Miami Automotive Retail, Inc. v. Shawn Mulliniks
Claim Number: FA1810001811158
Complainant is Miami Automotive Retail, Inc. (“Complainant”), represented by Marc E Brandes of Kurkin Forehand Brandes LLP, Florida, USA. Respondent is Shawn Mulliniks (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brickellluxurymotorsllc.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2018; the Forum received payment on October 10, 2018.
On October 11, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <brickellluxurymotorsllc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@brickellluxurymotorsllc.com. Also on October 15, 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 November 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Miami Automotive Retail, Inc., is a nationally known supplier of high quality luxury and exotic automobile sales and leasing services. Complainant owns and uses the BRICKELL LUXURY MOTORS mark in connection with its’ automobile business. Complainant asserts common law rights in the BRICKELL LUXURY MOTORS mark because the mark has achieved distinctiveness and secondary meaning. Respondent’s <brickellluxurymotorsllc.com> Domain Name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus the term “llc.”
Respondent lacks rights and legitimate interests in the <brickellluxurymotorsllc.com> Domain Name because Respondent is not commonly known by the Domain Name. Furthermore, Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent’s webpage contains multiple hyperlinks.
Respondent registered and uses the <brickellluxurymotorsllc.com> Domain Name in bad faith. Respondent attempts to disrupt and compete with Complainant’s business by operating a webpage that contains multiple hyperlinks. Furthermore, Respondent commercially gains through this activity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant does not provide sufficient evidence of trademark rights for the BRICKELL LUXURY MOTORS mark for the purposes of satisfying Policy ¶ 4(a)(i).
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).
Complainant asserts that it has rights in the BRICKELL LUXURY MOTORS mark based upon the secondary meaning it has achieved following its use and promotion of the mark in the past seven years. Establishing common law rights in a mark requires a showing of secondary meaning of the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Lack of evidence to support secondary meaning may result in failure to establish common law rights in a mark. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant.”). In the present case Complainant does not provide any evidence to support its contention that it has common law rights in the BRICKELL LUXURY MOTORS mark other than its registration of the domain name <brickellluxurymotors.com>. There is no evidence of the website at the domain name <brickellluxurymotors.com>. No historic sales or advertising figures are supplied, nor documentary evidence of advertising engaged in by Complainant. Finally Complainant provides no other evidence establishing public association with this mark. Therefore, the Panel finds that Complainant has failed to establish common law rights in the mark per Policy ¶ 4(a)(i).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because it has not established rights in the BRICKELL LUXURY MOTORS mark, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (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 Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (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)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <brickellluxurymotorsllc.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: November 13, 2018
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