Don Ayres Pontiac, Inc. dba Don Ayres Honda v. Ryan G Foo / PPA Media Services
Claim Number: FA1403001546650
Complainant is Don Ayres Pontiac, Inc. dba Don Ayres Honda (“Complainant”), represented by Sarah A. Veith of Barron, Peck, Bennie & Schlemmer, Ohio, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <donayreshonda.com>, registered with Internet.bs Corp.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2014; the National Arbitration Forum received payment on March 4, 2014.
On March 11, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <donayreshonda.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 March 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2014 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@donayreshonda.com. Also on March 13, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Policy ¶ 4(a)(i)
· While Complainant has not registered its trademark, it is well-settled that unregistered marks will suffice if they rise to the level of a common law trademark.
· Complainant operates a car dealership in Fort Wayne, Indiana, under the trade name DON AYRES HONDA. Complainant has done business under this mark since 1973.
· Respondent’s <donayreshonda.com> domain name is identical to the DON AYRES HONDA mark.
Policy ¶ 4(a)(ii)
· Respondent has never been commonly known by the <donayreshonda.com> domain name. Complainant’s diligent search yielded no evidence suggesting that Respondent has any connection or agreement with Mr. Don Ayres or with Complainant regarding the use of the DON AYRES HONDA trademark.
· Respondent is not the proprietor of any car dealership under the HONDA mark, and the <donayreshonda.com> domain name is being used to redirect Internet users to a links page that promotes competing websites such as <mazdausa.com>.
Policy ¶ 4(a)(iii)
· Respondent is a recalcitrant and serial cybersquatter.
· Respondent is attempting to attract Internet users to the <donayreshonda.com> domain name’s website in order to maximize Respondent’s odds at accruing hyperlink advertisement revenue. Each time a consumer visits the identical domain name, there is a chance the user will end up seeing competing goods such as those promoted through the <mazdausa.com> domain name’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that the <donayreshonda.com> domain name was registered on September 17, 2005.
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(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); see also 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.”).
Complainant notes that while it has not registered its trademark, it is well-settled that unregistered marks will suffice if they rise to the level of a common law trademark. The Panel agrees that common law marks are ordinarily acceptable evidence of Policy ¶ 4(a)(i) rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant thus claims common law rights because it operates a car dealership in Fort Wayne, Indiana, under the trade name DON AYRES HONDA. Complainant claims it has done business under this mark since 1973. The Panel notes that Complainant operates a website through which it promotes its business on the Internet. While Complainant has no rights to the mark HONDA, which is a registered trademark of the Honda Motor Co., Ltd., the Panel believes Complainant has adequately established secondary meaning in the DON AYRES HONDA mark for purposes of the UDRP. See, similarly, Sonic-Bethany H., Inc. d/ba Steve Bailey Honda v. 2220, FA 638199 (Nat. Arb. Forum March 22, 2006).
Complainant further argues that Respondent’s <donayreshonda.com> domain name is identical to the DON AYRES HONDA mark. The Panel agrees, as the domain name merely removes the mark’s spacing.
Complainant next asserts that Respondent has never been commonly known by the <donayreshonda.com> domain name. Complainant states that its search yielded no evidence suggesting that Respondent has any connection or agreement with Mr. Don Ayres or with Complainant regarding the use of the DON AYRES HONDA trademark. The Panel notes that the <donayreshonda.com> domain name’s WHOIS information lists “Ryan G Foo / PPA Media Services.” As the record contains no information connecting Respondent to the disputed domain name, the Panel concludes that Respondent is not commonly known by this domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further argues that Respondent is not the proprietor of any car dealership under the HONDA mark, and the <donayreshonda.com> domain name is being used to redirect Internet users to a links page that promotes competing websites such as <mazdausa.com>. The Panel finds that in light of Respondent’s default it is fair to accept Complainant’s allegations and agree that Respondent’s competitive uses constitute neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is a recalcitrant and serial cybersquatter. Klein Tools, Inc. v. PPA Media Services / Ryan G Foo, FA 1497397 (Nat. Arb. Forum June 19, 2013); ER Marks, Inc. and QVC, Inc. v. PPA Media Services / Ryan G Foo, FA 1496727 (Nat. Arb. Forum June 24, 2013); AutoZone Parts, Inc. v. PPA Media Services / Ryan G Foo, FA 1497170 (Nat. Arb. Forum June 16, 2013). Respondent’s multiple prior adverse UDRP decisions suggest bad faith registration and use in the instant proceeding under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel agrees that Respondent’s history with cybersquatting presents evidence of Policy ¶ 4(b)(ii) bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Complainant next asserts that Respondent is attempting to attract Internet users to the <donayreshonda.com> domain name’s website in order to maximize Respondent’s odds at accruing hyperlink advertisement revenue. Complainant claims that each time a consumer visits the identical domain name, there is a chance the user will end up seeing competing goods such as those promoted through the <mazdausa.com> domain name’s website. As Respondent has submitted no response to the Complaint, the Panel finds that the use of the domain name to promote competing goods is evidence of Respondent’s intent to commercially exploit Internet users’ likelihood of confusion in an act of Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <donayreshonda.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 25, 2014
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