Jim Butler Imports LLC and
Jim Butler Chevrolet, Inc. v. Vickie Poucher
Claim Number: FA1007001334670
PARTIES
Complainant is Jim Butler Imports LLC and Jim
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jimbutlerkia.com> and <jimbutlermitsubishi.com>,
registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 12, 2010.
On July 12, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <jimbutlerkia.com> and <jimbutlermitsubishi.com>
domain names are registered with GoDaddy.com,
Inc. and that the Respondent is the current registrant of the names. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 19, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of August 9,
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@jimbutlerkia.com and
postmaster@jimbutlermitsubishi.com. Also
on July 19, 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.
A timely Response was received and determined to be complete on July 28, 2010.
Complainant’s Additional Submission was timely received on July 30,
2010 in compliance with Supplemental Rule 7.
On August 6, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran, as Panelist.
In response to an Order from the Panel, a Supplemental Submission was
received was received on August 16, 2010.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that it has rights in the name Jim Butler due to
its operation of vehicle dealerships bearing that name as part of the
dealership names for more than 40 years and in the immediate past ten years has
spent over $6 Million on advertising for the
various Jim Butler car dealerships and their services and owns websites with
domain names that include Jim Butler as part thereof.
Complainant also asserts that the domain names at issue, <jimbutlerkia.com> and <jimbutlermitsubishi.com>,
are confusingly similar to its Jim Butler marks being incorporated as a
whole therein.
In
addition, Complainant contends that Respondent has no legitimate rights or
interests in the disputed domain names since Respondent is not commonly known by either of the domain
names, the websites at the disputed domain names are not associated with anyone
named Jim Butler and are merely "link farms" containing
"Sponsored Links" and "Related Searches" that link to
websites of car dealerships that are direct competitors of Complainants.
B. Respondent
Respondent did not submit a formal response, but rather merely submitted
an e-mail with some general comments. As
best can be determined from Respondent’s comments, it is Respondent’s
contention that, since at the time that the disputed domain names were
registered, the automobile dealerships Jim Butler Kia and Jim Butler Mitsubishi
did not even exist, Respondent’s registration of the disputed domain names
could not be in bad faith. It also appears that the Respondent is alleging that
the name Jim Butler is not a protected trademark since numerous other domain
names exist of which the name Jim Butler forms a part, such as: <www.jimbutlerinn.com>, <www.jimbutlerfineart.com>,
<www.jimbutlermusic.com> and <www.jimbutlerconst.com>.
C. Additional Submissions
While still failing to make a positive averment of use of the contested
domain names in bad faith (as contrast with registration in bad faith), Complainant
has averred facts which evidence use of the domains as “link farms” in bad
faith and has cited case relating to bad faith use of a website.
FINDINGS
Complainant Jim Butler Chevrolet, Inc. has
been using the JIM BUTLER name in
connection with car dealerships for more than 40 years
and in conjunction with heavy advertisement the name Jim Butler has acquired
secondary meaning in the automotive market. The phrases "jimbutlerkia"
and "jimbutlermitsubishi" in the Disputed Domain Names completely
encompass the mark JIM BUTLER. The registration of the disputed domain names in
close proximity to commencement of business of the Jim Butler Kia and
Mitsubishi dealerships raises an inference of knowledge of at least impending
commencement of those automotive franchises. Respondent is not commonly known
by either of the domain names <jimbutlerkia.com> or
<jimbutlermitsubishi.com>. The web sites at <jimbutlerkia.com> and
<jimbutlermitsubishi.com> contain only "link farms" containing
"Sponsored Links" and "Related Searches" that link to
websites of other Kia® and Mitsubishi® car dealerships and to local Nissan,
GMC and Chevrolet dealerships which are in direct competition with Complainant.
Respondent has a history of registering domain names containing trademarks of
third parties with whom Respondent has no known connection.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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.
The Panel finds that Complainant is not required to have a trademark
registered with a governmental trademark authority in order to have rights in
the mark so long as Complainant can establish sufficient secondary meaning in
the mark to demonstrate common law rights.
See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the complainant need not own a valid
trademark registration for the ZEE CINEMA mark in order to demonstrate its
rights in the mark under Policy ¶ 4(a)(i)); see
also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant asserts that it has used the JIM BUTLER mark in connection
with car dealerships for over 40 years, beginning in 1968. Complainant indicates that it operates
dealerships under the JIM BUTLER KIA and JIM BUTLER MITSUBISHI marks. Complainant alleges that from the year 2000
through the present, it has spent over $6 million on advertising for its
various JIM BUTLER dealerships and their services. Complainant further alleges that its JIM
BUTLER dealerships have grossed tens of millions of dollars in sales in that
same time. The Panel finds that
Respondent’s extensive advertising and sales are sufficient evidence of
Complainant’s acquired secondary meaning in the JIM BUTLER mark and as such,
that Complainant has common law rights in the JIM BUTLER mark pursuant to
Policy ¶ 4(a)(i).
See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp.,
FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had
demonstrated common law rights in the ATPE mark through continuous use of the
mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs.,
FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had
common law rights in the JERRY DAMSON ACURA mark because it provided sufficient
evidence of its continuous use of the mark since 1989 in connection with a car
dealership).
Complainant asserts that Respondent’s <jimbutlerkia.com> and <jimbutlermitsubishi.com>
domain names are confusingly similar to Complainant’s JIM BUTLER mark. Complainant further asserts that Respondent deletes
the space between the terms in Complainant’s mark and merely adds the
descriptive terms “kia” and “mitsubishi,” as well as the generic top-level
domain (“gTLD”) “.com” to the entirety of Complainant’s mark. The Panel finds that these alterations are
not sufficient to distinguish Respondent’s disputed domain names from
Complainant’s mark. See Bond & Co. Jewelers, Inc. v.
Complainant argues that Respondent is not
commonly known by either of the disputed domain names. Complainant further argues that Respondent
has no legitimate claim to any trademark or service mark rights to either the <jimbutlerkia.com> and <jimbutlermitsubishi.com>
domain names. The WHOIS information
for both disputed domain names lists the registrant as “Vickie Poucher” which
the Panel finds is not similar to the disputed domain names. Therefore, the Panel finds that, without
evidence to the contrary, Respondent is not commonly known by the disputed
domain names pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (concluding that the respondent was not commonly known by the
<thirteen.com> domain name based on all evidence in the record, and the
respondent did not counter this argument in its response).
Complainant asserts that Respondent’s <jimbutlerkia.com> and <jimbutlermitsubishi.com>
domain names resolve to websites that contain only “link farms” containing
links to the websites of other Kia and Mitsubishi car dealerships that are
direct competitors of Complainant. The
Panel finds that Respondent’s use of the disputed domain names for such a
purpose is not a bona fide offering
of goods and services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent was not using the <tesco-finance.com> domain name in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry); see
also Persohn v. Lim, FA
874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not
using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use by redirecting Internet users to a commercial search
engine website with links to multiple websites that may be of interest to the
complainant’s customers and presumably earning “click-through fees” in the
process).
Complainant argues that Respondent registered, and is using, the
disputed domain names in an attempt to disrupt Complainant’s business. The Panel finds that Respondent’s registration
of the domains in close proximity to the commencement of business of
Complainant’s Kia and Mitsubishi dealerships coupled with Respondent’s
established practice of registering domains containing the marks of third
parties with whom no connection exists evidences registration in bad faith; as
to past conduct as evidence of bad faith registration, see: The Washington
Post Company and Washingtonpost.Newsweek Interactive Company LLC v.
Wasingtonpost.com aka Washingtonpos.com aka weatherpos.com, FA0112000102968
(Nat. Arb. Forum Feb.
5, 2002); Twentieth Century Fox Film Corporation v. Cupcake
Confidential a/k/a John Zuccarini, FA0011000096118 (Nat. Arb. Forum Jan.
18, 2001); see also Gamesville.com,
Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000), and Respondent’s
use of the disputed domain name to display links to car dealerships that
directly compete with Complainant is evidence of Respondent’s use in bad faith
pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a
confusingly similar domain name to attract Internet users to a directory
website containing commercial links to the websites of a complainant’s
competitors represents bad faith registration and use under Policy ¶
4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent’s
registration and use of the disputed domain names to display competing links to
Complainant’s competitors in the car dealership industry will likely create
confusion among Internet users who are searching for information on
Complainant’s car dealerships. The Panel
may find that Respondent’s registration of the confusingly similar disputed
domain names is evidence of Respondent’s bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jimbutlerkia.com> and <jimbutlermitsubishi.com>
domain names be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: August 31, 2010
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum