Pat Goss Car World, Inc. and Mr. B. Patrick Goss v. Craig Shipp / AreaGuides.com, LLC
Claim Number: FA1610001699056
Complainant is Pat Goss Car World, Inc. and Mr. B. Patrick Goss (“Complainant”), represented by Bruce E. Matter of Law Offices of Bruce E. Matter, PC, Maryland, USA. Respondent is Craig Shipp / AreaGuides.com, LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <patgoss.com> and <gossgarage.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2016; the Forum received payment on October 20, 2016.
On October 25, 2016, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the <patgoss.com> and <gossgarage.com> domain names are registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the names. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 October 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2016 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@patgoss.com, postmaster@gossgarage.com. Also on October 25, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims to have common law rights in the PAT GOSS, GOSS’ GARAGE, PAT GOSS CAR WOLRD and GOSS’ GARAGE WITH PAT ROSS marks through long standing use of the marks. Respondent’s <patgoss.com> domain name is identical to the PAT GOSS mark because it contains the mark, less the space, combined with the generic top-level domain (“gTLD”) “.com,” while the <gossgarage.com> domain name is confusingly similar to the GOSS’ GARAGE mark because it contains the mark, less the apostrophe and space, combined with the “.com” gTLD.
Respondent is not commonly known by the <patgoss.com> and <gossgarage.com> domain names as it has no permission to use Complainant’s marks and the WHOIS and other information indicates that Respondent is known as “Craig Shipp / Area Guides.com, LLC.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites have been continuously offered for sale and used to redirect Internet users to Respondent’s own websites, <princegeorges.com> and <areaguides.com>, and otherwise for profit through <sedoparking.com>.
Respondent uses the <patgoss.com> and <gossgarage.com> domain names in bad faith because they have been continuously offered for sale and used to redirect Internet users to Respondent’s own websites, and to competing third-party websites, in a disruptive manner and such use has been done for commercial gain. Respondent registered the <patgoss.com> and <gossgarage.com> domain names in bad faith because it did so with actual knowledge of Complainant and its rights in the PAT GOSS and GOSS’ GARAGE marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <patgoss.com> disputed domain name was created on November 19, 1998 and the <gossgarage.com> disputed domain name was created on December 31, 1998.
The Panel finds that the disputed domain names are confusingly similar to the common law marks of Complainant; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel finds that Complainant has provided sufficient evidence to establish that the multiple complainants in this proceeding should be treated as one. As such, the multiple complainants will hereby be referred to as “Complainant.”
The Panel finds that the disputed domain names are confusingly similar to the common law trademarks of Complainant. Complainant has adequately established that it had common law trademark rights in and to PAT GOSS, GOSS’ GARAGE and PAT GOSS CAR WORLD in 1998 when the disputed domain names were registered.
These common law rights are established by the undisputed fact that by the fall of 1998, PAT GOSS, GOSS’ GARAGE, and PAT GOSS CAR WORLD had been in use for more than 30 years. Between the years of 1981 and 1998 alone, Complainants spent over a quarter million dollars advertising the Marks.
Respondent arrives at the disputed domain names by adopting some of the common law trademarks of Complainant and merely deleting a space and appending the g TLD “.com.” This is insufficient to distinguish the disputed domain names from the common law trademarks.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s common law trademarks.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no permission or license to use the disputed domain names. Respondent is not commonly known by the <patgoss.com> and <gossgarage.com> disputed domain names. The WHOIS and other information indicates that Respondent is known as “Craig Shipp / Area Guides.com, LLC.” Complainant has provided the WHOIS record in Exhibit 10, as well as evidence related to other websites registered and operated by Respondent and Respondent’s purported business registration, in Exhibits 8, 9, 11, 12, and 13, to further demonstrate that Respondent is known by and does business exclusively as “Craig Shipp / Area Guides.com, LLC.” Therefore, the Panel finds that Respondent is not commonly known by the <patgoss.com> and <gossgarage.com> disputed domain names.
The Panel further finds that Respondent fails to use the <patgoss.com> and <gossgarage.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites have been continuously offered for sale and used to redirect Internet users to Respondent’s own websites, <princegeorges.com> and <areaguides.com>, and otherwise for profit through <sedoparking.com>. Complainant has provided evidence of Respondent’s offering the domain names for sale in Exhibits 5 and 7, as well as evidence of various redirection in Exhibit 6.
Therefore, the Panel finds that Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii); therefore, Respondent has no rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent uses the <patgoss.com> and <gossgarage.com> domain names in bad faith because they have been continuously offered for sale since registration. Complainant has provided evidence of these sales offers in Exhibits 5-7. As such, the panel finds that Respondent has engaged in bad faith use and registration.
Respondent apparently uses the <patgoss.com> and <gossgarage.com> disputed domain names in bad faith because they have been used to redirect Internet users to Respondent’s own websites, and to competing third-party websites, in a disruptive manner. Complainant has provided evidence, in Exhibit 16, that the domain names had previously redirected to <daveserio.com>, and evidence, in Exhibit 17, that such redirection was competitive with Complainant’s services. Further, Complainant has provided evidence of current redirection to Respondent’s own <princegeorges.com> in Exhibits 6 and 14. This redirection alone is sufficient to find bad faith use and registration.
Complainant contends that Respondent uses the <patgoss.com> and <gossgarage.com> disputed domain names in bad faith because they have been used to redirect Internet users to Respondent’s own websites, <princegeorges.com> and <areaguides.com>, and to competing third-party websites, for commercial gain. Complainant has provided evidence of Respondent’s redirecting use in Exhibit 5-7. As such, the Panel finds that Respondent uses the disputed domain names in bad faith according to policy ¶ 4(b)(iv).
Complainant claims that Respondent registered the <patgoss.com> and <gossgarage.com> domain names in bad faith because it did so with actual knowledge of Complainant and its rights in the PAT GOSS and GOSS’ GARAGE marks. Complainant maintains that prior to domain name registration, Respondent had tried to sell advertising space to Complainant, and that Complainant’s marks had already been used widely, while after registration, Respondent demanded a lofty price from Complainant for the disputed domain names based upon the fame of Complainant. Complainant argues that this behavior demonstrates that Respondent registered the domain names with actual knowledge of Complainant and its rights in the PAT GOSS and GOSS’ GARAGE marks. Although this does not explain why Complainant waited 18 years to bring this complaint, it does show, under the totality of the circumstances, that Respondent has been, apparently for 18 years, engaging in bad faith use and registration.
As such, the Panel finds that Respondent has engaged in bad faith use and registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <patgoss.com> and <gossgarage.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 21, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page