CarMax Business Services, LLC v. Sharon Gale / Internet/Web Consultants
Claim Number: FA2008001910123
Complainant is CarMax Business Services, LLC (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, Virginia, USA. Respondent is Sharon Gale / Internet/Web Consultants (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carmaxhomedelivery.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2020; the Forum received payment on August 26, 2020.
On August 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <carmaxhomedelivery.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 August 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@carmaxhomedelivery.com. Also on August 31, 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 September 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, CarMax Business Services, LLC, is a retailer of used cars. Complainant has rights in the CARMAX mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,941,353, registered Dec. 12, 1995). See Compl. Ex. B. Respondent’s <carmaxhomedelivery.com> domain name is confusingly similar to Complainant’s CARMAX mark because it incorporates the whole of the mark, merely adding the generic words “home delivery” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <carmaxhomedelivery.com> domain name. Respondent is not authorized to use Complainant’s CARMAX mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host third-party hyperlinks.
Respondent registered and uses the <carmaxhomedelivery.com> domain name in bad faith. Respondent offers the domain name for sale in excess of out of pocket costs. Additionally, Respondent disrupts Complainant’s business by hosting competing hyperlinks at the disputed domain. Further, Respondent had actual knowledge of Complainant’s rights in the CARMAX mark when the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a retailer of used cars.
2. Complainant has established its trademark rights in the CARMAX mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,941,353, registered Dec. 12, 1995).
3. Respondent registered the disputed domain name on March 22, 2020.
4. 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 disputed domain name to host third-party hyperlinks.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CARMAX mark based upon the registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration of the CARMAX mark with the USPTO (e.g., Reg. No. 1,941,353, registered Dec. 12, 1995). See Compl. Ex. B. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CARMAX mark. Complainant argues that Respondent’s <carmaxhomedelivery.com> domain name is confusingly similar to Complainant’s CARMAX mark because it incorporates the whole of the mark, merely adding the generic words “home delivery” and the “.com” gTLD. Addition of generic and/or descriptive terms and a gTLD to a mark is insufficient to negate confusing similarity under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Thus, the Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s CARMAX mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights and Legitimate Interests
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s CARMAX trademark and to use it in its domain name, adding the words “home delivery” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on March 22, 2020;
(c) 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 disputed domain name to host third-party hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <carmaxhomedelivery.com> domain name because Respondent is not authorized to use Complainant’s CARMAX mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Sharon Gale / Internet/Web Consultants” as the registrant and no information suggests that Complainant has authorized Respondent to use the CARMAX mark. See Compl. Ex. A. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <carmaxhomedelivery.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use but rather uses the disputed domain name to host third-party hyperlinks. Use of a domain name to display pay-per-click links is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 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 where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the webpage resolving at the disputed domain and claims the links present on the page redirect users to the websites of Complainant’s competitors. See Compl. Ex. F. Thus, the Panel agrees that Respondent does not use 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).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <carmaxhomedelivery.com> domain name in bad faith since Respondent offers the domain name for sale in excess of out-of-pocket costs. Offering a disputed domain name for sale for more than the reasonable costs associated with registration may evidence bad faith under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Complainant notes that it offered to pay reasonable documented out-of-pocket expense associated with the domain name, but Respondent demanded $107,500 instead. See Compl. Exs. G & H. The Panel therefore agrees with Complainant and finds bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant also argues that Respondent registered and uses the <carmaxhomedelivery.com> domain name in bad faith because Respondent disrupts Complainant’s business by hosting competing hyperlinks at the disputed domain name. Use of a disputed domain to link to websites of a complainant’s competitors may evidence bad faith disruption of business under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). As previously noted, Complainant provides a screenshot of the webpage resolving at the disputed domain name and claims the links present on the site redirect users to the websites of Complainant’s competitors. See Compl. Ex. F. Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the CARMAX mark when the <carmaxhomedelivery.com> domain name was registered. Actual knowledge of a Complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii) and may be shown from the fame of the mark and the use the respondent makes of the domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). As the Panel agrees with Complainant that Respondent had actual knowledge of Complainant’s rights in the CARMAX mark, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carmaxhomedelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 26, 2020
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