Good Chevrolet, Inc. v. Shingo Kurokawa
Claim Number: FA1410001586521
Complainant is Good Chevrolet, Inc. (“Complainant”), represented by John Barton of The Barton Law Firm, Washington, USA. Respondent is Shingo Kurokawa (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goodchevy.com>, registered with Go Canada Domains, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2014; the National Arbitration Forum received payment on October 23, 2014.
On October 24, 2014, Go Canada Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <goodchevy.com> domain name is registered with Go Canada Domains, LLC and that Respondent is the current registrant of the name. Go Canada Domains, LLC has verified that Respondent is bound by the Go Canada Domains, 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 October 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2014 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@goodchevy.com. Also on October 29, 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 November 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
General Motors, Inc. owns the CHEVY mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,494,385, registered June 28, 1988). Complainant is authorized to use the CHEVY mark through its contract with General Motors, and operates as a merchant in the business of selling Chevrolet brand name cars. Complainant also enjoys common law rights in the GOOD CHEVY mark. Complainant operates as Good Chevrolet, Inc., and has used the GOOD CHEVY mark in commerce since 1972. The <goodchevy.com> domain name is confusingly similar to the CHEVY and GOOD CHEVY marks as the alterations are not distinctive given the presence of the mark.
Respondent lacks rights and legitimate interests in the disputed domain name. There is no indication that Respondent is commonly known by the <goodchevy.com> name, and neither Complainant nor its licensor has authorized Respondent’s use of the mark. Nor is Respondent using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain name resolves to a Japanese language website where Respondent seeks to benefit financially by marketing its skills and knowledge of voice acting.
Respondent’s diversionary use of the disputed domain to trade on user confusion about the owner of the domain evinces bad faith. Further, the fact that Respondent registered the <goodchevy.com> domain name within one year after it lapsed should be considered evidence of bad faith. Lastly, given the fame of the CHEVY mark, Respondent must have registered the disputed domain name with actual knowledge of the CHEVY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the sale of Chevrolet brand name motor cars.
2. General Motors, Inc. owns the CHEVY mark through registration with the USPTO (e.g., Reg. No. 1,494,385, registered June 28, 1988) and licenses its use to Complainant. Complainant also has common law trademark rights in the GOOD CHEVY mark.
3. Respondent registered the disputed domain name on August 4, 2013 and has caused it to resolve to a Japanese language website where Respondent seeks to benefit financially by marketing its skills and knowledge of voice acting.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims rights in the CHEVY mark as a licensee. The Panel notes that General Motors, Inc., owns the CHEVY mark through registration with the USPTO (e.g., Reg. No. 1,494,385, registered June 28, 1988). The CHEVY mark is used in connection with auto manufacturing, sales, parts, and services. Complainant claims to be authorized to use the CHEVY mark through its contract with General Motors, and operates as a merchant in the business of selling Chevrolet brand name cars. See Compl., at Attached Ex. H. The Panel agrees that Complainant has established rights in the CHEVY mark as a licensee of the federally registered mark. See, e.g., 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 CHEVY mark. Complainant urges that the GOOD CHEVY mark is an emblematic identifier of a well-known, leading provider of Chevrolet auto sales, parts, and services. Complainant claims it has used the mark in commerce since 1972 to identify its offerings. Complainant claims to have previously held and used the <goodchevy.com> domain name to direct users to information about Complainant and its products. See Compl., at Attached Ex. G. Complainant further asserts that it spent $1,378,904 on advertising in 2013. The Panel notes that Complainant has also provided a screenshot of its own website <goodchev.com>, available for review at Attached Exhibit D. The Panel also finds that Complainant has provided sufficient evidence to show the GOOD CHEVY mark has garnered secondary meaning, and therefore finds that Complainant has common law rights under Policy ¶ 4(a)(i) in the GOOD CHEVY mark dating back as early as 1972. See 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); 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.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHEVY or GOOD CHEVY marks. Complainant argues the <goodchevy.com> domain name is confusingly similar to the CHEVY mark as the inclusion of the generic term “good” and the generic top-level domain (“gTLD”) “.com” are not distinctive additions to the CHEVY mark. Alternatively, Complainant claims the domain name identical to its GOOD CHEVY mark. Prior panels have found confusing similarity where a domain name includes a complainant’s mark in full despite the additions of a generic term and gTLD, and the omission of spacing. See, e.g., Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). Accordingly, the Panel agrees that the <goodchevy.com> domain name is confusingly similar to Complainant’s CHEVY mark. It is also clear that the <goodchevy.com> domain name is identical to Complainant’s GOOD CHEVY mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s CHEVY and GOOD CHEVY trademarks and used them in its domain name in their entirety;
(b) Respondent has then caused the domain name to resolve to a Japanese language website where Respondent seeks to benefit financially by marketing its skills and knowledge of voice acting;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(c) Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant claims there is no indication that Respondent is commonly known by the <goodchevy.com> name, and neither Complainant nor its licensor has authorized Respondent’s use of the mark. The Panel notes that the WHOIS information identifies “Shingo Kurokawa” as registrant. In light of the available evidence, the Panel determines that Respondent is not commonly known by the <goodchevy.com> name for purposes of Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
(d)Further, Complainant claims Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant argues that the disputed domain name resolves to a Japanese language website where Respondent seeks to benefit financially by marketing its skills and knowledge of voice acting. See Compl., at Attached Exs. E–F. The Panel agrees that Respondent’s use of the <goodchevy.com> domain name to market Respondent’s own voice acting endeavors amounts to neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s diversionary use of the disputed domain to trade on user confusion about the owner of the domain name evinces bad faith. The Panel recalls that the disputed domain name resolves to a website comprised of Japanese language content promoting Respondent’s voice acting attributes. As the Panel agrees that the use of the domain name is creating an opportunity for Respondent to profit from a likelihood of confusion, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Secondly, Complainant urges that it previously held the <goodchevy.com> domain name, but allowed the domain name to lapse. Complainant argues that Respondent’s registration of the <goodchevy.com> domain name within one year after Complainant’s registration lapsed should be considered evidence of bad faith. In Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003), the panel wrote, “Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.” The Panel agrees that Respondent’s registration of the <goodchevy.com> domain name within one year after Complainant’s registration lapsed amounts to bad faith under Policy ¶ 4(a)(iii).
Thirdly, given the fame of the CHEVY and GOOD CHEVY marks, Complainant argues that Respondent must have registered the disputed domain name with actual knowledge of the those marks. While prior panels have failed 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).” In the present case, the Panel determines that given their fame Respondent had actual knowledge of Complainant and the CHEVY and GOOD CHEVY marks at the time of domain name registration.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s trademarks and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goodchevy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 28, 2014
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