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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Pete Baur Pontiac, Inc. v. Joseph Kasmerki
Claim Number: FA0009000095613
PARTIES
Complainant is Pete Baur Pontiac, Strongsville, OH, USA ("Complainant"). Respondent is Joseph Kamerski, Brooklyn, OH, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are petebaur.com, pete-baur.com, petebaur-pontiac.com, and petebaurpontiac.com registered with Register.Com.
PANELIST
The Panelist certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as the panelist in this proceeding.
Honorable Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 15, 2000; The Forum received a hard copy of the Complaint on September 15, 2000.
On September 15, 2000, Register.Com confirmed by e-mail to the Forum that the domain names petebaur.com, pete-baur.com, petebaur-pontiac.com, petebaurpontiac.com are registered with Register.Com and that the Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On September 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Res pondent 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@petebaur.com, postmaster@pete-baur.com, postmaster@petebaur-pontiac.com, and postmaster@petebaurpontiac.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 Forum transmitted to the parties a Notification of Respondent Default.
On October 11, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notic e to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, withou t the benefit of any Response from the Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The domain names in dispute are identical and confusingly similar to the trademark held by Pete Baur Pontiac, Inc. Specifically, "Petebaur.com," "Pete-baur.com," "Petebaur-pontiac.com" and "Petebaurpontiac.com" each contain the exact trademark held and utilized in commerce by Pete Baur Pontiac, Inc. for the last twenty-five years.
2. Respondent has no right or legitimate interests in the disputed domain names that he registered. Respondent is an individual who, to Complainant’s knowledge, has no affiliation with the automobile business. Respondent is not engaged in the business of selling, promoting, or any other activity related to the sale or distribution of vehicles. Respondent has neither a trademark for the name "Pete Baur Pontiac" nor one for any variation of that mark.
3. Respondent registered and has used the disputed domain names in bad faith. Respondent acquired the disputed domain names primarily for the purpose of selling the domain name registration to Pete Baur Pontiac, Inc., the owner of the trademark, which is contrary to the provisions of Paragraph 4(b)(i) of the UDNDR Policy. This is evidenced by the fact that Respondent refused to transfer or cancel the registration of the disputed domain names unless Pete Baur paid him a ransom of $1,500 . This is a sum for valuable consideration in excess of Respondent’s documented (or undocumented) out-of-pocket costs directly related to the domain names. The sum Respondent paid for the registration of the disputed domain names totals $140. By attemptin g to obtain money in excess of this amount from Pete Baur Pontiac, Inc. in this manner, Respondent has violated the Anti-cybersquatting Consumer Protection Act, 15 U.S.C. § 1125 (1999).
4. Alternatively, Respondent acquired the disputed domain names primarily for the purpose of selling the disputed domain name registrations to any interested party, e.g., a competitor to Pete Baur Pontiac, Inc. This is evidenced by Res pondent’s initial advertisement that the Web site to which the domain name "petebaur.com" points is for sale. Further, pursuant to Paragraph 4(b)(ii) of the UDRP Policy, Respondent has engaged in bad faith registration of the disputed domain names. Respon dent has registered the disputed domain names in order to prevent Pete Baur, the true owner of the trademarks, from reflecting the mark in corresponding domain names. Respondent has engaged in a pattern of such conduct as evidenced by his registration of not just one, but four variations on Pete Baur’s trademarks. Finally, pursuant to Paragraph 4(b)(iv) of the UDRP Policy, Respondent, by using the disputed domain names, has intentionally attempted to attract, for his own commercial gain, Internet users to his web site. In doing so, Respondent has created a likelihood of confusion with Pete Baur’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s web site.
B. Respondent
Respondent did not file a response. Respondent’s failure to respond to the complaint does not relieve Complainant of its burden to prove all elements set out in Paragraph 4.a. of the Policy. However, Respondent’s failure to deny any of the Complain ant’s fact allegations permits this Panel to take Complainant’s averments as true and to draw appropriate inferences.
FINDINGS
Complainant is a well-known and well-recognized automobile dealership in the northeast Ohio (Cleveland) area where it is located. For more than 25 years, Complainant has been doing business under its trademarks "PETE BAUR" and "PETE BAUR PONTIAC." Complainant has invested a great deal of time and money in the marketing, advertising and promotion of its goods and services to the public under these trademarks such that consumers and the general public have come to associate the trademarks "PETE BAUR" and "PETE BAUR PONTIAC" with the goods and services offered for sale by Pete Baur Pontiac, Inc.
Notice of the dispute was first given to the Respondent in a cease and desist letter sent by legal counsel for Complainant on June 7, 2000. In response to the cease and desist letter, Respondent stated that he intended to put up a web site in honor of his dog, which he had named "Pete Baur." The Panel does not find this to be persuasive evidence of rights or legitimate interests in the domain name.
Respondent offered to sell the domain names to Complainant for $1,500, a sum that is in excess of the $140. Respondent paid to register the domain names.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a complainant 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 the Respondent is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Policy ¶ 4.a.(i) does not require that the Complainant’s marks be registered in order to garner protection under the UDRP. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that a Complainant have rights in a registered trademark and that it is sufficient to show common law rights).
Given Complainant’s exclusive and extended use of its marks in connection with its services, Complainant acquired exclusive right to use the trademarks "PETE BAUR" and "PETE BAUR PONTIAC" in commerce. The marks have gained secondary association with Co mplainant’s business and services. See Tuxedos By Rose v. Hector Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000); Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark "fishtech" which it has used since 1982). The Panel concludes that Complainant has common law rights in the marks "PETE BAUR" and "PETE BAUR PONTIAC."
When Internet users seek Complainant’s goods and services, they more than likely type in Complainant’s mark and add the ".com" suffix. See Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246, 53 U.S.P.Q. 2D (BNA) 1570, ( "For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com. n3"). Use of a domain name by anyone other than the entity connected with the mark is likely to cause confusion.
The Panel concludes that Respondent’s domain names are identical to and confusingly similar to Complainant’s marks. Policy ¶ 4.a.(i). Respondent’s attempt to get around Complainant’s identifying marks by adding a hyphen betwee n the words in the Complainant’s marks does not succeed in creating a new and separate identity. See The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the Complain ant’s registered mark is confusingly similar); CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of Complainant’s mark is identical to and confusingly similar to Complainant’ s mark).
Rights or Legitimate Interests
Respondent did not respond to this complaint with any evidence showing that Respondent has rights or legitimate interests in Complainant’s mark. On their face, these domain names incorporate in their entirety the words by which Complainant has iden tified itself in its business operations for many years. No evidence exists to show that Respondent is known by Complainant’s personal name and business name "Pete Baur" and Respondent is not. Policy ¶ 4.c.(ii). The record permit s the inference that Respondent has not used the domain names in connection with any bona fide use or noncommercial endeavor. Policy ¶ 4.c.(i), (iii). The record further permits an inference that Respondent is using the domain na mes in order to profit by offering them for sale at a price in excess of any costs of registration. Offering generic domain names for sale is a bona fide use of a domain name; however, offering domain names, which infringe upon another’s mark, for sale in order to make a profit is not a bona fide use of a domain name. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that Respondent’s offering of "toefl.com" for sale at "tourdomain.com" does not, standing alone, est ablish a right or legitimate interest in that domain name). The Panel concludes that Respondent has no rights or legitimate interests in the domain names.
Registration and Use in Bad Faith
Respondent offered to sell the domain names to Complainant for $1,500. Respondent also posted a "for sale" notice at its website for the domain names. Respondent registered and is using the names in question for the purpose of selling them to Compl ainant, or to a competitor of Complainant, for valuable consideration in excess of out-of-pocket costs. Policy ¶ 4(b)(i). This is evidence of bad faith registration and use. See EAuto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Asset s.com, Inc., D2000-0120 (WIPO April 13, 2000).
Based on the preceding facts, the Panel finds that Respondent registered and is using the domain names at issue here in bad faith.
DECISION
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain names petebaur.com, pete-baur.com, petebaur-pontiac.com, petebaurpontiac.com be transferred from Respondent to Complainant.
Honorable Carolyn Marks Johnson, Panelist
Dated: October 20, 2000
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