Sonic-Calabasas V, Inc. d/b/a Calabasas Volvo v. Jerry c/o Gerald Eliszewski
Claim Number: FA0510000587435
Complainant is Sonic-Calabasas V, Inc. d/b/a Calabasas Volvo (“Complainant”), represented by Jami J. Farris, of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center, 401 South Tyron Street, Suite 3000, Charlotte, NC 28202. Respondent is Jerry c/o Gerald Eliszewski (“Respondent”), 19031 Hamlin Street, #2, Reseda, CA 91335.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <calabasasvolvo.com>, registered with Register.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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2005.
On October 26, 2005, Register.Com confirmed by e-mail to the National Arbitration Forum that the <calabasasvolvo.com> domain name is registered with Register.Com and that Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@calabasasvolvo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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." 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 makes the following assertions:
Complainant, Sonic-Calabasas V, Inc., has operated a Volvo motor vehicle dealership since May 13, 2003 in Calabasas, California. Complainant uses the name “Calabasas Volvo” to promote this dealership. Complainant has continuously used this tradename since it has owned and operated the dealership. Complainant also registered this tradename with Los Angeles County, California, in 2003, pursuant to Cal. Bus. & Prof. Code § 17910.
From December 7, 1994 to May 13, 2003, the
dealership was owned and operated by Calabasas Motorcars, Inc. (“Calabasas
Motorcars”). Calabasas Motorcars
operated the dealership under the tradename “Calabasas Volvo,” which was
registered on November 29, 1994 with Los Angeles County, California, pursuant
to California law. As
part of its promotion of the tradename, in or about November 2001, Calabasas
Motorcars instructed Respondent, its Information Technology (“IT”)
Manager, to register the domain name “calabasasvolvo.com” on behalf of the
dealership.
Complainant purchased the dealership in
2003. Pursuant to the terms of the
asset purchase agreement, Complainant acquired all of Calabasas Motorcars’
right, title, and interest to and in the tradename “Calabasas Volvo.” Accordingly, Calabasas filed its Statement
of Abandonment of the tradename “Calabasas Volvo,” and Complainant immediately
had it registered, as discussed above.
Despite Respondent’s registration of the domain name prior to its purchase, Complainant has exclusive rights in the “Calabasas Volvo” tradename. As noted, Complainant has registered “Calabasas Volvo” as a fictitious business name. Under California law, the filing of a fictitious business name statement establishes the presumption that the registrant has the exclusive right to use that name. Cal. Bus. & Prof. Code § 14411.
Further, under California law, an entity that first adopts and uses a tradename in connection with its business has a valid, protectable ownership interest in that name. See Jackman v. Mau, 177 P.2d 599, 602 (Cal. 1947). Pursuant to Cal. Bus. & Prof. Code § 14401, “a trade name may be transferred in the same manner as personal property in connection with the good will of the business in which it is used . . ., and the owner is entitled to the same protection by suits at law or in equity.” Calabasas Motorcars’ interest in the tradename “Calabasas Volvo” was transferred to Complainant as part of the purchase agreement, as described above. See Aldahan Automotive Group, Inc. v. Stewart, FA 98416 (Nat. Arb. Forum Sept. 4, 2001) (recognizing the complainant’s rights in a tradename, purchased as part of an asset purchase of a motor vehicle dealership, despite the respondent’s filing of a domain name using that tradename three days prior to the sale).
The fact that Complainant has not filed for a federal or state trademark does not undermine its exclusive rights. Under California law, tradenames are given the same protection as trademarks. See H. Moffat Co. v. Koftinow, 232 P.2d 15, 18 (Cal. App. 1951); see also Nagle v. Sunshine Enterprises, Inc., 2005 WL 1206854 at *5-*6 (Cal. App. 2005) (noting that ownership of a trademark does not belong to the party who registers it first, but to the party who first uses it in the sale of goods or services). Additionally, the ICANN dispute resolution policy does not require governmental trademark or service mark registration for the complainant to have rights in that name. See Florentine Caffe, Inc. v. Pfeffer d/b/a Blue Ave. Productions, FA 465152 (Nat. Arb. Forum June 3, 2005) (citing McCarthy on Trademarks and Unfair Competition § 25:74.2).
As recognized by the arbitration panel in Sonic-Crest Cadillac, LLC v. Hayes, FA 212652 (Nat. Arb. Forum Jan. 14, 2004), a motor vehicle dealership that “has established source identifying, secondary meaning” associated with its mark within its geographic area has common law rights to that mark. In Hayes, the panel found that the complainant had common law rights in the names Crest Hummer, Hummer of Nashville, and Cadillac of Nashville at least in the Nashville, Tennessee area since it had operated dealerships by these names in Nashville, Tennessee since 2002. In this case, Complainant since 2003 (and its predecessor since 1994) has operated and promoted a motor vehicle dealership in the Calabasas, California area under the name “Calabasas Volvo.” Therefore, as in Hayes, the mark “Calabasas Volvo” has source identifying, secondary meaning, at least within the geographic area around Calabasas, California, entitling it to common law trademark rights in that name. See also H. Moffat Co., 232 P.2d at 18 (recognizing a geographical name as a tradename).
Respondent’s registered domain name “calabasasvolvo.com” is identical or confusingly similar to Complainant’s trade name since the domain name suggests that it connects to a website that is directly related to Complainant because it uses Complainant’s tradename. Under California law, the use of a domain name that is confusingly similar to a trademark can constitute trademark infringement. See Garden of Life v. Letzer, 318 F. Supp. 2d 946, 963 (C.D. Cal. 2004). A domain name is confusingly similar when it causes an internet user to be confused regarding the ownership of the website or to wrongly assume that the original trademark owner is no longer in business. Id. In this case, Respondent is using a domain name identical to Complainant’s tradename thus creating a strong likelihood that an internet user would be confused as to the ownership of the website “calabasasvolvo.com.” Alternatively, since Respondent has failed to use the domain name for any legitimate purpose, as described below, an internet user may wrongly assume that Complainant is no longer in business under the name “Calabasas Volvo.” Therefore, pursuant to California law, Respondent’s domain name is confusingly similar to Complainant’s trade name.
Under
ICANN, a domain name that is identical to another’s tradename except for the
addition of a top-level domain (TLD), such as “.com”, is confusingly
similar. For example, in Aldahan Automotive
Group, Inc. v. Stewart, FA 98416 (Nat. Arb.
Forum Sept. 4, 2001), the arbitration panel found that
“metrochevrolet.com” was identical and confusingly similar to the trade name
“Metro Chevrolet” regardless of the addition of a TLD in the form of
“.com.” In this case,
“calabasasvolvo.com” is identical to the tradename “Calabasas Volvo” despite
the addition of “.com”, and, therefore, is confusingly similar to Complainant’s
tradename.
Respondent has no rights in the domain name because he registered it in the course and scope of his employment. Therefore, the domain name rightfully belonged to Calabasas Motorcars, which transferred all of its rights to Complainant. Furthermore, Respondent has never made use of the domain name for his own separate business.
In 2001, Calabasas Motorcars instructed its employee, Respondent, to register the domain name “calabasasvolvo.com” on behalf of Calabasas Motorcars in order to promote its Volvo dealership. Calabasas Motors did not give Respondent any rights in the name “Calabasas Volvo” or give Respondent to use the domain name for any use other than for the dealership. As Respondent admitted to counsel for Complainant, he was selected to perform this task because he was the IT Manager and was knowledgeable about the Internet. On November 14, 2001, Respondent registered the requested domain on behalf of Calabasas Motors. However, rather than registering it under Calabasas Motorcars’ name, he registered under his own name.
An employee who registers a domain name identical to his employer’s trademark does not have rights or legitimate interests in the domain name, especially if the employee knew of the employer’s rights in the mark. See Florentine Caffe, Inc. v. Pfeffer d/b/a Blue Ave. Productions, FA 465152 (Nat. Arb. Forum June 3, 2005); Sonic-Crest Cadillac, LLC v. Hayes, FA 212652 (Nat. Arb. Forum Jan. 14, 2004). In Hayes, the arbitration panel found that “as an employee or agent of Complainant, Respondent knew that it had no right to register the disputed domain names using Complainant’s marks and knew that any use of these domain names would be illegitimate.” Just as in Hayes, Respondent in this case, as the IT Manager for the Calabasas Volvo dealership, knew that he had no personal right to register the disputed domain name in his own name using the “Calabasas Volvo” mark.
Even if Respondent had permission to register “calabasasvolvo.com” in his own name, as he claims, any rights or interests that Respondent may have had in the domain name ceased upon termination of his employment. See Cricket Technologies, LLC v. Martin a/k/a Cricket Technologies LLC, FA 311353 (Nat. Arb. Forum Sept. 27, 2004); see also Cook Motors, Ltd. v. Soto, FA 94992 (Nat. Arb. Forum July 18, 2000). In Cook Motorcars, the respondent Soto registered the domain name “motorcarscook.com” in her own name and at her own expense while she was an employee of the complainant Cook Motorcars. Cook Motorcars knew that Soto registered the domain name in her own name and both Cook Motorcars and Soto used the website attached to “motorcarscook.com” for mutual profit. However, the arbitration panel held that when Soto’s employment with Cook Motorcars ended, she no longer had any rights or legitimate interests in the domain name. Soto knew when she registered the domain name that Cook Motorcars had rights to the name and she was not allowed to continue to use the domain name since it was identical to or confusingly similar to the name in which the complainant had rights. Therefore, in this case, even if Respondent claims that he had permission to register “calabasasvolvo.com” in his own name, it is undisputable that he knew when he registered the domain name that it was identical to the dealership’s mark and, as in Cook Motorcars, his rights ceased upon termination of his employment.
Under ICANN Policy, if, as in this case, a third party (Complainant) has rights in the domain name, that party can bring an action to have the registration of the domain name transferred or cancelled. To defend against such an action, a registrant must show he has rights in the name. ICANN Policy ¶4(c) provides three situations (prior use, common knowledge, and fair use) under which a respondent would have rights in a domain name:
Respondent’s awareness of Complainant and its predecessor’s rights to the mark due to his status as IT Manager for Complainant’s predecessor is evidence of Respondent’s bad faith registration and use of the domain name. See McCally Tool & Supply Co. v. Arborlink, Inc., FA 100650 (Nat. Arb. Forum Dec. 3, 2001) (finding that an employee who was hired to obtain the domain name for the complainant had an incontestable awareness of the complainant’s mark and thus acted in bad faith by registering and using the domain name in his individual name). Respondent knew that the mark “Calabasas Volvo” was in use as the tradename for the dealership and was an integral part of the advertisement and sale of Volvos at the dealership. Respondent knew or should have known that he did not have any personal right to register the domain name in his own name or to continue to hold the domain name after his employment ceased. For this reason alone, Respondent’s registration and use of the domain name “calabasasvolvo.com” was and is in bad faith, and the domain name should be transferred to the Complainant.
In addition, ICANN Policy ¶4(b) provides, without limitation, four factors that demonstrate that the registration of a domain name was in bad faith. Respondent’s bad faith in this case is based on the first and third factors:
i. Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name
. . . .
iii. You have registered the domain name primarily for the purpose of disrupting the business of a competitor.
With respect to the first factor, the evidence shows that Respondent registered the domain name to make a profit well in excess of his out-of-pocket expenses. In response to Complainant’s request that Respondent transfer the domain name, Respondent informed counsel for Complainant that he would transfer the registration for $1,000.00. Complainant rejected this demand but offered to reimburse Respondent for his out-of-pocket expenses in exchange for the domain name. In response, Respondent informed Complainant’s counsel that since Complainant did not want to pay him $1,000.00, Complainant would have to resort to legal means to get the domain name. Respondent’s actions clearly show his intent to profit from the domain name at Complainant’s expense.
Respondent’s actions also show bad faith based on the third factor – registration “primarily for the purpose of disrupting” Complainant’s business. In McCally Tool & Supply Co. v. Arborlink, Inc., FA 100650 (Nat. Arb. Forum Dec. 3, 2001), the arbitration panel held that an employee’s registration of his employer’s domain name was in bad faith and done for the purpose of disrupting the Complainant’s business even though the employee was not a competitor. The complainant had hired the respondent to obtain the domain name, “mccallytool.com.” However, the respondent never made the transfer to the complainant. The panel found the respondent’s use was in bad faith:
Respondent’s use of the domain
name that it contracted to obtain for Complainant indicates a bad faith intent
to disrupt Complainant’s business pursuant to ¶4(b)(iii). When Respondent is holding Complainant’s
domain name “for ransom” Complainant cannot use it to conduct business.
Similarly,
in this case, Respondent’s failure to make use of the domain name and refusal
to transfer it to Complainant are evidence that Respondent’s purpose is to
disrupt Complainant’s business.
In addition to the four factors listed in ICANN Policy ¶4(b), National Arbitration Forum panels have recognized that additional factors can be used to support findings of bad faith registration and use. See Cricket Technologies, LLC v. Martin a/k/a Cricket Technologies LLC, FA 311353 (Nat. Arb. Forum Sept. 27, 2004); see also Brown d/b/a Mobility Trans. Servs. v. Sarrault d/b/a SMG Inc., FA 99584 (Nat. Arb. Forum Oct. 16, 2001). In Cricket Technologies, the respondent was an employee of the complainant. The complainant’s Board of Managers directed and authorized the respondent to register the domain name for the complainant. Following his termination, the respondent refused to transfer the registration of the domain name to the complainant. The arbitration panel held that since the respondent registered the domain name within the scope of employment, his act of registering it in his individual name and contact information was evidence that the respondent registered and used the domain name in bad faith. For the same reasons, Respondent in this case has acted in bad faith.
In Brown, a former distributor of the complainant registered the domain name “mobilitytrans.com” which was confusingly similar to the complainant’s mark “Mobility Transportation” and held it without developing a website. The panel stated that the respondent’s passive holding of a disputed domain name supports a finding of bad faith pursuant to Policy ¶4(a)(iii), especially where there are no indications that the respondent could have registered and used the domain name for any non-infringing purpose. In this case, Respondent is passively holding the domain name “calabasasvolvo.com.” It is clear that Respondent was aware of Complainant’s rights in the mark and there are no indications that Respondent could possibly use this domain name in a way that would not infringe on Complainant’s common law trademark rights. For all of the reasons stated above, Complainant has registered and continues to hold the domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sonic-Calabasas V, has operated a Volvo motor vehicle dealership since May 13, 2003 in Calabasas, California. In 2003, Complainant purchased the domain name from Calabasas Motorcars, Inc., which owned the car dealership from December 7, 1994 to May 13, 2003. Complainant also acquired Calabasas Motorcars’ right, title, and interest to and in the CALABASAS VOLVO mark. In 2003, Complainant registered itself as a corporation named “Calabasas Volvo” in the State of California.
Respondent, Jerry c/o Gerald Eliszewaki, registered the disputed domain name on November 14, 2001. At the time, Respondent was an employee of Calabasas Motorcars, Inc., Complainant’s predecessor-in-interest. Respondent has not used the disputed domain name for a public web site.
Complainant has submitted an affidavit from David L. Peterson, the owner of Calabasas Motorcars, Inc. and the predecessor-in-interest to Complainant. In this affidavit, Mr. Peterson states that he originally instructed Respondent to register the <calabasasvolvo.com> domain name in the name of Calabasas Motorcars, and Mr. Peterson intended the domain name to transfer to Complainant upon the sale of Calabasas Volvo.
Complainant also asserts that on October 6, 2005, Respondent offered to sell the <calabasasvolvo.com> domain name registration for $1,000.
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."
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); 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.”).
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.
Complainant asserts that it has acquired common-law rights in the CALABASAS VOLVO mark through it and its predecessor’s continuous use of the mark in commerce. It claims that its mark has acquired secondary meaning and refers to its and its predecessor’s years of use to establish secondary meaning. The Panel finds Complainant’s unopposed assertions are enough to demonstrate Complainant has common-law rights in the CALABASAS VOLVO mark. Complainant has offered precedent for this type of construction in the context of a default decision. Sonic-Crest Cadillac, LLC v Hayes, FA 212652 (Nat. Arb. Forum Jan. 14, 2004) (without receiving a response from the respondent, the panel found that complainant had “established source identifying, secondary meaning associated with [the CADILLAC OF NASHVILLE and HUMMER OF NASHVILLE marks]”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
The Panel finds Respondent’s <calabasasvolvo.com>
domain name is identical to Complainant’s CALABASAS VOLVO because the domain
name merely adds the “.com” top-level domain, which does not significantly
distinguish the domain name from the mark.
See Fed’n of Gay Games, Inc. v.
Hodgson, D2000-0432 (WIPO June
28, 2000) (finding that the domain name <gaygames.com> is identical to
the complainant's registered trademark GAY GAMES); Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds Policy ¶4(a)(i) is established.
The Policy requires the complainant to allege the respondent
lacks rights or legitimate interests in the disputed domain name. After the complainant has made a prima
facie allegation, the burden shifts to the respondent to demonstrate that
it does have rights or legitimate interests.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); Woolworths
plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent
evidence of preparation to use the domain name for a legitimate purpose, the
burden of proof lies with the respondent to demonstrate that it has rights or
legitimate interests).
Respondent is not using the <calabasasvolvo.com>
domain name as a public web site. While
a domain name can be sued for a variety of purposes other than a public web
site (such as email or a portal for eCommerce), Respondent has not made any
such claim.
The Panel finds there is nothing in the record, including
the WHOIS information, which indicates that Respondent is commonly known by the
disputed domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark).
The Panel finds Policy ¶4(a)(ii) established.
In order to prevail on this element, the domain name must be registered and be used in bad faith, AHAVA NA, LLC v. Ahava USA, Inc., FA0504000464505 (May 25, 2005). It is important to note this element requires the conjunctive rather than the disjunctive.
Bad faith upon registration is determined at the time the domain name was initially registered. The renewal of a domain name is not a “registration” of the domain name under the UDRP, See Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI) D2001-0782 <sami.com>; PAA Laboratories GmbH v. Printing Arts America D2004-0338 <paa.com>. The fact this domain name may have been renewed is immaterial.
At the time the domain name was registered on November 14, 2001, Respondent had permission from the then owner of the mark (although there seems to be some dispute on how the domain name was to be registered). In the intervening 545 days, the original mark owner took no action which suggests the domain name was registered with their permission. Complainant purchased the business without ensuring the domain name was included
The Panel accepts Complainant’s allegation that
Respondent offered to sell the disputed domain name for $1,000. This is not enough evidence to overcome the
fact Respondent was authorized to register the domain name by the original
owner of the mark.
The Panel finds Complainant failed to establish Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: December 15, 2005
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