DECISION

 

Jeff Wyler Automotive Family, Inc. v. Dong Chen Payments L.D.C. / Domain Administrator

Claim Number: FA2308002059123

 

PARTIES

Complainant is Jeff Wyler Automotive Family, Inc. ("Complainant"), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is Dong Chen Payments L.D.C. / Domain Administrator ("Respondent"), Belize.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <adillac.com>, ('the Domain Name') registered with SafeNames Ltd.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 25, 2023; Forum received payment on August 25, 2023.

 

On August 31, 2023, SafeNames Ltd. confirmed by e-mail to Forum that the <adillac.com> Domain Name is registered with SafeNames Ltd. and that Respondent is the current registrant of the name. SafeNames Ltd. has verified that Respondent is bound by the SafeNames Ltd. 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 September 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@adillac.com. Also on September 1, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On September 22, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark JEFF WYLER registered, inter alia, in the USA with first use recorded as 1973.

 

The Complainant owns common law trade mark rights in JEFF WYLER FAIRFIELD CADILLAC having used it since 2001 and uses CADILLAC pursuant to a trade mark licence with General Motors.

 

The Domain Name is confusingly similar to the Complainant's common law trade mark JEFF WYLER FAIRFIELD CADILLAC.

 

The Respondent is not authorised by the Complainant and is not commonly known by the Domain Name.

 

The Domain Name is not being used.

 

The Respondent has registered the Domain Name and a subdomain 'jeffwylerfairfieldc' in bad faith to confuse customers that the Respondent is affiliated with the Complainant.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark JEFF WYLER registered, inter alia, in the USA with first use recorded as 1973.

 

The Respondent registered the Domain Name in 2004. It is being used to offer commercial services relating to gift cards. 

 

The Respondent has not on the evidence provided by the Complainant used a subdomain 'jeffwylerfairfieldc' and this subdomain does not, necessarily technically, form part of any registration of the Domain Name by the Respondent. 

 

The Complainant has done searches against JeffWylerFairfieldc.adillac and is misrepresenting the meaning of these search results alleging that the Respondent has registered the subdomain 'jeffwylerfairfieldc' as part of the Domain Name when it has not.

 

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.

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The Complainant is the owner of the trade mark JEFF WYLER registered, inter alia, in the USA with first use recorded as 1973.

 

The Complainant contends that it has common law trade mark rights in JEFF WYLER FAIRFIELD CADILLAC explaining that it has had a licence to use the mark CADILLAC from General Motors since 2001. No actual evidence of this licence to use the CADILLAC mark has been presented with the Complaint. Based on the Complainant's own case if the CADILLAC mark is owned by General Motors and licensed to the Complainant then the Complainant is highly likely not to be the owner of common law rights in the CADILLAC element of any use of JEFF WYLER FAIRFIELD CADILLAC. No rights in CADILLAC as a mark or as an element of a mark is disclosed by the Complaint as presented.        

 

The Domain Name consists of the word string 'adillac' and the gTLD.com. The Panel holds that the Domain Name is not confusingly similar to the Complainant's JEFF WYLER trade mark or any Rights of the Complainant evidenced by the Complaint.

 

Since the Complainant has failed at the first hurdle it is not necessary to consider the issues of Rights or Legitimate Interests or Registration and Use in Bad Faith. Healthy Pets, Inc. d/b/a Pet Health Solutions v. Kwangpyo Kim, FA 1976154 (Forum Jan. 24, 2022) ("[S]ince Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.").

 

        Reverse Domain Name Hijacking

The Respondent did not reply to this Complaint. However the failures in this Complaint inevitably bring considerations of Reverse Domain Name Hijacking into question. 

 

The Complainant is an established business being advised and represented by a law firm. The Complainant has not provided any evidence of Rights sufficient to properly challenge the registration of the Domain Name. It has also misrepresented the meaning of search results to suggest that the Respondent has registered a sub domain containing the Complainant's JEFF WYLER trade mark when the Respondent has not and it would be impossible to do so. It is also extremely surprising that the Complainant did not submit any evidence of the actual use being made of the Domain Name, namely commercial services relating to gift cards which does not disclose any targeting of the Complainant by the Respondent.

 

On balance the Panel believes that exercising reasonable skill and judgement the Complainant must have realised that its Complaint was bound to fail and that it has not placed all relevant information as to use of the Domain Name before the Panel. The Panel makes a finding of Reverse Domain Name Hijacking. See HBA Holding LLC v William Sylvester (WIPO D2021-0048 where the Complainant did not present evidence of common law rights it alleged that it owned and did not put all relevant facts and evidence before the Panel).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and makes a finding of Reverse Domain Name Hijacking.

 

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

 

 

 

 

Dawn Osborne, Panelist

Dated: September 25, 2023