DECISION

 

Young Automotive Group, LLC v. Domain Vault / Domain Vault LLC

Claim Number: FA2309002061492

 

PARTIES

Complainant is Young Automotive Group, LLC ("Complainant"), represented by James T. Burton of Kirton McConkie PC, Utah, USA. Respondent is Domain Vault / Domain Vault LLC ("Respondent"), represented by Gary Schepps of Schepps Law Offices, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <youngmazda.com> (the "Disputed Domain Name"), registered with Name.com, Inc.

 

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 the Panelist in this proceeding.

 

David H. Bernstein as the Sole Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 12, 2023, naming as the respondent "Redacted for Privacy," the registrant identified in the publicly available WHOIS information. Forum received payment on September 12, 2023.

 

On September 12, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <youngmazda.com> domain name is registered with Name.com, Inc. and that Domain Vault / Domain Vault LLC is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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").

 

Name.com, Inc. noted in its verification e-mail that "the domain youngmazda.com is pending legal proceedings that may take precedence over the UDRP," but provided no details about any such legal proceedings (despite a follow up request from Forum). Complainant, in contrast, certified in its Complaint that there are no other legal proceedings related to the Disputed Domain Name, and Respondent did not disagree with that assertion. Accordingly, the Panel proceeds on the understanding that there are no other pending legal proceedings that relate to the Disputed Domain Name.

 

On September 14, Forum forwarded the verification correspondence from the Registrar to Complainant and requested that Complainant amend the Complaint to properly identify the Respondent and provide the Respondent's contact information.

 

On September 15, Complainant submitted an Amended Complaint (hereafter, the "Complaint") to Forum electronically, naming Domain Vault / Domain Vault LLC as the Respondent.

 

On September 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2023 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@youngmazda.com. Also on September 18, 2023, 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.

 

A timely Response was received and determined to be complete on October 9, 2023.

 

On October 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David H. Bernstein as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant owns and operates over two dozen car dealerships in Utah and Idaho, and owns two federal trademark registrations for YOUNG AUTOMOTIVE GROUP (one in standard characters and one in design form) for automobile dealerships and related services, both of which disclaim any exclusive rights in "Automotive Group" apart from the mark as a whole.

 

Complainant also claims common law rights in the marks YOUNG and YOUNG AUTOMOTIVE GROUP based on its use of the former since the 1990s and of the latter since at least 2003. Complainant additionally claims common law trademark rights in the mark YOUNG MAZDA, which it claims it first began using in 2016 when it opened its Young Mazda automobile dealership in Ogden, Utah. Others of Complainant's automobile dealerships include Young Chevrolet, Young Pontiac, Young Kia, Young Subaru, Young Ford, Young Toyota, Young Honda, Young Isuzu, Young Hyundai, Young Buick GMC, Young Volkswagen, and Young Chrysler, Dodge, Jeep, Ram.

 

Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant's YOUNG, YOUNG AUTOMOTIVE GROUP, and YOUNG MAZDA trademarks. Specifically, Complainant contends that the Disputed Domain Name (not including the gTLD <.com>) is comprised of the YOUNG MAZDA mark in its entirety. Complainant also contends that the Disputed Domain Name is confusingly similar to its YOUNG and YOUNG AUTOMOTIVE GROUP trademarks and that Respondent's use of the Disputed Domain Name falsely suggests to consumers that Respondent is an authorized licensee of, and/or is affiliated with or approved by, Complainant.

 

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name. According to Complainant, Respondent is not a licensee of Complainant and is not otherwise authorized by Complainant to use its marks or to register the Disputed Domain Name. Complainant further contends that Respondent is not commonly known by or identified with the Disputed Domain Name and that Respondent's name has no clear connection to either of the two words that comprise the domain name ("Young" and "Mazda"). Complainant additionally asserts that Respondent is, for its own presumptive commercial gain, using the Disputed Domain Name to divert would-be customers of Complainant to Respondent's website, which features links to products and services offered by Complainant's competitors. Therefore, Complainant alleges, Respondent cannot claim it is using the Disputed Domain Name "in connection with a bona fide offering of goods or services" or that it is "making a legitimate noncommercial or fair use of the domain name."  Policy paragraph 4(c)(i), 4(c)(iii).

 

Finally, Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant asserts as evidence of Respondent's bad faith registration and use of the domain name: (1) Respondent's use of pay-per-click ("PPC") links that link to Complainant's competitors; and (2) Respondent's use of a domain name that is likely to confuse customers as to Complainant's affiliation with and sponsorship of the domain name. Complainant additionally alleges that, when Respondent registered the Disputed Domain Name, Respondent was or should have been aware of Complainant's YOUNG and YOUNG AUTOMOTIVE GROUP trademarks, and that Respondent registered the Disputed Domain Name with the intent of selling the Disputed Domain Name to the highest bidder. Lastly, Complainant alleges that Respondent registered the domain name in order to divert internet users away from Complainant's goods and services and to Respondent's website.

 

B. Respondent

Respondent focuses its argument solely on the bad faith factor, and has not provided any argument on the first two factors of the Policy. It argues that Complainant has failed to establish bad faith registration and use, and that the Complaint should therefore be denied.

 

Respondent alleges that its registration could not have been in bad faith because it registered the Disputed Domain Name before Complainant's purported trademark rights accrued. Specifically, Respondent alleges that it registered the Disputed Domain Name in 2005, over a decade before Complainant's first use of the YOUNG MAZDA name, and 18 years before Complainant registered its YOUNG AUTOMOTIVE GROUP trademarks with the USPTO (which were only registered in 2023, a fact not mentioned in the Complaint and only found by review of the registration certificates submitted as an annex to the Complaint).

 

Further, Respondent alleges that there is no evidence that, in 2005 Respondent, which is located in Texas, had knowledge of Complainant and its trademarks, especially since Complainant is based in Utah, has no dealerships in Texas, and had not (as of 2005) registered its trademarks with the USPTO.

 

Respondent additionally alleges that Complainant is wrong when it contends that Respondent is using the Disputed Domain Name with the intent to sell the Disputed Domain Name or extort money from a would-be purchaser, and points out that the Complaint lacks any evidence of such an intent to sell the Disputed Domain Name.

 

Respondent also suggests that its registration of the Disputed Domain Name could not have been in bad faith because the Disputed Domain Name consists of two generic terms, "Young" and "Mazda," the latter of which, Respondent contends, is generic for "the transcendental god of Zoroastrianism, symbolizing creativity."  Respondent also asserts that Complainant does not have trademark rights in "Young" plus an open list of car brands, and cites the existence of an unrelated Young Mitsubishi car dealership that uses the domain name <youngmitsubishi.com>. Finally, Respondent alleges that this is "a classic example where a party recently acquires a trademark registration . . . and then attempts to reverse domain name hijack a domain name that was registered about two decades ago (in 2005)."  Respondent argues that "Complainant had nothing to do with Mazda in 2005 when the Respondent registered the domain name" and only became interested in the Disputed Domain Name after Complainant acquired a Mazda dealership over a decade later.

 

FINDINGS

The following facts are undisputed and are supported by the record.

 

Complainant owns and operates over two dozen car dealerships in Utah and Idaho. Prior to the Respondent's registration of the Disputed Domain Name, Complainant operated dealerships in Utah under the names Young Chevrolet, Young Pontiac, and Young Kia.

 

In 2003, Complainant first used its YOUNG AUTOMOTIVE GROUP trademark in connection with automobile dealership and retail store services.

 

Respondent, which is located in Texas, registered the Disputed Domain Name on April 4, 2005.

 

In the subsequent years, Complainant opened additional car dealerships under the name Young, including Young Subaru, Young Ford, Young Toyota, Young Honda, Young Isuzu, Young Hyundai, Young Buick GMC, Young Volkswagen, and Young Chrysler, Dodge, Jeep, Ram. Complainant did not open its Young Mazda dealership in Ogden, Utah until 2016, more than ten years after the Disputed Domain Name was registered.

 

The website to which the Disputed Domain Name resolves is a PPC website. The advertisements displayed on the website at the time of the Complaint consisted of links for "Mazda Dealership," "Mazda Inventory," and "Mazda Parts Online."  Each of the linked pages, in turn, contains links to Mazda dealers and resellers and sellers of Mazda parts that compete with Complainant, its website and its services. None of these links are to Complainant's products or services.

 

In February 2022, Complainant filed two trademark applications with the USPTO for YOUNG AUTOMOTIVE GROUP (one in standard characters and one in design form) for automobile dealerships and related services, both of which disclaim any exclusive rights in "Automotive Group" apart from the mark as a whole. On April 25, 2023, the USPTO issued the requested registrations.

 

Complainant filed the instant Complaint on September 12, 2023.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

For the reasons stated below, the Panel finds that Complainant has not proven all three elements by a preponderance of the evidence.

 

Identical and/or Confusingly Similar

Complainant overstates its case when it asserts that it "owns extensive common law rights in the YOUNG AUTOMOTIVE GROUP, YOUNG and YOUNG MAZDA marks throughout the United States based on its use dating back decades."  

 

First, it is highly doubtful that Complainant owns any common law trademark rights in the MAZDA portion of the YOUNG MAZDA mark. At best, the Panel suspects that Complainant has a license of some sort from Mazda Motor Corporation ("MMC") to use the MAZDA mark as part of its dealership name and in connection with the resale of MMC cars and parts.

 

Second, as the rest of the Complaint makes clear, Complainant has not used the YOUNG MAZDA name for "decades."  This may simply reflect sloppy drafting by Complainant's counsel, but counsel should take seriously its obligation to ensure that the assertions in its submissions are accurate, especially given that the Complainant includes the required certification "that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate."  

 

Third, the Complainant has offered no facts to substantiate that any of these marks have been used throughout the United States. The Complaint lacks any allegations of fact concerning advertising or sales beyond the Utah and Idaho areas in which Complainant operates.

 

This hyperbole is unfortunate because Complainant did not need to exaggerate its rights in order to satisfy its burden under the first element. Complainant owns a federal trademark registration for YOUNG AUTOMOTIVE GROUP. See WIPO Jurisprudential Overview 3.0, section 1.2.1. Given the disclaimer of "automotive group," the distinctive portion of the mark is YOUNG. See id., section 1.7 ("[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."). Moreover, Complainant has alleged ownership of more than two dozen car dealerships across two states, all of which combine the YOUNG trademark with a famous car brand, which is sufficient to support a finding that Complainant owns a family of YOUNG marks (at least in those two states) (though it is worth noting that the Complainant has not submitted any evidence showing any use, trademark or otherwise, of the term YOUNG standing alone). There is no doubt but that the Disputed Domain Name, which incorporates the distinctive YOUNG portion of Complainant's trademarks in its entirety, is confusingly similar to the marks in which Complainant has rights for purposes of the first element of the Policy. Id.

 

Given that Complainant can rely on its trademark registration and common law family of YOUNG marks to satisfy its burden under the first element, the Panel elects not to delay the resolution of this matter by seeking clarification from Complainant on the specifics of its relationship with MMC and the nature of its rights in the MAZDA portion of the YOUNG MAZDA name, or on the extent to which it has used the term YOUNG, standing alone.

 

Accordingly, Complainant has satisfied its burden of showing that Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights and has therefore satisfied the first element of the Policy.

 

Rights or Legitimate Interests

Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Complainant alleges that Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant's marks or to register the Disputed Domain Name. Complainant further contends that Respondent is not commonly known by or identified with the Disputed Domain Name and that Respondent's name (Domain Vault) has no clear connection to either "Young" or "Mazda," the two words that comprise the Disputed Domain Name. Complainant additionally asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for its own commercial gain by diverting would-be customers of Complainant to Respondent's website, which features PPC links to Complainants' competitors' products which, presumably, generate advertising or click-through revenue for Respondent.

 

"[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."  Id., section 2.1.

 

Tellingly, Respondent does not even try to articulate any rights or legitimate interests in respect of the domain name. It does not explain why it is using the Disputed Domain Name, let alone why it is using it in conjunction with PPC advertising for sellers of Mazda vehicles and Mazda parts that compete with Complainant's business. Respondent's use of these PPC links alone establishes that it is not using the Disputed Domain Name "in connection with a bona fide offering of goods or services."  Policy paragraph 4(c)(i); see WIPO Jurisprudential Overview 3.0, section 2.9 ("Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users.").

 

Because Respondent has not come forward with any evidence or argument to rebut Complainant's prima facie showing, Complainant has successfully established that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Accordingly, Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

Just as parts of Complainant's assertions are exaggerated and not credible, so are some of Respondent's arguments.

 

Respondent's suggestion that it registered the Disputed Domain Name in good faith because it "consists of two generic terms, 'Young', and 'Mazda,'" is not credible. Although "young" can be a descriptive term referring to a state of youthfulness, when that term is combined with a well known car brand, the combined name has the look and feel of a car dealership name. As for Respondent's contention that it registered a domain name containing the word "Mazda" because that is a generic term referencing "the transcendental god of Zoroastrianism, symbolizing creativity," that assertion cannot be taken seriously given the fame of the MAZDA brand. Advancing such a patently frivolous argument undermines Respondent's credibility.

 

Indeed, Respondent's frivolous argument is undercut by its own recognition that another company has registered the domain name <youngmitsubishi.com>, showing that the combination of the words "young" and a car brand do, indeed, reflect the name of a car dealership. Respondent's attempt to argue that this fact proves that "Complainant does not hold broad trademark rights to the term 'young' with an open list of car brands" fails because the www.youngmitsubishi.com website is for a car dealership in Australia, which therefore does nothing to undermine Complainant's assertions that it owns an exclusive family of YOUNG trademarks for car dealerships in the United States.

 

Also without merit is Respondent's repeated assertion that its registration of the Disputed Domain Name "precede[d] the accrual of Complainant's purported trademark rights."  Although it is true that Complainant did not open its Young Mazda dealership until 2016, more than ten years after Respondent registered the Disputed Domain Name, Complainant did at the time Respondent registered the Disputed Domain Name have rights in at least the YOUNG AUTOMOTIVE GROUP trademark along with at least three YOUNG-related car dealership marks.

 

Further, although Respondent argues that it has not used the Disputed Domain Name in bad faith, its operation of a PPC parking page that advertises websites that compete with Complainant is paradigmatic bad faith use. See WIPO Jurisprudential Overview 3.0, section 3.5.

 

Nevertheless, even a blind pig finds an acorn sometimes. Here, the critical flaw in the Complaint is Complainant's failure to credibly allege bad faith registration. What Complainant has failed to establish (and it is Complainant that bears the burden of proof) is that, when Respondent registered the Disputed Domain Name in 2005, it did so with a bad faith intent to take advantage of Complainant's trademarks.

 

Although Respondent may have registered the Disputed Domain Name in bad faith to take advantage of MMC's MAZDA trademark, MMC is not the complainant here; rather, it is Young Automotive Group. For Young Automotive Group to credibly establish bad faith registration in 2005, Young Automotive Group would need to offer some evidence that Respondent was likely aware of Complainant in 2005 and that it registered the Disputed Domain Name to target Complainant specifically. See id., section 3.2.1 (discussing circumstances that panels consider when assessing bad faith registration, which all in essence require some "indicia [] suggesting that the respondent had somehow targeted the complainant"). Complainant has not credibly alleged any of those facts.

 

To the contrary, in 2005, Complainant operated only three car dealer brands, and did so in Utah, several states away from Respondent's Texas base. Complainant has submitted no evidence at all that it did any business in Texas or that Respondent did any business in Utah. Complainant also has not submitted any evidence of the volume or geographic reach of its advertising or sales in the period prior to the registration of the Disputed Domain Name. And, as noted above, Complainant did not register its trademark with the USPTO until 2023, near two decades after the registration of the Disputed Domain Name.

 

Complainant also provides no evidence to support its naked assertion that Respondent "was well aware of" or should have been aware of the Complainant's marks when it registered the Disputed Domain Name in 2005. Although panels have inferred that a respondent knew or should have known about a complainant's mark when the mark is "widely known . . . or highly specific and a respondent cannot credibly claim to have been unaware of the mark," those circumstances are not present here. See id., section 3.2.2. Complainant generally alleges the "fame and reputation" of its marks but does not provide any evidence as to its sales or renown even today, let alone in 2005. Complainant's assertion that it had acquired consumer goodwill in part through its www.youngkia.com and www.youngchev.com websites prior to Respondent's registration of the Disputed Domain Name is insufficient to prove that Respondent likely knew or should have known about Complainant's marks at the time the domain name was registered.

 

The Panel also cannot accept Complainant's assertion that "there is no question that Respondent registered the Domain Name for the purpose of attracting Internet users to its Website—and away from Complainant's goods and services—through the unlicensed use of Complainant's YOUNG AUTOMOTIVE GROUP, YOUNG, or YOUNG MAZDA marks" (emphasis added) This assertion is not credible on the face of the Complaint because Complainant was not selling Mazdas or using the YOUNG MAZDA mark at the time of registration. As discussed above, Complainant provides no evidence of either the fame or reputation of its marks today, let alone in 2005.

 

In sum, although Respondent appears to be using the Disputed Domain Name in bad faith, and may even have targeted other parties in bad faith when it registered the Disputed Domain Name, Complainant has failed to show by a preponderance of the evidence that Respondent registered the Disputed Domain Name in bad faith to target Complainant and its trademark rights.

 

Reverse Domain Name Hijacking

Respondent requests a finding of reverse domain name hijacking ("RDNH"). The Rules define RDNH as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."  Rules paragraph 1.

 

Although the Complaint has failed, "the mere lack of success of a complaint is not itself sufficient for a finding of RDNH."  WIPO Jurisprudential Overview 3.0, section 4.16. Here, Complainant did have some relevant trademark rights at the time the Disputed Domain Name was registered, Respondent clearly lacked rights or legitimate interests in the Disputed Domain Name, and Respondent has used the Disputed Domain Name in bad faith through a PPC parking page that improperly profits off of Complainant's trademarks. Furthermore, although Complainant failed to show that Respondent improperly targeted Complainant when it registered the Disputed Domain Name, that may simply reflect that Complainant and its counsel failed to marshal the appropriate evidence; Complainant did allege (albeit unpersuasively) that Respondent likely knew of Complainant and its trademarks at the time Respondent registered the Disputed Domain Name. Furthermore, Respondent may well be guilty of bad faith registration as to MMC, which makes a finding of RDNH all the more inappropriate here.

 

DECISION

Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <youngmazda.com> domain name shall REMAIN WITH Respondent.

 

 

 

David H. Bernstein, Sole Panelist

Dated: October 23, 2023