DECISION

 

Aldahan Automotive Group Inc. d/b/a Metro Chevrolet v. Chris Ann Stewart

Claim Number:  FA0107000098416

 

PARTIES

The Complainant is Aldahan Automotive Group Inc. d/b/a Metro Chevrolet, Columbus, OH (“Complainant”) represented by David Karr, of Charlie Patchen & Murphey.  The Respondent is Chris Ann Stewart, Dryridge, KY (“Respondent”) represented by Diane E. Burke of Mueller and Smith, L.P.A.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <metrochevrolet.com>, registered with Network Solutions.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr., (Ret.) as Panelist.

 

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 25, 2001; the Forum received a hard copy of the Complaint on July 30, 2001.

 

On July 25, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <metrochevrolet.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 July 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@metrochevrolet.com by e-mail.

 

A timely response was received and determined to be complete on August 17, 2001.

 

On August 22, 2001, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr., (Ret.) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.        Complainant

The Complainant, Aldahan Automotive Group, Inc. d/b/a METRO CHEVROLET, purchased the assets of Quality Chevrolet, Inc. on May 9, 2001.  As part of the purchase, Aldahan received Quality’s rights to the trade name METRO CHEVROLET which Quality had begun using on April 18, 2001, with an extensive advertising campaign.  On May 6, 2001, the Respondent, Chris Ann Stewart, registered the domain name <metrochevrolet.com>.  Aldahan alleges that Ms. Stewart is the girlfriend of John Conkle, the service manager of Quality and that Mr. Conkle and Ms. Stewart pirated the domain name knowing Aldahan’s plan to use the name.  Aldahan contends that the domain name is identical or confusingly similar to its service marks, that Ms. Stewart has no rights or legitimate interests in the domain name, and that the domain name was requested and used in bad faith.

 

B.         Respondent

The Respondent, Chris Ann Stewart, contends that Aldahan does not have rights in the trade name METRO CHEVROLET and that the domain name is not identical or confusingly similar to Aldahan’s trade name.  Ms. Stewart contends that she registered the domain name for the purpose of publishing an automotive enthusiasts website.

C.        Additional Submissions

On August 22, 2001, the Complainant timely submitted an additional submission in which it clarified its evidentiary allegations.  On August 24, 2001, the Respondent timely filed a Supplemental Memorandum challenging the Complainant’s supplemental pleading as new material and addressing the merit of the allegations.  The Panel has considered each of these supplemental memorandums in reaching its decision.

 

FINDINGS

1.         Until May 9, 2001, Quality had been in the business of sales and service of new and used automobiles since 1967.  Quality had its website at qualitychevrolet.com.  Aldahan and Quality began negotiations for the sale of the business to Aldahan in December 2000.  Quality began using the trade name METRO CHEVROLET in connection with the sale of automobiles on April 18, 2001.  The trade name METRO CHEVROLET was registered by the Quality with the Ohio Secretary of State on April 23, 2001, and used by the dealership in anticipation of the sale of the business to Aldahan. 

2.         On May 9, 2001, Aldahan purchased substantially all assets of Quality, including the rights to use any and all intellectual property rights in the name METRO CHEVROLET.  The Information Technology Representative of METRO CHEVROLET, Carter Johnson, attempted to register the domain name <metrochevrolet.com> on May 8, 2001.  Network Solutions, Inc. informed him at that time that the name was unavailable and registered to Ms. Stewart.  Ms. Stewart registered the domain name on May 6, 2001.  Quality assigned the trade name METRO CHEVROLET to Aldahan on May 17, 2001 as part of the sale of the assets.

4.                  When Mr. Johnson attempted to contact Ms. Stewart regarding the domain name at the number listed on the WHOIS database, he reached the cellular phone of John Conkle, who was the service manager of METRO CHEVROLET.  When Mr. Johnson contacted Mr. Conkle via e-mail a few days later, Mr. Conkle advised him that he should contact Network Solutions, Inc. to submit a bid for the domain name.  Mr. Conkle resigned as service manager of METRO CHEVROLET shortly thereafter.

5.                  Mr. Conkle learned through his employment with Quality and Aladahan of the use of the METRO CHEVROLET trade name in connection with Aldahan’s newly-acquired automobile dealership.  Ms. Stewart and Mr. Conkle used a Kentucky mailing address even though neither of them resided there.  Mr. Conkle was acting as the agent for Ms. Stewart.

6.                  On June 21, 2001, Ms. Stewart first attempted to publish her website through ImageCafe, Inc.  Thereafter, she made repeated attempts to publish her website.  After being unable to publish her website, she contacted Network Solutions, Inc., which informed her that there was a hold on her account because a proceeding had been instituted against her domain name <metrochevrolet.com>.

7.                  Aldahan has spent over $600,000.00 in radio, television and print advertising, all of which refer to the name METRO CHEVROLET.  Aldahan began its television advertising campaign as METRO CHEVROLET on April 17, 2001, immediately after receiving GM approval to use the METRO CHEVROLET trade name.

8.                  In April, 2001, Aldahan submitted applications for METRO CHEVROLET’S Motor Vehicle Dealer License and Vendor’s License.

9.                  METRO CHEVROLET’S business cards were ordered in April 2001.  The domain name www.metrochevrolet.com is referenced on the business cards, as the company was operating under the belief that it would have no problem registering this domain name.

10.              The Complainant alleges that Mr. Conkle is the boyfriend of Ms. Stewart.  The Respondent does not deny her close relationship with Mr. Conkle, nor does she deny that Mr. Conkle’s phone number was in fact the phone number listed as the Administrative Contact for the <metrochevrolet.com> registration.

11.              Ms. Stewart has not at any time been commonly known as or associated with the domain name.

12.              On May 10, 2001, Ms. Stewart began constructing the website to be published at <metrochevrolet.com>.  On June 10, 2001, she established an account with ImageCafe, Inc., to assister her to develop and publish her website.  On June 18, 2001, she applied for and was granted an Image Use License, which enables her to display photographs from the MotorCities.com website.  On June 20, 2001, she contacted the GM Internet Response Center regarding adding a Chevrolet.com link to her website.

13.              Ms. Stewart has made no use of the domain name in connection with a bona fide offer of goods or services.  The current <metrochevrolet.com> website is listed as “Under Construction”.

 

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.

 

Identical and/or Confusingly Similar

The Complainant asserts rights to the METRO CHEVROLET mark by virtue of its use in connection with its auto sales and services business which the Complainant and its predecessor have operated since 1967.  The Complainant secured rights to the METRO CHEVROLET mark when the sale of the business was finalized in May 2001.  The METRO CHEVROLET mark was registered with the Ohio Secretary of State in April 2001 in anticipation of the pending sale.  The Panel concludes that the Complainant has rights in the METRO CHEVROLET mark.  See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exits”).

 

The Complainant contends that the <metrochevrolet.com> domain name is identical to its METRO CHEVROLET mark.  The domain name is identical given that the <metrochevrolet.com> domain name is simply the Complainant’s METRO CHEVROLET mark with the addition of a TLD.  E.g., Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that the <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

 

The Respondent contends that the <metrochevrolet.com> domain name is not identical or confusingly similar because the Complainant and the Respondent are not in the same business; the Complainant sells and services automobiles while the Respondent’s intended use of the <metrochevrolet.com> domain name is to provide an automotive information enthusiast’s website.  However, the legitimacy of this use is undermined by the manner in which the Respondent obtained and registered the domain name.

 

Rights or Legitimate Interests

The Respondent lacks rights or legitimate interests in the <metrochevrolet.com> domain name.  The Respondent is not making any bona fide offering of goods or services with the <metrochevrolet.com> domain name.  See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

 

The Respondent is not commonly known by the <metrochevrolet.com> domain name pursuant to Policy ¶ 4(c)(iii).  E.g., Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interest do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

The Respondent claims it has a right and legitimate interest in the <metrochevrolet.com> domain name because the Respondent registered the domain name to provide an automobile information enthusiast website.  Such a use can be a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii).  Cf. Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose).  However, the Respondent pirated the name.  Claiming legitimate use thereafter is insufficient to overcome the Respondent’s malfeasance in obtaining the name.  See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (no legitimate interest in domain name where Respondent employed by Complainant and fully aware of name of employer).

 

Registration and Use in Bad Faith

The Panel is not constrained by the criteria under Policy ¶ 4(b) when determining where a Respondent acted in bad faith.  E.g., Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).  The Panel may look at the totality of circumstances to determine whether the disputed domain name was registered and is being used in bad faith.  E.g., Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).  The Complainant’s allegations of the relationship between its former employee, who was aware of the Complainant’s mark, and the Respondent may permit the Panel to make a finding of bad faith.  Arab Bank for Inv. & Foreign Trade v. Akkou, supra. (finding bad faith registration and use where Respondent was employed by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain name); Cree, Inc. v. The Domain Name You Have Entered Is For Sale, FA 94790 (Nat. Arb. Forum May 25, 2000) (finding bad faith where the Respondent purchased the domain names on the date of the Complainant’s press release regarding a merger and business expansion). 

 

Further, the Respondent’ subsequent conduct in directing the Complainant to submit a bid for the <metrochevrolet.com> domain name is evidence of the Respondent’s bad faith use of the disputed domain name pursuant to Policy ¶ 4(b)(i). 

 

DECISION

Based upon the findings and conclusions, I find in favor of the Complainant.  Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Granted.  The Respondent shall be required to transfer to the Complainant the domain name “metrochevrolet.com”.

 

 

Charles K. McCotter, Jr., Panelist

 

Dated:  September 4, 2001