent’s <interstateautocenter.com> domain name is identical to Complainant’s mark and corporate name since, as mentioned, it incorporates the mark in its entirety. The inconsequential .com gTLD may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant registered the <interstateautocenter.com> domain name on February 25, 1999 and inadvertently allowed the registration to lapse on February 25, 2021. Respondent acquired the domain name shortly thereafter. It currently resolves to a “directory site” with pay-per-click links to “Repairable Vehicles Sd” and other sites of repairable vehicle dealers, including competitors of Complainant.
Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000). The use to which a prior registered domain name is being put may also be taken into account when considering this element. See Elk Retain Investors, LLC c/o Kravco Co. v. Peter Fritz, FA0307000167916 (Forum August 15, 2003) (finding that “Respondent registered the <shopconcordmall.com> domain name almost immediately after Complainant inadvertently permitted its domain name registration to lapse. While there is nothing inherently wrong with such a practice, what separates this situation from those where a clever domain name registrant legitimately registers a domain name that was released into the public domain is that Respondent registered this domain name because of the goodwill Complainant had built-up around its Concord Mall mark and the Internet traffic it had attracted to the <shopconcordmall.com> domain name while it was in Complainant’s possession.”)
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <interstateautocenter.com> domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Respondent has made no attempt to do so, thereby admitting that it has no rights or legitimate interests in the <interstateautocenter.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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;
(iii) 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 its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was aware of Complainant’s INTERSTATE AUTO CENTER mark when Respondent registered the <interstateautocenter.com> domain name and did so primarily for the purpose of disrupting Complainant’s business. Further, these circumstances satisfy the Panel that Respondent has used the domain name intentionally in an attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the goods or services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <interstateautocenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: September 27, 2021
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