Price-Simms CM, LLC d/b/a Chrysler Jeep Dodge Ram Marin v. Oreste Gonella / Victory Autoworld
Claim Number: FA1311001528114
Complainant is Price-Simms CM, LLC d/b/a Chrysler Jeep Dodge Ram Marin (“Complainant”), represented by Don Ray of PriceSimms Inc. d/b/a Chrysler Jeep Ram Marin, California, USA. Respondent is Oreste Gonella (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marindodgejeepchrysler.com> and <jeepofmarin.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2013; the National Arbitration Forum received payment on November 4, 2013.
On November 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marindodgejeepchrysler.com> and <jeepofmarin.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2013 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@marindodgejeepchrysler.com and postmaster@jeepofmarin.com. Also on November 14, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant, Price-Simms CM, LLC d/b/a Chrysler Jeep Dodge Ram Marin, has the business name of Chrysler Jeep Dodge Ram Marin.
b. Complainant has common law rights in the CHRYSLER JEEP DODGE RAM MARIN mark.
c. Respondent is using all components of Complainant’s name, CHRYSLER, JEEP, DODGE, and MARIN.
d. Respondent has no rights or legitimate interests in the disputed domain names.
i. Respondent is not known by the domain names.
ii. Respondent has been redirecting traffic from the aforementioned domains directly to its website at <autoworlddodge.com> in Sonoma County, not to any business located in Marin County.
e. Respondent has registered and is using the disputed domain names in bad faith.
i. Respondent is intentionally disrupting the business of Complainant and confusing consumers.
ii. Respondent is clearly using the domains to attract, for commercial gain, Internet users to Respondent’s website.
iii. Respondent is aware of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Price-Simms CM, LLC of Larkspur, CA, USA. Complainant does business as Chrysler Jeep Dodge Ram Marin and asserts that it has common law rights in its d/b/a, CHRYSLER JEEP DODGE RAM MARIN based on a Sales and Service Agreement executed between Complainant and Chrysler Group, LLC, effective August 29, 2013.
Respondent is Oreste Gonella/Victory Autoworld of Petaluma, CA USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the <marindodgejeepchrysler.com> domain name on or about October 13, 2008; Respondent registered the <jeepofmarin.com> domain name on or about July 17, 2013.
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(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.”).
Complainant contends that it has the business name of CHRYSLER JEEP DODGE RAM MARIN. The Panel notes that Complainant uses its CHRYSLER JEEP DODGE RAM MARIN mark in connection with a car dealership. The Panel further notes that Complainant does not present evidence of a valid trademark registration in the CHRYSLER JEEP DODGE RAM MARIN mark, however a trademark registration is not necessary in order for Complainant to establish its rights in the mark under Policy ¶ 4(a)(i). 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)).
The Panel also notes that Complainant asserts that it has evidence of common law rights in the CHRYSLER JEEP DODGE RAM MARIN mark. Complainant argues that its business, named CHRYSLER JEEP DODGE RAM MARIN, owns a Sales and Services Agreement with Chrysler Group, LLC, effective August 29, 2013. See Appendix A. Complainant contends that while the initial registration of Respondent’s domain names was prior to Complainant’s car dealership opening, the most recent renewal of the <marindodgejeepchrysler.com> domain name is September 27, 2013. The Panel informs the Complainant that domain names registered prior to the establishment of rights in a Complainant’s mark are generally upheld as the Complainant is usually unable to prove the Respondent lacks rights or legitimate interests in the disputed domain or that Respondent registered the domain in bad faith.
Complainant also argues that Respondent registered the <jeepofmarin.com> domain name on July 17, 2013, with full knowledge of Complainant’s impending store opening. Complainant alleges that its business is located at 201 Casa Buena Drive, Corte Madera, CA 94925 in Marin County. Complainant provides no additional information regarding the establishment of common law rights in its claimed common law mark. There is no evidence that the name is inherently distinctive or has acquired secondary meaning nor that the general public associates it as an identifier of Complainant’s goods and services. There is no information provided regarding advertising, sales, media usage or consumer recognition.
In EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007), the panel found that “Although it has been held that there is no requisite showing to establish common law rights, common sense dictates that something beyond mere proof of business establishment is necessary.” The Panel here finds that Complainant has not shown proof beyond mere business establishment, and therefore has not established common law rights in the CHRYSLER JEEP DODGE RAM MARIN mark pursuant to Policy ¶ 4(a)(i).
The Complainant has not proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel declines to analyze this element due to Complainant’s failure to prove the first element.
The Panel declines to analyze this element due to Complainant’s failure to prove the first element.
Because the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Darryl C. Wilson, Panelist
Dated: December 24, 2013
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