Sonic-Bethany H, Inc. d/b/a Steve Bailey Honda v. 2220 c/o Internet Coordinator
Claim Number: FA0602000638199
Complainant is Sonic-Bethany H, Inc. d/b/a Steve Bailey Honda (“Complainant”), represented by Jami J. Farris, of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center, 401 South Tryon Street, Suite 3000, Charlotte, NC 28202. Respondent is 2220 c/o Internet Coordinator (“Respondent”), P.O. Box No. 71826, KCPO, Central 00000, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stevebaileyhonda.com>, registered with Enom, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2006.
On February 2, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stevebaileyhonda.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2006 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@stevebaileyhonda.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stevebaileyhonda.com> domain name is identical to Complainant’s STEVE BAILEY HONDA mark.
2. Respondent does not have any rights or legitimate interests in the <stevebaileyhonda.com> domain name.
3. Respondent registered and used the <stevebaileyhonda.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sonic-Bethany H, Inc. d/b/a Steve Bailey Honda, has operated a Honda motor dealership under the name “Steve Bailey Honda” in Oklahoma City, OK since January 25, 2002. Complainant has continuously used this name in connection with its business. Complainant has also registered the STEVE BAILEY HONDA trade name in Oklahoma on January 25, 2002 pursuant to Okla. Stat. tit. 18 § 1140.
Respondent registered the <stevebaileyhonda.com> domain name on January 31, 2004. Internet users who access this domain name are directed to a website which displays the words “Steve Bailey Honda Oklahoma City” as well as links with names related to Honda automobiles, such as “Honda Civic” and “Honda Pilot.” Internet users who click on these links are directed to search-engine websites featuring links to websites related to Honda and other motor vehicle services. Each of these search-engine websites generate multiple pop-up advertisements. None of these websites are associated with Complainant.
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. 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.”).
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.
Complainant asserts that the STEVE BAILEY HONDA mark has acquired sufficient secondary meaning to establish common law rights based on Complainant’s use of the mark in connection with its business. Complainant has operated under the STEVE BAILEY HONDA mark since January 25, 2002 in connection with its automobile dealership, and Complainant’s use of the mark has been continuous and ongoing since that date. Complainant’s use of the STEVE BAILEY HONDA mark in this fashion is sufficient to establish common law rights in the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); 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). In addition, Complainant registered the STEVE BAILEY HONDA trade name in Oklahoma on January 25, 2002. The Panel determines that Complainant’s state registration of its mark also demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP).
Respondent’s <stevebaileyhonda.com> domain name is identical to Complainant’s STEVE BAILEY HONDA mark in that it incorporates Complainant’s STEVE BAILEY HONDA mark in its entirety, with the removal of the spaces between the terms. Because spaces are not allowed in domain names, the removal of the space between the terms in Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical). The addition of “.com” to Complainant’s mark does not adequately distinguish Respondent’s domain name from the mark either. Generic top-level domain suffixes such as “.com” are irrelevant to the analysis of whether a domain name is identical to a mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests. The Panel finds that Complainant has made a prima facie case, and the burden shifts to Respondent as a result. Respondent has failed to respond to the Complaint. Therefore, the Panel will examine the evidence to determine if Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s <stevebaileyhonda.com> domain name
is identical to Complainant’s STEVE BAILEY HONDA mark. Internet users who access this domain name
are directed to a website featuring links with the names of products
Complainant sells. Clicking on these
links directs Internet users to generic search-engine websites displaying links
to Honda or other automobile-related websites, none of which are associated
with Complainant. Furthermore, Internet
users who are directed to the search-engine websites are presented with pop-up
advertisements. The Panel presumes that
Respondent receives click-through fees in exchange for diverting Internet users
to these other websites and for exposing Internet users to pop-up
advertisements. Respondent’s use of the
disputed domain name is not in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also
Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (holding that the respondent’s
use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services).
There is no evidence on the record that Respondent has ever been commonly known by the <stevebaileyhonda.com> domain name, or that Respondent is affiliated with Complainant. Furthermore, the WHOIS database shows that Respondent registered the <stevebaileyhonda.com> domain name under the name “2220 Internet Coordinator,” which has no relation to the disputed domain name. The Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <stevebaileyhonda.com> domain
name, which is identical to Complainant’s STEVE BAILEY HONDA mark, to present
Internet users with links that appear to be associated with Complainant. These links actually direct Internet users
to search-engine websites, which in turn link to websites that appear to be
related to Complainant. However, these
websites are not associated with Complainant.
These search-engine websites also expose Internet users to pop-up
advertisements. Respondent most likely
receives click-through fees in return for directing Internet users to these
websites, and for exposing them to pop-up advertisements. Respondent is benefitting financially by
taking advantage of Internet users’ confusion about the relationship between
the disputed domain name and Complainant’s mark. Such use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S
Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (“Respondent registered and used the <my-seasons.com> domain name
in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is
using a domain name that is confusingly similar to the MYSEASONS mark for
commercial benefit by diverting Internet users to the <thumbgreen.com>
website, which sells competing goods and services.”); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad faith.”).
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 <stevebaileyhonda.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 22, 2006
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