Asbury Automotive Group, Inc. v Texas International Property Associates

A timely Response was received and determined to be complete on May 8, 2007.

Complainant’s Additional Submission was received by the Forum on May 14, 2007. Although this Submission was timely received, it was not accompanied by the required filing fee. The Panel was advised that the required fee was received by the Forum on May 15, 2007.

On May 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.

The Panel, in its authorized discretion, and having read and considered Respondent’s May 21, 2007, Objection and Reply to Complainant’s Additional Submission, rules that the Forum’s receipt of the required filing fee, one day post deadline, sufficiently comports with Supplemental Rule #7, as to be considered in compliance with same.

The Panel has read and has considered Respondent’s Objection to Complainant’s Additional Submission as being beyond the scope of the UDRP Rules. In these regards, the Panel accepts the majority rule of WIPO Panels, which hold that Panels have the necessary discretion to accept an unsolicited supplemental file from either party, bearing in mind the obligation to treat each party with equality. In like regards, the Panel has also accepted Respondent’s Additional Submission. Each party, therefore, has had a fair opportunity to present its case. See De Dietrich Process Sys. v. Kewmtron Ir. Ltd., D2003-0484 (WIPO Sept. 24, 2003).

The Panel has also read and considered Respondent’s Second Objection to Complainant’s Additional Submission, which alleges that the Additional Submission is beyond the scope of the Forum’s Supplemental Rules. While Respondent chides Complainant for not earlier presenting the supplemental material, Complainant states that its sales data is highly confidential, and that other information was not kept in the normal course of business. Complainant’s second impulse to present the material was a productive one, as this Panel finds that the supporting material is highly relevant. Further, it does not offend Supplemental Rule #7, as the material is supportive of the Complaint, rather than amending thereto.

Thus, the Additional Submissions of both Complainant and Respondent are accepted and considered in this decision.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

Respondent requests a finding of reverse domain name hijacking.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Complainant (“Asbury Automotive”) operates 19 automobile dealerships through its wholly owned subsidiaries, known as the Coggin Automotive Group (“Coggin”). Coggin owns the service mark “Coggin” and uses that service mark in connection with the sale of new and pre-owned automobiles. By its subsidiaries and through its predecessors, Asbury Automotive has used the service mark COGGIN continuously for about 40 years principally in Florida, USA, to identify its new and pre-owned automobile dealerships. Asbury Automotive’s website <cogginauto.com> indicates that Coggin Automotive Group is a subsidiary of Asbury Automotive. Asbury Automotive sells pre-owned Acura automobiles through its Coggin dealerships and the Coggin website shows an inventory of pre-owned Acuras currently available for sale. The website and full page newspaper advertisements show that Asbury Automotive has made substantial investment in advertising and promoting the COGGIN service mark.

Asbury Automotive is the owner of United States Patent and Trademark Office (“USPTO”) trademark Application No. 78/861,508 for the service mark COGGIN for automobile dealerships. Asbury Automotive also owns the USPTO registration for the stylized mark COGGIN CERTIFIED USED CAR ASSURANCE PACKAGE (Reg. No. 3,067,282 issued Mar. 14, 2006) and USPTO registration for the stylized service mark COGGIN USED CAR ASSURANCE PACKAGE (Reg. No. 3,072,630 issued Mar. 28, 2006), both for automobile dealership services.

Complainant alleges that Respondent’s domain name is confusingly similar to Complainant’s service mark because Respondent’s domain name, <cogginacura.com>, contains Asbury Automotive’s identical service mark COGGIN, and Respondent’s use of Acura as part of the domain name does not dispel the likelihood of confusion because Asbury Automotive sells Acura-brand automobiles through its COGGIN dealerships.

Complainant further alleges that Respondent has no rights or legitimate interests in the domain name as the disputed domain name does not correspond to Respondent’s legal name and is not otherwise commonly used to identify Respondent.

Respondent registered the domain name on February 4, 2005, decades after Asbury Automotive’s predecessor adopted the COGGIN service mark, and years after Asbury Automotive began selling Acura automobiles through its COGGIN dealerships.

Complainant alleges that Respondent is using the domain name to mislead and divert consumers who are searching the Internet for Acura automobiles available from a COGGIN dealership, as the disputed domain name provides links to websites that advertise competitive automobile dealerships. Thus, Complainant alleges that Respondent is using the disputed domain name to generate leads for competitors, presumably for compensation, and that this use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.

Complainant further alleges that the disputed domain name was registered and used in bad faith as evidenced as follows:

Respondent is apparently engaged in the practice of registering the trademarks of others as, or part of, domain names used to operate lead generating websites, as evidenced by an adverse ruling in the ZRT Laboratory, LLC v. Texas International Property Associates, FA 907499 (Nat. Arb. Forum Mar. 27, 2007) case.

Respondent is using the disputed domain name in an effort to intentionally attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Asbury Automotives service mark as to the source, affiliation, or endorsement of Respondent’s website and the goods and services offered on that website.

Respondent’s generation of click-through leads has the natural effect of diverting or siphoning-off revenue-generating traffic from Complainant’s website, and thus operates for the primary purpose of disrupting Asbury Automotive’s business.

B. Respondent makes the following assertions:

Complainant has not established or substantiated any trademark rights in the term Coggin Acura, thus the domain name is not identical to, or confusingly similar to any mark held by Complainant. Complainant does not “own” a USPTO trademark for COGGIN as it is still in the application stage. The registered marks held by Complainant, that is Coggin Used Car Assurance Package and Coggin Certified Used Car package are irrelevant as both were registered some 13 months after the domain was registered.

Respondent alleges that Complainant merely holds a trade name, which is not entitled to the protection afforded to a trademark of service mark. Respondent further states that Complainant has not established a common law trademark by doing business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant’s goods or services. Respondent alleges that the print advertisements, which predate the registration of the disputed domain name and which refer to such monikers as Coggin Nissan on Atlantic and Coggin Honda Superstore, do not sufficiently relate to the domain name <cogginacura.com>.

Respondent asserts that Complainant’s sole motive in filing the instant action was that Complainant recently began dealing as Coggin Acura.

Respondent claims a right and legitimate interest in the disputed domain name as Respondent registered the name at a time when there was no federally registered trademark for Coggin Acura, and at a time when Respondent believed that it was a term to which no party had established a secondary meaning.

Respondent claims a legitimate use of the name as an advertising portal that provides access to a broad range of services. Respondent cites case law for the proposition that there is nothing wrong with using the generic phrase to connect these generic concepts with search keywords in order to provide advertisers with targeted customer traffic.

Respondent alleges that Complainant has not demonstrated Respondent’s bad faith registration and use for the following reasons. Complainant did not have a registered or unregistered trademark at the time of the filing of the disputed domain name. Respondent is in the business of providing locator services and did not register the name with the intent to disrupt Complainant’s business. Or to confuse customers. Or to sell the domain name to Complainant. Nor did Respondent register the domain name to prevent Complainant from owning a domain name incorporating its trademark.

Rather, Respondent registers domain names that become available through expiration and deletion, names which incorporate common words, descriptive and generic terms. Respondent hosts the disputed domain on a website that provides sponsored links by Yahoo.

Respondent alleges that it has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well-known generic, descriptive and geographically descriptive terms.

Respondent last alleges that Complainant’s conduct evidences reverse domain name hijacking and is attempting to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. Respondent’s rationale for this allegation is that Complainant is merely a small trade name holder who has propounded only a scant amount of evidence to support a finding of a common law mark. Respondent further alleges that Complainant engaged in “bulldozing” in an attempt to seize control of the domain name through forwarding anonymous offers to Respondent to buy the name.

C. Additional Submissions

1. Complainant further asserts that:

Through the Declaration of Allen Levenson, Vice President of Sales and Marketing for Asbury Automotive Group, Complainant states as follows:

Asbury is one of the largest automobile retailers in the United States and is listed on the New York Stock Exchange. Coggin dealerships have sold on average more than 50,000 vehicles per year over the last five years, with annual revenues averaging more than $1,000,000,000.00. Asbury spent on average more than $10 million annually over the past five years on advertising for the Coggin dealerships. Coggin is the largest part of Asbury’s business. Asbury also has invested substantial money and resources acquiring and maintaining from nearly all of the major automobile manufacturers, the right to operate dealerships under the Coggin brand.

Complainant further asserts “ownership” of the COGGIN service mark through the establishment of common law rights. Because Coggin has established secondary meaning, in that it has become, through long and continuous use in association with an enterprise that has grown to 19 automobile dealerships and advertising of over 10 million annually over the last five years, an indication of origin representing quality and reliable service.

Complainant alleges that its common law rights in the COGGIN service mark are established both in and outside Florida, due to a web presence, which began at least as early as March 3, 1999, when the domain name <cogginauto.com> was registered. At least four additional “coggin” domain names were registered between 2000 and 2002.

Complainant reiterates that Respondent has no rights to the disputed domain name as the disputed domain name is not comprised of generic, descriptive terms, contrary to Respondent’s assertion that it has rights in the domain name because it is using the domain name in connection with an advertising portal that uses generic, descriptive terms to direct traffic to paying advertisers. Complainant further states that Respondent’s business in not akin to that of Google or Yahoo because Respondent has absolute control over the content of the website to which the disputed domain name resolves.

Complainant further asserts that Respondent has failed to establish good faith in the adoption and continued use of the domain name in that a simple Internet search would have shown Asbury’s various Coggin dealerships. Complainant subsequently alleges that Respondent has provided no justification for the use of either Coggin or Acura. Thus, its use is outside the scope of its legitimate business, and therefore constitutes use in bad faith.

Complainant lastly alleges that Asbury has not engaged in Reverse Domain Name Hijacking as it is not a small trade name holder seeking to deprive Registrant of its rights, but rather is a corporation seeking to protect the reputation and investment of its nineteen automotive dealerships, which collectively generate annual revenues in excess of $1 billion. As further evidence of its good faith, Complainant alleges that its Counsel left two messages with Respondent, after the pre-filing communication and prior to filing the instant Complaint.

2. Respondent further asserts that:

Respondent objects to Complainant’s Additional Submission as beyond the scope of the UDRP Rules.

Respondent objects to Complainant’s Additional Submission as beyond the scope of the Forum’s Supplemental Rules.

Respondent contends that Complainant’s argument, regarding newspaper advertisements placed after the disputed domain name’s creation date, conferring any common law rights, is incorrect.

FINDINGS

Based upon the facts and arguments presented to it, the Panel finds that:

1. Respondent’s <cogginacura.com> domain name is confusingly similar to Complainant’s COGGIN common law based, service mark.

2. Respondent does not have any rights or legitimate interests in the <cogginacura.com> domain name.

3. Respondent registered and used the <cogginacura.com> domain name in bad faith

4. Respondent’s request for a finding of reverse name hijacking has been considered by the Panel, and has been denied.

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 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;

(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.

Identical and/or Confusingly Similar

Complainant asserts common law rights in the COGGIN service mark through such continuous use for nearly forty years that car consumers have come to associate the term Coggin with the nineteen automotive dealerships Complainant operates, primarily in the State of Florida. Complainant operates its dealerships through its wholly owned subsidiaries known as Coggin Automotive Group. Complainant also has established consumer recognition of the term Cogggin as associated with automobiles by establishing a website <cogginauto.com> in 1999, which predates Respondent’s domain name registration in 2005. This website advertises an inventory list of available new and pre-owned vehicles, as well as a list of dealership locations.

In furtherance of its assertion of common law rights, Complainant has submitted credible evidence of numerous print advertisements many of which date back to as early July 8, 2000, which predates Respondent’s domain name registration. These advertisements indicate Coggin’s presence in various Florida communities since 1968.

Although Complainant has not offered any surveys, which indicate consumers’ linkage of the Coggin term to the Coggin dealerships, it can be inferred from the saturation of the advertising that an association does arise in the minds of the consumers. In accordance with Levenson’s Declaration, Asbury Automotive spent, on average, more than $10,000,000.00 annually over the past five years, on advertising for the Coggin dealerships. This advertising has resulted in sales by Coggin dealerships of more than 50,000 vehicles per year over the past five years. Annual revenues have averaged more than $1,000,000,000.00.

The Panel finds that Complainant has established secondary meaning in the COGGIN mark, in that through this continuous and extensive use in commerce for nearly forty years, the mark functions as a specific identifier of Complainant’s automobile dealerships at least in the Florida area. The Panel further finds that Complainant’s secondary meaning in the COGGIN mark establishes common law rights under Policy ¶ 4(a)(i). 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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. 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 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).

Complainant’s pending trademark application for the COGGIN mark with the USPTO (Ser. No. 79/861,508 filed April 14, 2006) is not sufficient, in and of itself, to legally establish Complainant’s service mark rights in the COGGIN mark or such as to satisfy Policy ¶ 4(a)(i).

Neither is Complainant’s evidence of USPTO trademark registrations in the COGGIN CERTIFIED USED CAR ASSURANCE PACKAGE and COGGIN USED CAR ASSURANCE PACKAGE marks (Reg. No. 3,067,282 issued March 14, 2006; and Reg. No. 3,072,630 issued March 28, 2006) sufficient, in and of themselves, to establish Complainant’s service mark rights in the COGGIN mark, such as to satisfy Policy ¶ 4(a)(i), as these marks were registered after Respondent registered the <cogginacura.com> domain name in 2005.

Complainant contends that Respondent’s <cogginacura.com> domain name is confusingly similar to Complainant’s COGGIN mark. The Panel finds that Respondent’s domain name contains Complainant’s mark in its entirety and adds the term “acura,” which is a brand of automobile sold in Complainant’s ordinary course of business. Complainant lists Acuras on its website, and in fact has a dealership called Coggin Honda, which is the manufacturer of the Acura. The Panel therefore, holds that Respondent’s <cogginacura.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Complainant also contends that Respondent’s <cogginacura.com> domain name is confusingly similar to Complainant’s COGGIN USED CAR ASSURANCE PACKAGE mark and COGGIN CERTIFIED USED CAR ASSURANCE PACKAGE. As these marks postdate Respondent’s registration of disputed name, Panel will make no ruling on same.

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations, the burden of production shifts to Respondent to show that it 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 has offered undisputed evidence that Respondent is using the <cogginacura.com> domain name to operate a website featuring links to competing car dealerships as well as to dating, entertainment, education, and financial services. The Panel infers from such use that Respondent is collecting referral fees for each Internet user misdirected to Respondent’s website. The Panel thus finds that Respondent has failed to use the <cogginacura.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

Complainant further contends that Respondent is not commonly known by the <cogginacura.com> domain name, as the WHOIS information identifies the registrant as “Texas International Property Associates.” The Panel finds that, based upon Respondent’s WHOIS information, and with no evidence of a license to use Complainant’s COGGIN mark or any derivation of COGGIN USED CAR ASSURANCE PACKAGE mark, Respondent has failed to demonstrate rights or legitimate interests in the <cogginacura.com> domain name for purposes of 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

Registration and Use in Bad Faith

Complainant contends that Respondent has been subject to previous adverse judgments under the UDRP. In ZRT Laboratory, LLC v. Texas International Property Associates, FA 907499 (Nat. Arb. Forum Mar. 27, 2007), the panel held that Respondent’s use of the <zrtlaboratory.com> and <zrtlabs.com> domain names in connection with a web page featuring links to various unrelated third-party websites was evidence of bad faith registration and use. As a result, Complainant contends and the Panel finds that Respondent has demonstrated a pattern of registering domain names that infringe on another’s legitimate trademark rights. Such evidence constitutes bad faith registration and use under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

This Panel holds that Respondent’s manner of use of the <cogginacura.com> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of, or affiliation with the resulting websites. Such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Undisputed evidence shows that Respondent is using the <cogginacura.com> domain name to operate a website featuring links to automotive dealerships acting in direct competition with Complainant. The Panel infers from Respondent’s use that it is collecting referral fees for each misdirected Internet user linked to a competitor’s website. The Panel finds this evidence sufficient to satisfy Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

Reverse Domain Name Hijacking

As the Panel has ruled in favor of Complainant, the Panel is satisfied that Complainant has brought this action in good faith. Thus, the Panel makes no ruling of reverse domain name hijacking as against the Complainant.

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 <cogginacura.com> domain name shall be TRANSFERRED from Respondent to Complainant.

Carol M. Stoner, Esq., Panelist
Dated: May 29, 2007

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