Penske Automotive Group, Inc. v. Christian Jelmberg
Claim Number: FA1012001364035
Complainant is Penske Automotive Group, Inc. (“Complainant”), represented by Deirdre Thomas, Michigan, USA. Respondent is Christian Jelmberg (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <penskeautomotivegroup.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 17, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <penskeautomotivegroup.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2011 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@penskeautomotivegroup.com. Also on December 22, 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 January 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 (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 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 <penskeautomotivegroup.com> domain name is confusingly similar to Complainant’s PENSKE mark.
2. Respondent does not have any rights or legitimate interests in the <penskeautomotivegroup.com> domain name.
3. Respondent registered and used the <penskeautomotivegroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Penske Automotive Group, Inc., is a publicly traded automotive retailer in the United States. Complainant has used the PENSKE mark since as early as 1966 in connection with its automotive ventures. Complainant holds numerous trademark registration for its PENSKE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,132,515 issued January 27, 1998).
Respondent, Christian Jelmberg, registered the <penskeautomotivegroup.com> domain name on June 1, 2007. The disputed domain name currently resolves to an inactive website with a disclaimer that it is not Complainant’s official site and a notice that the website is under development. Previously, the disputed domain name resolved to a directory website with third-party links to commercial sites unrelated to Complainant’s automotive 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."
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 argues that it has established rights in the PENSKE mark. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel determined that, “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).” Here, Complainant holds numerous trademark registrations for its PENSKE mark with the USPTO (e.g. Reg. No. 2,132,515 issued January 27, 1998). Therefore, the Panel finds that Complainant has established rights in its PENSKE mark through its trademark registration according to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the Respondent’s <penskeautomotivegroup.com> domain name is confusingly similar to its PENSKE mark. The disputed domain name incorporates Complainant’s mark in its entirety and differs from the mark only through the addition of the descriptive words “automotive” and “group” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive words which clearly allude to Complainant’s business in the automotive industry fails to properly distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also finds that the addition of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s PENSKE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent lacks rights and legitimate interests in the <penskeautomotivegroup.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated that, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Here, Complainant has established a prima facie showing in support of its allegations. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will first look to the record to determine whether Complainant has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.
Complainant asserts that Respondent is not commonly known by the <penskeautomotivegroup.com> domain name. The WHOIS information indicates that the domain name was registered by “Christian Jelmberg,” which is not similar to the disputed domain name. Complainant also asserts that Respondent is not authorized to use its PENSKE mark. The Panel finds no additional information that would provide a basis for finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant argues that prior to receiving notice to cease use of the disputed domain name, Respondent used the <penskeautomotivegroup.com> domain to operate a directory website which provided an array of links to third-party sites unrelated to Complainant’s automotive business. Respondent likely received click-through fees from these links. The Panel finds that Respondent’s use of the <penskeautomotivegroup.com> domain name to host a website with no other use than to direct Internet users to third-party sites was not 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Complainant argues that Respondent is not currently making any actual use of the disputed domain name. The resolving website contains no content other than a disclaimer that it is not Complainant’s official page, and a notice that the website is in development. The Panel finds that Respondent’s use of the disputed domain name to operate a website in development does not mitigate a finding that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name). Additionally, the Panel finds that Respondent’s inclusion of the disclaimer and a link to Complainant’s authorized website does not warrant a finding that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) ( “Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent previously used the disputed domain name to redirect Internet users to third-party commercial websites unrelated to Complainant’s automotive business. Internet users searching for Complainant’s website might have found Respondent’s website instead, due to Respondent’s use of the confusingly similar disputed domain name. This potentially generated confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and third-party links. Respondent attempted to profit from this confusion by receiving click-through fees from the sponsored links. The Panel finds that Respondent’s former use of the <penskeautomotivegroup.com> domain name constitute bad faith use and registration under Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant contends that Respondent currently uses the disputed domain name to operate an inactive website indicating that the site is under development. The resolving website also includes a disclaimer warning that it is not Complainant’s official site and provides a link directly to Complainant’s authorized website. The Panel finds that Respondent’s use of the <penskeautomotivegroup.com> domain name to host an inactive website constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel also finds that inclusion of a disclaimer does not deter a finding of bad faith under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <penskeautomotivegroup.com> domain name be TRANSFERRED.
Louis E. Condon, Panelist
Dated: January 17, 2011
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