Royal Nissan, Inc. v. J. Luke Anthony
Claim Number: FA1004001322325
Complainant is Royal Nissan, Inc. represented by Steven L. Rinehart,
(“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <royalnissan.com>, registered with Enom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2010.
On April 30, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <royalnissan.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2010 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@royalnissan.com by e-mail. Also on May 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. Respondent’s <royalnissan.com> domain name is identical to Complainant’s ROYAL NISSAN mark.
2. Respondent does not have any rights or legitimate interests in the <royalnissan.com> domain name.
3. Respondent registered and used the <royalnissan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Royal Nissan, Inc., is
a Nissan automobile dealership in
Respondent, J. Luke Anthony, registered the <royalnissan.com> domain name on January 4, 1999. Respondent’s disputed domain name resolves to the third-party website <directautodeals.com> that displays third-party links and advertisements for competing automobile dealerships to Complainant.
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."
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(e), 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 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 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.
Complainant admits that it does not own a trademark
registration for its ROYAL NISSAN mark.
However, previous panels have determined that federal trademark
registrations are not necessary if Complainant can show sufficient secondary
meaning of its mark and can establish common law rights. See
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also
Complainant argues that it has established common law rights
in its ROYAL NISSAN mark through continuous, systematic and extensive use of
its mark since 1985 in relation to the sale of Nissan automobiles. Complainant submits evidence to show that it
has spent millions of dollars in marketing its ROYAL NISSAN mark in print
advertisements, radio and television advertisements, mailers, press releases
and Internet advertising. Complainant
further notes that over the last 30 years it has become the largest Nissan
automobile dealer in the state of
Complainant argues that Respondent’s <royalnissan.com> domain name is
identical to Complainant’s ROYAL NISSAN mark.
Respondent’s disputed domain name removes the space between the terms of
the mark and adds the generic top –level domain (“gTLD”) “.com.” Complainant contends that these changes are
not sufficient to distinguish the disputed domain name from its mark. The Panel agrees and finds that Respondent’s
disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have any rights or legitimate interests in the <royalnissan.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or legitimate interests in the <royalnissan.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <royalnissan.com> domain name pursuant to Policy ¶ 4(c). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant contends that Respondent is not authorized to
use Complainant’s mark and that Respondent is not commonly known by the
disputed domain name. The WHOIS
information for the <royalnissan.com>
domain name identifies “J. Luke Anthony” as the registrant and Respondent
offers no evidence indicating that it is commonly known by the <royalnissan.com> domain name. In light of the evidence on record the Panel
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii).
See Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not
commonly known by the <lilpunk.com> domain name as there was no evidence
in the record showing that the respondent was commonly known by that domain
name, including the WHOIS information as well as the complainant’s assertion
that it did not authorize or license the respondent’s use of its mark in a
domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant alleges
that Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. Complainant asserts that
Respondent’s disputed domain name resolves to the third-party
<directautodeals.com> website which features advertisements for
automobile dealers in competition with Complainant. The Panel finds that Respondent’s use of the
disputed domain name to resolve to a third-party website featuring
advertisements and links to automobile dealers in competition with Complainant
is not a use in connection with 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). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the identical <royalnissan.com> domain name to
advertise and provide third-party links to competing automobile dealerships is
evidence of Respondent’s bad faith registration and use. Complainant argues that such use creates a
disruption in Complainant’s business because potential customers are diverted
to the websites and businesses of Complainant’s competitors. The Panel finds that Respondent’s use of the
disputed domain name to redirect Internet users seeking Complainant’s
automobile dealership to the dealership of its competitors is evidence of
registration and use in bad faith under Policy ¶ 4(b)(iii). See
St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see
also
Complainant also contends that Respondent registered and
used the disputed domain name in bad faith because it has attempted to
intentionally attract Internet users to the website resolving from the disputed
domain name and presumably collects click-through fees from those businesses advertised
thereon. Complainant submits screen
shots from Respondent’s website that show the competing businesses
advertisements and links with no other content on the website. The Panel finds that Respondent has
registered and used the <royalnissan.com>
domain name in bad faith under Policy ¶ 4(b)(iv) where it has allowed the
disputed domain name to resolve to the <directautodeals.com> website
which displays advertisements and third-party links to Complainant’s
competitors, and presumably receives click-through fees in relation to those
advertisements and links. See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet traffic
to a commercial “links page” in order to profit from click-through fees or
other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Asbury Auto. Group, Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <royalnissan.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 2, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum