DECISION

 

The Hendrick Automotive Group (d/b/a Pleasanton Automall) v. Orbit Productions

Claim Number: FA0105000097329

 

PARTIES

The Complainant is The Hendrick Automotive Group d/b/a Pleasanton Automall, Pleasanton, CA, USA (“Complainant”) represented by John W. Crittenden, of Cooley Godward LLP.  The Respondent is Orbit Productions, Modesto, CA, USA (“Respondent”)  represented by John W. Villines, of JV Law.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pleasantonautomall.com>, registered with Tucows, Inc.

 

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.

 

James Alan Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 25, 2001; the Forum received a hard copy of the Complaint on May 29, 2001.

 

On June 4, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <pleasantonautomall.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@pleasantonautomall.com by e-mail.

 

A timely response was received and determined to be complete on June 25, 2001.

 

On June 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant has been doing business as PLEASANTON AUTOMALL since December 4, 1995.  Complainant is the principal owner of four automobile dealerships which do business as PLEASANTON AUTOMALL.  It was asserted that over the past five years Complainant had exclusively and extensively advertised the mark PLEASANTON AUTOMALL to promote recognition of the trade name and mark, currently spending $95,000.00 per month to advertise the mark.  It was asserted that it had advertised in print media, including the San Francisco Chronicle, San Jose Mercury News and the Contra Costa Times, as well as other newspapers.  Additional advertising was broadcast over radio stations, such as KGO, KCBS, KNBR and KFOX.  In addition, Complainant advertised PLEASANTON AUTOMALL over the Internet several venues, including its own websites, hendrickautomotive.com and hendrickauto.com.

 

Complainant maintained that over the past five years PLEASANTON AUTOMALL had become extremely well known in northern California and had developed substantial recognition among the consuming public.

 

It was asserted that the disputed domain name was identical to the Complainant’s mark.

 

Complainant maintained, Respondent had no legitimate rights or interest in the domain name.  Complainant sought to register pleasantonautomall.com only to learn it was registered to Respondent.  Complainant had not authorized Respondent to use PLEASANTON AUTOMALL.  Demand was made to surrender the domain name in

October 2000.

 

Respondent changed the site at pleasantonautomall.com to eliminate the reference to northern California dealerships and, instead claimed, “pleasantonautomall.com coming soon to Pleasanton, Texas.”  This was despite the fact that Respondent still linked to 204 California dealerships and no dealerships in Texas as of October 2000.  It was asserted that Respondent only changed the website in order to justify their bad-faith registration and retention of the domain name.  It was asserted on information and belief that there was no enterprise in Texas doing business as “PLEASANTON AUTOMALL.”

 

Complainant asserted there was bad faith registration and use.  It was asserted that, due to Complainant’s extensive advertising, Respondent knew or should have known of Complainant’s established mark when the domain name was registered in 1998.

 

Complainant asserted that because of Respondent’s pattern of advertising car dealerships in California and Nevada, Respondent was seeking to trade off Complainant’s goodwill and to prevent Complainant from reflecting its mark in a corresponding domain name.  It was asserted that Respondent registered the domain name primarily for the purpose of disrupting the Complainant’s business.

 

Complainant maintained that Respondent was using the domain name for commercial gain by attracting Internet users to its website and, thereby, creating a likelihood of confusion with Complainant’s mark as to the source sponsorship affiliation or endorsement of Respondent’s website.

 

In a Reply Brief, Complainant maintained that the response was supported by mere conclusions of Counsel.  There was no declaration by a principal of Respondent.  Respondent did not meet the evidentiary burden to rebut Complainant’s Declaration and other evidence that it established secondary meaning for its mark PLEASANTON AUTOMALL.

 

The fact that the Complainant used other services, marks and trade names concurrently in addition to PLEASANTON AUTOMALL did not negate Complainant’s rights in the PLEASANTON AUTOMALL mark.

 

It was asserted Respondent offered no evidence to rebut Complainant’s showing that, in addition to the rights it obtained in Alameda County, it had also developed common-law rights in the name throughout its entire trading area.  Complainant asserted that the evidence showed a reasonable inference could be drawn that Respondent and/or CDC, a partner, were aware of Complainant’s use of the PLEASANTON AUTOMALL trade name in the course of due-diligence activities.  Respondent did not meet the evidentiary burden to rebut inferences established by Complainant’s evidence and Respondent’s own admissions.

 

B.  Respondent

Respondent was described as a multi-media advertising company, which was affiliated with Consumer Data Corporation (“CDC”), a technology company that builds on-line data bases for automobile dealerships.  Respondent and CDC formed a strategic alliance to provide Internet users with a directory and community portal to find automobile dealerships in various United States cities and geographic regions.  This would enable consumers to find accurate and direct information on the Internet in regard to “brick and mortar” automobile dealerships located in the consumers’ geographic area.

 

Respondent identified a need for such service and created the concept of its trademark Local Virtual AutoMall to meet this need.  Respondent had purchased approximately 150 to 200 domain names which consisted of the city name plus “AutoMall.com”.  For each website, a list of all automobile dealerships in a given geographic area are listed, including contact information and/or a website link of all area dealerships was done free-of-charge to the public and for the dealerships.

 

Under Phase II of this plan, dealerships, “for fee” access a data system that enabled Internet consumers to obtain information concerning a dealership’s current automobile inventory.  Dealerships can also arrange for an “upgraded” listing.  Regardless of the decision to use “for fee” services offered by the Respondent, all dealerships remain listed on a particular local, virtual auto mall.

 

Respondent asserted that there was no attempt to create a “click and mortar” automobile dealership for actually selling vehicles.

 

Respondent asserted that it had never purchased a domain name for resale.

 

Respondent maintained that Complainant had not met the burden of proof, “PLEASANTON AUTOMALL” contained a geographic term relating to the city of Pleasanton, California and a generic, descriptive term, “AUTOMALL.”  Respondent maintained that Complainant had not acquired secondary meaning in the “PLEASANTON AUTOMALL” name and that Complainant could not establish “substantially exclusive and continuous use” of its alleged mark since 1995.

 

Respondent maintained that the worldwide web is a global communications medium.  Complainant using its acquired secondary meaning in northern California was asking the panel to deny any legitimate use of “PLEASANTON AUTOMALL” related domain name because of an alleged narrow secondary meaning in a small, geographic area. 

 

The city of Pleasanton and Complainant’s automobile dealerships lie on the outskirts of the greater San Francisco Bay area.  Respondent is located in Modesto, in the San Joaquin Valley, part of a different community, not geographically associated with the Bay area.   

Respondent denied actual knowledge of the Complainant until two years after Respondent registered the subject domain name.

 

Respondent maintained Complainant had not been aggressive in marketing the PLEASANTON AUTOMALL name until after the dispute arose with the Respondent.  Complainant had registered a large number of domain names in 1996 but did not attempt to register pleasantonautomall.com at the time, because Complainant was not actually using that particular name.  The domain names PleasantonAutoMall.org and PleasantonAutoMall.net were not registered by Complainant until one of its dealerships, Honda of El Cerrito did so.  Although these domain names have been registered by Complainant they are not currently being used.

 

Pleasanton-AutoMall.com was registered only after the dispute arose between the parties.  The website was suspiciously akin to Respondent’s Local Virtual AutoMalls.  The Complainant had provided no evidence that it was advertising under “Pleasanton Auto Mall,” prior to the date Respondent registered the subject domain name.  Complainant’s advertisement in local newspapers do not reference “Pleasanton Auto Mall” until December 22, 2000, which was after Respondent refused to transfer the domain name.   Advertisements prior to that date merely referenced individual dealerships.

 

The Complainant advertised its dealerships for many years as “Pleasanton Auto Village” by maintaining a large sign along Interstate Highway 580.

 

Complainant’s Fictitious Business Name provided only a rebuttable presumption that Complainant has the use of the trade name in the County, in which Registrant filed and is actually engaged in business.

 

Respondent urged that prior to this dispute the Local Virtual AutoMall at the subject website listed all the Complainant’s dealerships along with all of the other dealerships in Pleasanton, California, including hypertext links to the dealerships’ individual website.  Directing local consumers to Complainant’s dealerships in the city of Pleasanton was not bad faith.

 

The Respondent maintained that the decision to modify the content of its Local Virtual AutoMall to reflect information regarding the community of Pleasanton, Texas was an act of good faith with the intention to avoid a dispute.  Believing that Complainant’s threats had essentially doomed Respondent’s hope of good will among dealerships in Pleasanton, California, a business decision was made to target Pleasanton, Texas for a Local Virtual AutoMall.  This decision could not be deemed to be of bad faith since the action was taken after the dispute arose between the parties.  Respondent asserted that it was clear from the content on the site that it was a community portal geared to providing information regarding local “brick and mortar” automobile dealerships. The website was clearly affiliated with The AutoMallCity Network not to Complainant.  Contact information only consisted of a hypertext link to the Complainant’s individual dealership websites.  Thus, any confusion was not likely.

 

Respondent asserted a legitimate interest in the disputed domain name.  It has registered the name as one of many to create The AutoMallCity Network.  This was done in the effort to create a niche market that would benefit on-line consumers as well as “brick and mortar” dealerships.  In effect, Respondent and its partner had created a marketing tool for dealerships to use in their respective communities.  Respondent neither competed with the Complainant nor did it sell automobiles over the Internet.

 

Respondent sought to retain registration and use of the disputed domain name pleasantonautomall.com.

 

Respondent maintained that Complainant was engaging in reverse domain name hijacking.  It was using this proceeding to hijack Respondent’s legitimate domain name.  It was maintained that were the Complainant awarded the disputed domain name, it was well situated to plunder Respondent’s business concept.

 

FINDINGS:

(1)    The Complainant has done business under the PLEASANTON AUTOMALL, pursuant to the Fictitious Business Name registration in Alameda County, California, it has maintained since December 4, 1995.

 

(2)    The Complainant is the owner and operator of four automobile dealerships in Pleasanton, California, which are known as Pleasanton Auto Mall and Pleasanton Auto Village.

 

(3)    Respondent operates a multi-media advertising company, which, in partnership with Consumer Data Corporation, formed an alliance to create a directory and community portal to find automobile dealers at various locations in California, as well as other states, providing Internet consumers with a means by which they can locate information about vehicles from local dealerships and to market “for fee” services to the dealerships.  Collectively, these websites comprise a joint venture with its partner.

 

(4)    Pleasanton, California is a geographic place name referring to a city located in Alameda, County, California.

 

DISCUSSION

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

After reviewing all of the materials submitted by both the Complainant and the Respondent, this Panel concluded that the Complainant had failed to meet the burden of proof to establish an abusive domain name registration under the Uniform Domain Name Dispute Resolution Policy (the “Policy”).  The evidence supporting that Complainant’s Fictitious Business Name, PLEASANTON AUTOMALL, has acquired secondary meaning was given very little weight.  On the one hand, Complainant asserts that vast sums of money were expended for advertising and promoting the name.   Principal support for this proposition came from the Declaration of Ron Tye.  The Complainant could show little evidence that it advertised under the PLEASANTON AUTOMALL name prior to the time a dispute arose between the parties.  This consisted of several radio advertisements.  In a transcript for the ad dated December 7, 1998, “PLEASANTON AUTOMALL” is mentioned once and Infinity of Pleasanton in three places in the same text.  The text of the tape dated March 9, 1999 mentions Lexus of Pleasanton five times in the text noting that the dealership is located in the “PLEASANTON AUTOMALL just off Highway 580, at Santa Rita Road.”  The text of the tape dated September 1, 2000 mentions Volvo of Pleasanton three places in the text and does not mention Pleasonton Automall, identifying Volvo of Pleasanton as just off Highway 580 at Santa Rita Road.  The other evidence consisted of other items that appear to be dated after the dispute arose between the parties.

 

Certainly the fact that the Complainant maintains a highly visible road sign on Interstate 580, which identifies its various dealerships as being located at “PLEASANTON AUTO VILLAGE” is inconsistent with the other assertions Complainant makes in the effort to  establish its right to the disputed domain name.

 

In this case, there was no effort by the Respondent to offer a domain name for sale.  Clearly Respondent uses the disputed domain name in connection with an effort to market both consumers and automobile dealerships by creating a niche Internet virtual auto mall.  Respondent provided contact information and, if available, an Internet link to the individual dealerships in a given geographical area.  These activities consisted of legitimate business operations that were not in any direct competition with the Complainant.  Respondent did not sell vehicles.  The Complainant is engaged, it appeared from the evidence, wholly in the business of selling vehicles, primarily by “brick and mortar” dealerships located in Pleasanton, California, and uses its own websites to direct potential customers to its various dealerships.

 

This Panel concluded that the Complainant failed on the threshold issue.  The evidence is insufficient to show that the Complainant has established a trademark by its Fictitious Business Name registration in 1995.  Its pre-dispute efforts clearly identify PLEASANTON AUTOMALL as a geographic place.  Complainant also identifies the same geographic place as PLEASANTON AUTO VILLAGE by means of a large highway sign along Interstate 580.  Additionally, the evidence was insufficient to establish that this geographic place name had acquired secondary meaning.

 

The Policy requires that the Complainant first establish that it has protectable rights.

15 USC Section 1052(e)(2) provides that a geographically descriptive name is not eligible for trademark protection without proof through usage that, it has become a unique source identifier.  This principle of law has a long history. As early as 1872 in the case of Canal Co. v. Clark, 80 U.S. 311, (1872) the United States Supreme Court set forth the principle: 

      …the same reasons which forbid the exclusive  appropriation of generic names or of those merely descriptive of the article manufactured and which can be employed with truth by other manufacturers, apply with equal force to the appropriation of geographical names, designating districts of country. Their nature is such that they cannot point to the origin [personal origin] or ownership of the articles of trade to which they may be applied. They point only at the place of production, not the producer.

 

Canal Co. v. Clark, 80 U.S. 311, 13Wall. 311, 20 L. Ed. 581 (1872)).  See also City of Salinas v. Baughn, FA 97076 (Nat. Arb. Forum June 4, 2001).

 

Rights or Legitimate Interests

Although the Complainant failed to establish that the disputed domain name was identical and/or confusingly similar inasmuch as Complainant has failed to establish a protectable trademark under the Policy, the Panel nevertheless felt it was appropriate to discuss Respondent’s rights or legitimate interests.  It seems clear from the evidence that the Respondent is not Complainant’s competitor.  Respondent does not sell vehicles, either in real space or in cyber space.  Long before any notice of the dispute herein, Respondent embarked on a joint venture with its partner to create a niche market that would bring individual consumers and dealerships together over the Internet, in a fashion unique to the Internet.  It was concluded that the evidence demonstrated Respondent had rights and legitimate interests under Section 4(c)(i).  The evidence demonstrated that the Respondent used the domain name in connection with a bone fide offering of Internet services.

 

Registration and Use in Bad Faith

Since the Complainant has failed to establish the first two elements required to prove an abusive domain name registration, the Complaint must fail and so a discussion of Respondent’s bad faith in regard to the policies is unnecessary.  Respondent, however, asserts that Complainant engaged in reverse cybersquatting and that the proceedings, herein, amount to a bad faith abuse of the Policy and Rules.  However, after review of the submissions of both parties, herein, it was concluded that Complainant’s conduct did not amount to abuse of the process.  Complainant engaged in no more than a good-faith effort to protect what it believed to be its legitimate rights because of its Fictitious Business Name registration in 1995.

 

DECISION

Based on the findings and conclusions above, it was concluded that the Claimant has failed to prove the necessary elements to establish that is entitled to relief under paragraph 4(i) of the Policy.  Respondent has failed to establish that it is entitled to relief Under paragraph 15 of the Rules, it is therefore, directed that Respondent shall retain the disputed domain name pleasantonautomall.com.

 

 

James Alan Crary, Panelist

 

Dated: July 17, 2001