Jerry Damson, Inc. v. Web Advertising, Corp.
Claim Number: FA0701000903143
Complainant is Jerry Damson, Inc. (“Complainant”), represented by Angela
Holt, of Lanier Ford Shaver &
Payne, P.C., 200 West Side Square, P.O. Box 2087, Huntsville, AL 35804. Respondent is Web Advertising, Corp. (“Respondent”),
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <jerrydamsonhonda.com>, registered with Domaindoorman, LLC, and <damsonhonda.com>, registered with Capitoldomains, LLC.
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 January 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2007.
On January 26, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <jerrydamsonhonda.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 1, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <damsonhonda.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On February 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 2007 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@jerrydamsonhonda.com and postmaster@damsonhonda.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 3, 2007, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jerrydamsonhonda.com> domain name is identical to Complainant’s JERRY DAMSON HONDA mark and the <damsonhonda.com> domain name is confusingly similar to the mark.
2. Respondent does not have any rights or legitimate interests in the <jerrydamsonhonda.com> and <damsonhonda.com> domain names.
3. Respondent registered and used the <jerrydamsonhonda.com> and <damsonhonda.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jerry Damson, Inc.,
has operated a car dealership under the JERRY DAMSON HONDA mark in
Respondent registered the <damsonhonda.com> domain name on October 25, 2005 and the <jerrydamsonhonda.com> domain name on
December 1, 2005. Both domain names
resolve to websites with sponsored links to the websites of competing
third-party automobile dealerships, some in the
Respondent has been the subject of at least five UDRP
decisions in the past four months, in which panels have ordered the transfer of
Respondent’s domain names to the complainant in the proceeding. See
River Valley Credit Union, Inc. v. Web Advert., Corp.,
FA 771891 (Nat. Arb. Forum Sept. 26, 2006); Guess? IP Holder L.P. v. Web Advert. Corp., FA 836506 (Nat. Arb. Forum Dec. 20, 2006); Smooth
Corp. v. Web Advert. Corp., FA 792048 (Nat. Arb.
Forum Oct. 25, 2006); The Royal Bank of Scot. Group
plc v.
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 has not registered the JERRY DAMSON HONDA mark with the United States Patent and Trademark Office or a state trademark office. However, the Panel finds that Complainant need not own a trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23, 2007) (“The ICANN dispute resolution policy is thus broad in scope in that the reference to a trademark or service mark in which Complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy.”).
Because Complainant has continuously used the JERRY DAMSON
HONDA mark in the
The <jerrydamsonhonda.com>
domain name is identical to Complainant’s JERRY DAMSON HONDA mark because the
only difference between the disputed domain name and the mark is the lack of spaces
between terms and the addition of the generic top-level domain “.com.” In W.
Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005), the
panel found that the gTLD “.com” is part of the Internet address and does not
add source-identifying significance. In Croat. Airlines v. Kwen Kijong, AF-0302
(eResolution Sept. 25, 2000), the panel found that the
<croatiaairlines.com> domain name was identical to the complainant's
CROATIA AIRLINES trademark even though the domain name omitted the space between
terms of the mark. In this case, then,
Respondent has failed to distinguish the <jerrydamsonhonda.com> domain name from the JERRY DAMSON mark and
as a result, the Panel finds the disputed domain name to be identical to the
mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <damsonhonda.com>
domain name is confusingly similar to the JERRY DAMSON HONDA mark, as
Respondent has merely omitted the term “jerry” and left the rest of the mark
intact. This alteration is insufficient
to avoid a finding of confusing similarity according to Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan
Computing, D2000-1262 (WIPO Nov.
14, 2000) (finding that the domain name <asprey.com> is confusingly
similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the
domain name <wellness-international.com> is confusingly similar to the
complainant’s WELLNESS INTERNATIONAL NETWORK).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
contested domain names. Once Complainant
makes a prima facie case in support
of its allegations, the burden then shifts to Respondent to show it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”); see
also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum
Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant under Policy ¶ 4(c), the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002)
(“Respondent's failure to respond not only results in its failure to meet its
burden, but also will be viewed as evidence itself that Respondent lacks rights
and legitimate interests in the disputed domain name.”); see also Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain names under the name
“Web Advertising, Corp.,” and there is no other evidence in the record
suggesting that Respondent is commonly known by the disputed domain names. Consequently, Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Instron Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the
<shoredurometer.com> and <shoredurometer.com> domain names because
the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip't as the registrant of the disputed domain name and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute); see also St.
Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007)
(concluding a respondent has no rights or legitimate interests in a disputed
domain name where there is no evidence in the record indicating that the
respondent is commonly known by the disputed domain name).
Furthermore, Respondent is not using the <jerrydamsonhonda.com> and <damsonhonda.com> domain names 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) by maintaining a web page with
sponsored links to the websites of automobile dealerships that compete with
Complainant. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel
concluded that using a confusingly similar domain name to divert Internet users
to competing websites 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). Likewise, in this case Respondent is using
two domain names to misleadingly divert Internet users to competing websites
and is likely earning “click-through” fees in the process. The Panel does not find such use for
Respondent’s own commercial gain to establish rights or legitimate interests
under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent
was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use by redirecting Internet users to a commercial search
engine website with links to multiple websites that may be of interest to the
complainant’s customers and presumably earning “click-through fees” in the
process).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <jerrydamsonhonda.com> and <damsonhonda.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users seeking information on Complainant’s car dealership to a website displaying links to the websites of competing automobile dealerships. Respondent is likely earning referral fees for each consumer it diverts to third-party websites and is therefore likely profiting from this diversion scheme. As a result, Respondent has registered and is using the disputed domain names in bad faith according to Policy ¶ 4(b)(iv). 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 from click-through fees); see also The Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Because most of the links on Respondent’s websites are to competing automobile dealerships, the Panel also finds that Respondent has registered and is using the disputed domain names to disrupt Complainant’s business, which constitutes bad faith according to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent has had at least five UDRP decisions rendered against it in the last four months alone. Respondent appears to have registered numerous domain names in order to prevent rightful owners from registering domain names containing their marks. Accordingly, the Panel finds that Respondent has established a pattern of registering and using domain names in bad faith under Policy ¶ 4(b)(ii), and that Respondent has prevented Complainant from registering the <damsonhonda.com> and <jerrydamsonhonda.com> domain names and reflecting its JERRY DAMSON HONDA mark. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous Policy proceedings, which established a pattern of cybersquatting); see also Arai Helmet Ams., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
The Panel concludes that Complainant has 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 <jerrydamsonhonda.com> and <damsonhonda.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 8, 2007
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