Good Chevrolet Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1410001586324
Complainant is Good Chevrolet Inc. (“Complainant”), represented by John Barton of The Barton Law Firm, Washington, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodchevrolet.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2014; the National Arbitration Forum received payment on October 22, 2014. The Complaint was submitted in both English and Finnish.
On December 10, 2014, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <goodchevrolet.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com 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 12, 2014, the Forum served the Finnish language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2015 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@goodchevrolet.com. Also on December 12, 2014, 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 January 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, in the absence of a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <goodchevrolet.com> domain name is identical to Complainant’s GOOD CHEVROLET mark.
2. Respondent does not have any rights or legitimate interests in the <goodchevrolet.com> domain name.
3. Respondent registered and uses the <goodchevrolet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
General Motors, Inc., owns the CHEVROLET mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 216,070, registered Aug. 8, 1926), which it uses to identify automobiles and related goods and services. Complainant is authorized to use the CHEVROLET mark through its contract with General Motors, and is in the business of selling Chevrolet brand name cars. Complainant operates as Good Chevrolet, Inc., and holds common law rights in the GOOD CHEVROLET mark, used since 1985.
Respondent registered the <goodchevrolet.com> domain name on August 27, 2013, and uses it to display hyperlinks to other automobile businesses.
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 holds rights in the CHEVROLET mark as a licensee of General Motors, Inc., which owns the CHEVROLET mark through registration with the USPTO. Thus, the Panel finds that Complainant has established rights in the CHEVROLET mark for purposes of Policy ¶ 4(a)(i). See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (holding that a non-exclusive licensee to a mark has established rights in that mark).
To supplement its claimed rights by license, Complainant asserts common law rights in the GOOD CHEVROLET mark. Complainant argues that the GOOD CHEVROLET mark is an emblematic identifier of a well-known provider of Chevrolet auto sales, parts, and services. Complainant claims it has used the mark in commerce since 1985 to identify its goods and services, and that it has prominently used the mark in its advertising. Complainant states that it spent $1,378,904 on advertising in 2013, and sold eight hundred Chevrolet vehicles in that year. The Panel finds that Complainant has provided sufficient evidence to show that the GOOD CHEVROLET mark has garnered secondary meaning, and therefore Complainant has demonstrated common law rights under Policy ¶ 4(a)(i) in the GOOD CHEVROLET mark dating back to 1985. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); 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).
Respondent’s <goodchevrolet.com> domain name incorporates Complainant’s GOOD CHEVROLET mark in full, merely adding the generic top-level domain (“gTLD”) “.com,” and omitting the space between the two-word mark. Because spacing is not replicable in domain names, and because all domain names require some TLD, prior panels have consistently held that the elimination of spacing and addition of a gTLD are inconsequential to the confusing similarity analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that the <goodchevrolet.com> domain name is identical to the GOOD CHEVROLET mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain name, and points to the WHOIS record, which identifies “Hulmiho Ukolen” as registrant. Complainant states that neither Complainant nor General Motors has authorized Respondent’s use of the “Chevrolet” or “Good Chevrolet” marks. In the absence of any evidence to the contrary in this case, the Panel finds 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also argues that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services, or for a noncommercial or fair use. Complainant asserts that Respondent uses the disputed domain name for click through hyperlinks, from which it presumably generates profit. The Panel note that <goodchevrolet.com> resolves to links such as “Jeep® Wrangler,” “BMW Seattle,” and “Honda Civic,” which are in direct competition with Complainant’s automobile offerings. The Panel finds that Respondent’s use of the disputed domain name to promote pay-per-click links in competition with Complainant is 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s four prior adverse UDRP rulings constitute strong evidence of Respondent’s bad faith at present. The Panel agrees and finds that Respondent’s history of bad faith constitutes a pattern of bad faith under Policy ¶ 4(b)(ii). See, e.g., Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Hulmiho Ukolen / Poste restante, FA 1572883 (Nat. Arb. Form Sept. 11, 2014); The Gap Inc. v. Hulmiho Ukolen, FA 1507424 (Nat. Arb. Forum Aug. 23, 2013). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent uses the disputed domain name to resolve links to other automobile merchants in competition with Complainant. The Panel finds that such competitive links disrupt Complainant’s business, and therefore Respondent has engaged in bad faith 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).”).
As Respondent likely generates profit from the hyperlinks, Respondent’s conduct also constitutes bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), where the panel found that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant and presumably benefited in the process.
Additionally, given the notoriety of the CHEVROLET mark, Complainant argues that Respondent registered the disputed domain name with knowledge of the mark, and the interests therein. While prior panels have declined to find bad faith based solely on constructive knowledge, panels have inferred bad faith based on the fame of a mark. For example, in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the panel wrote, “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” The Panel similarly finds that Respondent had actual knowledge of Complainant and the CHEVROLET mark at the time of domain name registration given the fame of the CHEVROLET mark.
Complainant further argues that Respondent’s registration of the disputed domain name soon after Complainant’s registration for the same name lapsed demonstrates Policy ¶ 4(a)(iii) bad faith. In InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000), the panel wrote, “Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.” The Panel thus finds that Respondent’s registration of the <goodchevrolet.com> domain name after Complainant’s registration lapsed evinces bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant has 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 <goodchevrolet.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 12, 2015
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