Atlantic Automotive Corp. v. michelle popp
Claim Number: FA1805001787763
Complainant is Atlantic Automotive Corp. (“Complainant”), represented by Meaghan H. Kent of Venable LLP, Washington DC, USA. Respondent is michelle popp (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <heritagehondabelair.com> and <heritagehondaofbelair.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2018; the Forum received payment on May 21, 2018.
On May 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <heritagehondabelair.com> and <heritagehondaofbelair.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 May 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2018 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@heritagehondabelair.com, postmaster@heritagehondaofbelair.com. Also on May 30, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant is an automotive retail sales and service company operating auto dealerships and service locations throughout the mid-Atlantic region. Complainant has established common law rights in the HERITAGE and HERITAGE HONDA BEL AIR marks through its use since 1999, including the use of the HERITAGE mark as its primary trade name and HERITAGE HONDA BEL AIR as a regional trade name in Maryland. See Compl. Annex K (screenshots from Complainant’s website). Further, Complainant owns many domain names incorporating the HERITAGE mark, some of which it has used since 2005. See Compl. Annex J. Additionally, regarding the HERITAGE HONDA BEL AIR mark, Complainant holds a regional trademark registration in the state of Maryland for the mark. See Compl. Annex G. Respondent’s <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names are identical or confusingly similar to Complainant’s mark as they both contain Complainant’s marks in their entirety, eliminate the spaces between the terms of the mark, and add the generic top-level domain (“gTLD”) “.com.” One of the domain names also adds the term “of”.
ii) Respondent has no rights or legitimate interests in the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Respondent is a former employee of “Bel Air Honda,” a company acquired by Complainant, and Respondent registered the domain names while still employed by the company. Additionally, Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any use of the domain names, as they resolve to either a page displaying a graphic reading “website coming soon!” or an error message. See Compl. Annex L.
iii) Respondent registered and uses the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in bad faith. Respondent registered the domain names for the primary purpose of selling them to Complainant, as it has specifically solicited the sale of the domain names to Complainant. See Compl. Annex C. Further, Respondent’s use of the domain names disrupts Complainant’s business by misrepresenting the domain names as being related to Complainant. Additionally, Respondent fails to make any use of the resolving webpages. See Compl. Annex L.
B. Respondent
Respondent failed to submit a response in this proceeding.
1. Respondent registered both of the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names on March 31, 2017.
2. Complainant’s first use in commerce of its mark HERITAGE was in 1999.
3. Complainant acquired Bel Air Honda, an existing Honda dealership in Bel Air, Maryland in 2017, through its affiliate Heritage of Bel Air II, LLC,.
4. Complainant, through its affiliate Heritage of Bel Air II, LLC, filed for ownership of the trade name “Heritage Honda Bel Air” with the State of Maryland on March 8, 2017.
5. Complainant has its regional trade name registration regarding the HERITAGE HONDA BEL AIR, in the state of Maryland.
6. Complainant owns domain names that incorporate its HERITAGE trademark, including <heritagedealers.com>, which it has owned since 2011, and <heritagemazdabelair.com>, which it has owned since 2007. Complainant also owns a domain name incorporating its pre-acquisition BEL AIR HONDA trademark, <belairhonda.com>, which it or its predecessors-in-interest have owned since 2005.
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(f), 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 (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 claims it has established common law rights in the HERITAGE and HERITAGE HONDA BEL AIR marks and does not currently hold a federal trademark registration for the same mark. Complainant’s first use in commerce of its mark HERITAGE was in 1999.
Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (“The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant avers it owns many domain names incorporating the HERITAGE mark, some of which it has used since 2005. See Compl. Annex J. Additionally, regarding the HERITAGE HONDA BEL AIR mark, Complainant provides screenshots of its regional trademark registration in the state of Maryland. See Compl. Annex G. Registration of a mark with a State authority can confer rights in a mark. See Ridgegate Investments, Inc. v. Cody McCarthy / Keller Williams Real Estate LLC, FA 1727947 (Forum May 26, 2017) (“The Panel also finds that the registration of a mark with a State authority is sufficient to establish rights in the mark.”). As such, the Panel concludes that Complainant does hold common law rights in the marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names are identical or confusingly similar to Complainant’s mark as they both contain Complainant’s marks in their entirety, eliminate the spaces between the terms of the mark, add the gTLD “.com,” while one of the names also adds the term “of”. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (“Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel therefore finds that the disputed domain names are identical or confusingly similar to the HERITAGE and/or HERITAGE HONDA BEL AIR marks under Policy ¶4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “michelle popp” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the HERITAGE or HERITAGE HONDA BEL AIR marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant contends that the disputed domain name resolves in a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a copy of the resolving web pages, which either displays the message “website coming soon!” or an error message. See Compl. Annex L. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain names and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 names.
Complainant contends that it acquired Bel Air Honda, an existing Honda dealership in Bel Air, Maryland in 2017, through its affiliate Heritage of Bel Air II, LLC. Complainant quickly rebranded that dealership to “Heritage Honda Bel Air.” On March 8, 2017, Complainant, through its affiliate Heritage of Bel Air II, LLC, filed for ownership of the trade name “Heritage Honda Bel Air” with the State of Maryland. See Annex G. It continues to contend that Respondent became aware, through the course of Mr. Chilton’s employment by Bel Air Honda, of Complainant’s acquisition of the Bel Air Honda auto dealership and imminent rebranding under the Heritage family. On March 31, 2017, while Mr. Chilton was still employed by Bel Air Honda, Respondent registered the disputed domain names in anticipation of the impending acquisition. See Annex F. After the acquisition of Bel Air Honda, Mr. Chilton was employed by Complainant’s affiliate Heritage of Bel Air II, LLC, until September 29, 2017, when he was terminated. On November 7, 2017, Respondent emailed leadership at Complainant with screenshots from both of the disputed domain names, neither of which resolve to any page beyond a graphic saying “website coming soon!”, and the subject line “Both are for sale.” See Annex C. Complainant avers that Respondent’s conduct is a paradigmatic example of cybersquatting and is forbidden both by the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), and the Policy governing Respondent’s registration.
The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the< lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)).
The Panel notes that Complainant, through its affiliate Heritage of Bel Air II, LLC, filed for ownership of the trade name “Heritage Honda Bel Air” with the State of Maryland on March 8, 2017 shortly after it acquired Bel Air Honda, an existing Honda dealership in Bel Air. Respondent registered the disputed domain names on March 31, 2017. Therefore, the Panel finds that Respondent had actual notice of Complainant’s rights at the time of registration and therefore registered and is using the disputed domain names in bad faith.
Complainant claims that Respondent offered to sell the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names to Complainant. Offering to sell a confusingly similar domain name directly to a complainant can evince bad faith registration under Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Complainant provides a screenshot of an email it received from Respondent, which contains the message “FW: Both are for sale” in the message’s subject line. See Compl. Annex C. As such, the Panel recognizes Respondent’s offering of the domain names for sale directly to the Complainant as evidence of Respondent’s bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 26, 2018
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