Jupiter Chevrolet LP v. Total Net Solutions
Claim Number: FA0802001142632
Complainant is Jupiter Chevrolet LP (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jupiterchevrolet.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 4, 2008; the National Arbitration Forum received a hard copy of the Complaint February 5, 2008.
On February 8, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <jupiterchevrolet.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 2008, 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@jupiterchevrolet.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <jupiterchevrolet.com>, is identical to Complainant’s JUPITER CHEVROLET mark.
2. Respondent has no rights to or legitimate interests in the <jupiterchevrolet.com> domain name.
3. Respondent registered and used the <jupiterchevrolet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jupiter Chevrolet, LP, is car dealership that
offers Chevrolet vehicles for sale.
Complainant has continuously used its JUPITER CHEVROLET mark to sell Chevrolet
vehicles since it registered its business in
Respondent registered the <jupiterchevrolet.com> domain name November 27, 2005. Respondent’s disputed domain name resolves to a website that displays links to third-party websites that seek to compete directly with Complainant’s Chevrolet vehicle dealership business.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant has not registered its JUPITER CHEVROLET mark. The Panel finds registration of the JUPITER
CHEVROLET mark is unnecessary under Policy ¶ 4(a)(i),
provided Complainant can establish common law rights in the mark. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist);
see also
Complainant has used its JUPITER CHEVROLET mark continuously since 1993 in connection with its Chevrolet vehicle dealership business. Additionally, Complainant has expended significant monetary effort in promoting its JUPITER CHEVROLET mark. Therefore, the Panel finds Complainant submitted sufficient proof to establish common law rights in its JUPITER CHEVROLET mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s <jupiterchevrolet.com>
domain name is identical to Complainant’s JUPITER CHEVROLET mark pursuant to
Policy ¶ 4(a)(i) because it completely incorporates Complainant’s mark with the
deletion of a space, a character that is not permissible in a domain name. Additionally, the generic top-level domain
(“gTLD”) “.com,” is not relevant in determining whether a disputed domain name
is confusingly similar to a mark. See
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant presented a sufficient prima
facie case to support its allegations.
Respondent failed to submit a response to these proceedings and in such
circumstances, the Panel may assume that a Respondent does not have rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, this
Panel examines the record to determine whether the proof suggests that Respondent
has rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (holding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide “concrete evidence that it has rights to or
legitimate interests in the domain name at issue”); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
The disputed domain name that Respondent registered, <jupiterchevrolet.com>, resolves to a website that displays links to third-party websites that attempt to compete with Complainant’s vehicle dealership business. Respondent presumably receives compensation for displaying these links. The Panel finds this diversionary use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user).
Also, Respondent does not have
rights or legitimate interests in the disputed domain name because Respondent
is not commonly known by the <jupiterchevrolet.com>
domain name. The record indicates
Respondent’s name is “Total Network Solutions,” and the WHOIS information reflects
“Moniker Privacy Services,” neither of which suggest that Respondent is
commonly known by the disputed domain name.
Additionally, the record demonstrates Complainant never authorized
Respondent to use its JUPITER CHEVROLET mark.
Therefore, the Panel finds Respondent is not commonly known by the <jupiterchevrolet.com> domain name pursuant
to Policy ¶ 4(c)(ii).
See Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s disputed domain name resolves to a website that
displays links to Complainant’s competitors, who offer Chevrolet vehicles for
sale. The Panel finds that Respondent’s
use constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640
(Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to
websites that list links to competitors of Complainant, evidence that
Respondent intends to disrupt Complainant’s business, a further indication of
bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent presumably receives click-through fees for
displaying links to Complainant’s competitors on the website that resolves from
the confusingly similar <jupiterchevrolet.com>
domain name. This permits the Panel to
make an inference that Respondent opportunistically is attempting to profit
from the goodwill associated with Complainant’s mark, which also is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if the respondent profits from its diversionary use of the complainant's mark
when the domain name resolves to commercial websites and the respondent fails
to contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also
Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
The Panel finds that Complainant 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 <jupiterchevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 3, 2008.
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