Sonic Automotive - 9103
Claim Number: FA0610000830734
PARTIES
Complainant is Sonic Automotive - 9103 E. Independence,
NC, LLC d/b/a Infiniti of
Charlotte (“Complainant”),
represented by Ashley L. Ellis, of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center,
401 South Tryon Street, Suite 3000, Charlotte, NC 28202. Respondent is Domain Admin c/o AMSI
(“Respondent”), represented by John F. Walsh
The domain names at issue are <infinityofcharlotte.com> and <charlotteinfiniti.com>,
registered with Networksolutions.
PANEL
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 31, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 1, 2006.
On November 1, 2006, Networksolutions confirmed by e-mail to the
National Arbitration Forum that the <infinityofcharlotte.com> and <charlotteinfiniti.com>
domain names are registered with Networksolutions
and that the Respondent is the current registrant of the names. Networksolutions
has verified that Respondent is bound by the Networksolutions
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 13, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 4, 2006 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@infinityofcharlotte.com and
postmaster@charlotteinfiniti.com by e-mail.
A timely Response was received and determined to be complete on December 1, 2006.
On December 6, 2006 an Additional Submission was received from the
Complainant and was considered. On
December 8, 2006 an Additional Submission was received from the Respondent and
was considered.
On December 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
Complainant has operated an Infiniti motor vehicle dealership since
November 1998 in
Respondent’s domain names <infinityofcharlotte.com> and <charlotteinfiniti.com>
are confusingly similar to Complainant’s trade name. The first is identical to Complainant’s trade
name except for the simple misspelling of the word “Infiniti” by one
letter. The second simply inverts the
words in Complainant’s trade name and removes the word “of.” Despite these slight variations, the domain
names are confusingly similar to Complainant’s mark. Such use creates a strong likelihood of
confusion as to the ownership of any website associated with the domain
names.
Respondent has no rights or legitimate interest in the disputed domain
names. It registered the names in 2004,
almost six years after Complainant first used its trade name “Infiniti of
Charlotte.” Complainant has not licensed
or otherwise authorized Respondent to use the “Infiniti of Charlotte”
mark. And, Respondent is using the
domain names to link to the website of a direct competitor of Complainant,
another Infiniti dealership operating under the name “Lake Norman Infiniti,”
which is located in
On July 28, 2006, counsel for Complainant
sent Respondent a letter explaining Complainant’s rights in the domain names
and requesting the transfer of the domain names. Steve
Suggs responded on behalf of Respondent stating that Lake Norman Infiniti would
not transfer the domain names without payment.
When an amount was requested, the reply was “Tell me what it is worth to
you.”
Respondent has never used the domain names or the names “Infinity of
Charlotte” or “Charlotte Infiniti” in connection with a bona fide offering
of goods or services, nor has it made a legitimate non-commercial or fair use
of the domain names. Further, the
Respondent has never been commonly known by the names “Infiniti of Charlotte”
or “Charlotte Infiniti.” Instead,
Respondent links the domain names to the website of “Lake Norman
Infiniti.”
The domain names were registered and are being used in bad faith. Registration of a domain name confusingly
similar to Complainant’s mark despite actual knowledge of Complainant’s right
is evidence of bad faith. Respondent
registered and is using the disputed domain names to intentionally attempt to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of the website or location or of a
product or service on the website or location.
The diversionary website of Respondent offers goods and services in
competition with Complainant’s business and indicates that the domain names
were registered and are being used in bad faith.
Also, Respondent is relying on the goodwill surrounding Complainant’s
mark to redirect Internet users to Complainant’s direct competitor’s website
that is selling Infiniti automobiles.
This equates to bad faith use and registration.
Finally, Respondent’s request for payment from Complainant for the
domain names is evidence of bad faith.
B. Respondent:
Complainant has no trademark or service mark rights in the registered
domain names. The word “Infiniti” is a
federally trademarked name owned by Nissan of North America, Inc. which
licenses the use of the Infiniti mark to dealers around the country. Both Complainant and Respondent represent
licensed Infiniti dealers with all the same rights and restrictions on the use
of the Infiniti name. Neither can be
said to hold the exclusive rights to the trademark or service mark in
“Infiniti.”
The word “
Complainant has also failed to provide any evidence that
<charlotteinfiniti.com> has acquired secondary meaning such that it may
claim the exclusive right to use it as a trademark. Complainant can not claim “
Respondent has rights and a legitimate interest in respect to the
disputed domain names. Prior to any
notice of the subject dispute, Respondent had retained several advertising
clients in
Respondent has registered and used the disputed domain names in good
faith. The automobile dealership with
which Respondent is affiliated was incorporated on June 25, 2004. Shortly thereafter, the disputed domain names
were registered. Respondent continued to
expend significant amounts of money and effort to market both the dealership
and the on-line business directory. The
uncontradicted evidence is that for 6 years (from 1998 to 2004) they had no
interest in and made no effort to register the disputed domain names. Only after Respondent’s businesses were
formed and prospering for more than two years did Complainant object to Respondent’s open and continuous use of the domain
names.
Complainant argues that its customers were misled or confused by the
domain names. The fact that
Complainant’s business is listed on the Respondent’s website flies in the face
of any intent to mislead customers.
Lastly, Respondent has neither sought payment for use of the disputed
domain names nor for inclusion on the directory listing.
C. Additional Submissions
Complainant:
Complainant asserts its rights in the name “Infiniti of Charlotte”
based on continuous use for more than six years; its first use of that trade
name in connection with its business; and, its registration of the trade name
as an assumed name with the North Carolina Secretary of State. As a result of this continuous use,
Complainant’s trade name has acquired secondary meaning, at least for the
Respondent does not have rights to or a legitimate interest in the
domain names. With respect to
Respondent’s assertion that he uses the domains to link to an allegedly
legitimate business directory of entities using the “Infiniti” or “Infinity”
name in the
The true facts are that the domains were registered by Respondent in
2004 to direct consumers to Lake Norman Infiniti as admitted by one of its
owners and the General Manager at the time, Jack Salzman to Gerald
Dillard. The domains linked to Lake
Norman Infiniti’s website in June 2006, when Complainant’s former General
Manager, Mark Austin, spoke with the current General Manager of Lake Norman
Infiniti concerning this issue.
Respondent did change the link after
Complainant filed its Complaint in this matter.
Respondent has not registered or used the disputed domain names in good
faith. Respondent registered the domain
names to disrupt Complainant’s business as admitted by Lake Norman Infiniti’s
owner and General Manager at the time.
Respondent not attempts to claim it is making a legitimate use with its
Infiniti/Infinity business directory.
However, until Complainant filed its Complaint, the domain names linked
to Complainant’s competitor’s website.
Finally, Respondent claims it never sought payment for the domains. After receiving a cease and desist letter
from Complainant, Lake Norman Infiniti requested an offer of payment as set out
in correspondence attacked as Exhibit H.
Respondent:
Respondent disputes the claim that Jack Salzman admitted to improperly
registering the disputed domain names.
It also disputes the claim that Steve O’Kane admitted that Complainant
held the exclusive rights to the disputed domain names and that Respondent
would relinquish them.
FINDINGS
1-
The
disputed domain names are confusingly similar to a trademark in which
Complainant has rights.
2-
Respondent
has no rights or legitimate interests in respect of the domain names.
3-
Respondent
registered and is using the domain names in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 rights in the INFINITI OF CHARLOTTE mark through common law usage of the mark since 1998. Under Policy ¶ 4(a)(i), Complainant is not required to have a registered trademark provided it can demonstrate secondary meaning associated with its mark sufficient to provide common law meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant
contends that it has continuously used the INFINITI OF CHARLOTTE mark in
connection with the sale and service of Infiniti automobiles in
Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); 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.”).
Complainant asserts that the <infinityofcharlotte.com> domain name is confusingly
similar to Complainant’s INFINITI OF CHARLOTTE mark as the disputed domain name
contains Complainant’s mark in its entirety with the misspelling of the first
word by changing the last “i” to a “y.”
The Panel finds that the disputed domain name is thus phonetically
similar to Complainant’s mark. This
minor variation between Respondent’s disputed domain name and Complainant’s
mark does not negate the confusing similarity between the two under Policy ¶
4(a)(i). See Pfizer Inc. v. Phizer's Antiques, D2002-0410
(WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically
equivalent and confusingly similar to the PFIZER mark); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”).
Additionally, Complainant asserts that the <charlotteinfiniti.com> domain name is confusingly similar to its mark as the disputed domain name inverts the words in the INFINITI OF CHARLOTTE mark and deletes the term “of” between the words. The Panel finds that such changes do not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Bloomberg L.P v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”); see also Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb
Forum Mar. 16, 2004) (the domain name merely
omitted the definite article “the” and the preposition “of” from the
complainant’s mark and thus, failed to “sufficiently distinguish the domain
name from the mark pursuant to Policy ¶ 4(a)(i)”).
The Panel is aware that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends
that Respondent has no rights or legitimate interests in the <infinityofcharlotte.com> and <charlotteinfiniti.com> domain names, but is using
the disputed domain names to attract Internet users attempting to locate
Complainant to Respondent’s competiting website for its own commercial
gain. Complainant states that Respondent
is a competing car dealership in the same geographical area and is using
Complainant’s mark to attract customers attempting to locate Complainant to
Respondent’s business. The Panel finds
that such competing use is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see also Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
The Panel also finds that Respondent is not commonly known
by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not
indicate that Respondent is commonly known by the <infinityofcharlotte.com> and <charlotteinfiniti.com> domain names and
Complainant asserts that Respondent is not authorized to use its common law
mark. See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail").
Additionally, Complainant asserts that Respondent has demonstrated its lack of rights and legitimate interests in the disputed domain names by offering to sell them to Complainant. The Panel finds that such an offer was suggested by the correspondence from Respondent and is indicitive of a lack of rights and legitimate interests in the <infinityofcharlotte.com> and <charlotteinfiniti.com> domain names. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Complainant
asserts that Respondent is using the disputed domain names to disrupt its
business by diverting Internet users attempting to locate Complainant’s website
to Respondent’s competing website. The
Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent); see also
The
Panel also finds that Respondent registered the <infinityofcharlotte.com> and <charlotteinfiniti.com> domain names for the
purpose of commercially benefiting from the good will associated with
Complainant’s mark. The panel also
determines that the disputed domain names are capable of creating a likelihood
of confusion as to the source and affiliation of Complainant to the disputed
domain names and corresponding websites.
Such a determination may lead to a finding of bad faith registration and
use under Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent offered to sell
the disputed domain names. A
solicitation to sell was made in this case and
the panel finds that it constitutes evidence of bad faith registration
and use under Policy ¶ 4(b)(i). See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell
the domain name at issue to the complainant was evidence of bad faith).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infinityofcharlotte.com> and <charlotteinfiniti.com>
domain names be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: December 20, 2006
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