Kerbeck Motors, Inc. v. Admin c/o LaPorte
Holdings
Claim Number: FA0504000462905
Complainant is Kerbeck Motors, Inc. (“Complainant”), represented
by Vito Petretti, of Wolf, Block, Schorr and Solis-Cohen LLP,
1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097. Respondent is Admin c/o LaPorte Holdings
(“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <wwwkerbeck.com>
and <kerbeckchevrolet.com>,
registered with Nameking.com, Inc.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 15, 2005.
On
April 14, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <wwwkerbeck.com>
and <kerbeckchevrolet.com> are
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com,
Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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
April 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 10, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@wwwkerbeck.com and postmaster@kerbeckchevrolet.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 16, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Respondent’s
<kerbeckchevrolet.com> domain
name incorporates disparate parties’ marks and interests. Specifically, General Motors Corporation’s
CHEVROLET mark is implicated by way of Respondent’s domain name. Due to
practical difficulties inherent in the UDRP, cooperative complaint initiation
is unlikely and infeasible. Because
Complainant initiated this dispute prior to any other interested party,
Complainant has the opportunity to acquire the domain name, while seeking to
protect its KERBECK mark from an infringing use. However, due to the procedural complexities presented by the
current dispute, the following issue must be addressed: that Complainant seeks
acquisition of the subject domain name in good faith, and will forfeit its
interest in the contested domain name if the other represented mark is
infringed upon following a transfer of the domain name registration to
Complainant. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (finding that the
complainant’s continuing control of the
<viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name was contingent upon good faith possession, and the
complainant would forfeit its interest in the domain name if it infringed on
the other represented marks); see also
G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002).
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwkerbeck.com> and <kerbeckchevrolet.com>
domain names are confusingly similar to Complainant’s KERBECK mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwkerbeck.com>
and <kerbeckchevrolet.com>
domain names.
3. Respondent registered and used the <wwwkerbeck.com> and <kerbeckchevrolet.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Kerbeck Motors, Inc., through its various car dealerships, sells a variety of
new and used vehicles, including Chevrolets.
Complainant has repeatedly been recognized by Chevrolet as the world’s
number one seller of Chevrolet Corvette brand sports cars. Although Complainant does not hold a
registration for the KERBECK mark with the United States Patent and Trademark
Office, Complainant holds a pending application for the KERBECK mark (Ser. No.
78,523,138 filed November 26, 2004).
Complainant, its predecessors and related companies have been using the
KERBECK mark in connection with its car dealerships for over 100 years. Complainant has spent considerable time and
money in building the goodwill associated with and strengthening the KERBECK
mark. Complainant has marketed its services
on a national basis using a wide variety of media, including websites, local
television advertising, radio, print advertisements, telemarketing and
billboards.
Respondent
registered the <wwwkerbeck.com>
domain name on October 8, 2004 and the <kerbeckchevrolet.com>
domain name on February 14, 2004.
Respondent is using the disputed domain names to redirect Internet users
to a website that provides links to competing automobile sellers.
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."
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.
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.
Respondent registered
the <wwwkerbeck.com> and <kerbeckchevrolet.com> domain
names prior to Complainant’s registration of its KERBECK mark with the United
States Patent and Trademark Office.
However, for the purposes of Policy ¶ 4(a)(i), Complainant has
established common law rights in the mark through Complainant’s aggressive
promotion of the mark in commerce as well its continuous use of the mark for
over 100 years. See SeekAm. 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 v.
Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the
complainant had common law rights in the mark FISHTECH, which it had used since
1982).
Respondent’s <wwwkerbeck.com> domain name is
confusingly similar to Complainant’s KERBECK mark because the domain name
features Complainant’s mark in its entirety and merely adds the letters “www”
and the generic top-level domain “.com” to the mark. The addition of the letters “www” and a generic top-level domain
to Complainant’s mark does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Bank
of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that the respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to the complainant’s trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Blakely,
D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are
not distinct in the "Internet world" and thus the respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark); see
also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES); see also
Snow Fun, Inc. v. O'Connor, FA
96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark).
Respondent’s <kerbeckchevrolet.com>
domain name incorporates Complainant’s KERBECK mark in its entirety and merely
adds the CHEVROLET mark and the generic top-level domain “.com.” Such minor additions are insufficient to
negate a finding of confusing similarity between Respondent’s domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See G.D.
Searle & Co. v. Paramount Mktg.,
FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other
well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”); see
also 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 Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain names. When the
Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it
has rights or legitimate interests. Due
to Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); 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 rights or legitimate
interests is sufficient to shift the burden of proof to the respondent to
demonstrate that such rights or legitimate interests do exist).
Additionally, if
Complainant makes a prima facie showing
and Respondent does not respond, the Panel may accept all reasonable inferences
and assertions in the Complaint as true.
See 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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); see also
Charles Jourdan AG. V. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the panel to draw adverse inferences from the respondent’s
failure to reply to the complaint).
Respondent is
using the disputed domain names to redirect Internet users to a website that
provides links to competitor’s websites.
Respondent’s use of domain names that are confusingly similar to
Complainant’s KERBECK mark to redirect Internet users interested in
Complainant’s business to a website that offers links to competitor’s websites is
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Geoffrey, Inc. v. Toyrus.com,
FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that the respondent’s use of
the disputed domain name, a simple misspelling of the complainant’s mark, to
divert Internet users to a website that featured pop-up advertisements and an
Internet directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a
portal to suck surfers into a site sponsored by Respondent hardly seems
legitimate”).
Respondent has
not offered any proof, and there is no indication in the record suggesting that
Respondent is commonly known by the <wwwkerbeck.com>
and <kerbeckchevrolet.com>
domain names. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that Respondent’s use of a domain name that incorporates complainant’s KERBECK
mark in its entirety and merely adds the letters “www” before the mark
constitutes typosquatting and evidences Respondent’s bad faith registration and
use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See
Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net
1111111111, D2003-0232 (WIPO May 22, 2003) (finding that “[t]he absence of
a dot between the ‘www’ and ‘canadiantire.com’ [in the
<wwwcanadiantire.com> domain name is] likely to confuse Internet users,
encourage them to access Respondent’s site” and evidenced bad faith
registration and use of the domain name); see
also RE/MAX Int’l, Inc. v. Seocho,
FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that the respondent’s
registration of the <wwwremax.com> domain name, incorporating the
complainant’s entire mark, was done with actual notice of the complainant’s
rights in the mark prior to registering the infringing domain name, evidencing
bad faith); see also Black & Decker
Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the
<wwwdewalt.com> domain name was registered to “ensnare those individuals
who forget to type the period after the “www” portion of [a] web-address,”
evidence that the domain name was registered and used in bad faith).
Furthermore,
Respondent registered domain names containing Complainant’s mark in its
entirety and did so for Respondent’s commercial gain. Respondent is using the disputed domain names to redirect
Internet users to a website that provides links to competitor’s websites. The Panel infers that Complainant receives
click-through fees through the use of the domain name by diverting Internet
users searching for Complainant to Complainant’s competitors. The Panel finds that Respondent registered
and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed
Internet users seeking the complainant’s site to its own website for commercial
gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwkerbeck.com>
and <kerbeckchevrolet.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
May 31, 2005
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