DECISION

Byers Chevrolet, LLC v. Travis Van Ness dba PlushGreen

Claim Number: FA0206000114670

PARTIES

Complainant is Byers Chevrolet, LLC, Columbus, Ohio, USA (“Complainant”) represented by David M. Karr, of Carlile Patchen & Murphy LLP.  Respondent is Travis Van Ness d/b/a PlushGreen, Groveport, Ohio, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <byerschevrolet.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as the Panelist in this proceeding.

Houston Putnam Lowry is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 21, 2002; the Forum received a hard copy of the Complaint on June 24, 2002.

On June 25, 2002, Register.com confirmed by e-mail to the Forum that the domain name <byerschevrolet.com> is 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 15, 2002 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@byerschevrolet.com by e-mail.

A timely Response was received and determined to be complete on July 16, 2002.

Complainant’s additional response was received in a timely manner on July 19, 2002.  Respondent’s additional response was received in a timely manner on July 23, 2002.

On July 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry as the Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Byers Chevrolet, Inc., the predecessor of Byers Chevrolet, LLC (“Complainant”), filed its Articles of Incorporation with the Ohio Secretary of State on January 9, 1929.  Complainant has continuously conducted business under the BYERS CHEVROLET corporate and tradenames since that time.  BYERS CHEVROLET has been an active, registered Ohio tradename owned by Complainant since December 29, 1986.  Complainant has conducted business as an automobile dealership under that registered tradename since the date of registration thereof.  A copy of the Registration Certificate with the Ohio Secretary of State was attached as “Exhibit B” to the Complaint.

Byers Chevrolet is part of a multi-faceted automobile sales, service and marketing organization in central Ohio operated by the Byers family.  Byers Holding, Inc., formed in 1932, and Geo. Byers Sons Holding, Inc., formed in 1929, directly or indirectly operate numerous automobile dealerships in central Ohio, including Byers Chrysler, Byers Chevrolet, Byers Mazda-Subaru, Byers Dublin Chevrolet, Byers Dublin Dodge, Byers Imports, Byers Volvo, and Byers Car Rentals.  All of these tradenames are registered of record with the Ohio Secretary of State.

The domain name registered by Respondent, <byerschevrolet.com>, is identical to and confusingly similar to the foregoing BYERS and BYERS CHEVROLET tradenames registered and used by Complainant.  The Respondent has refused to transfer this domain name to the Complainant. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).

B. Respondent

In his Response, Respondent claims Respondent purchased <byerschevrolet.com> as a memorial to his belated great-grandfather, Herbert Van Ness.  Respondent conceived the <byerschevrolet.com> domain and provided material for the web-site based on personal experiences and conversations that had taken place between Respondent and Respondent’s great-grandfather.

Reading the web site text that was attached to the Response (which differed slightly from the Response), Respondent claims his great-grandfather (his name was not disclosed on the web site) was a fan of June Byers (a female wrestler from circa 1955).  He was such a fan he named his “favorite beat-up truck” (no model specified) “June”.  Respondent has carried on the family tradition by naming his trucks (brands unspecified) “June” as well.  Pictures of the trucks were not provided by either party.

C. Additional Submissions

The parties exchanged documents about the veracity of Respondent’s claim the web site was a memorial for his great grandfather.

FINDINGS

Byers Chevrolet, Inc., the predecessor of Complainant, filed its Articles of Incorporation with the Ohio Secretary of State on January 9, 1929 (although no copy of such articles was attached to the Complaint).  Complainant has continuously conducted business under the BYERS CHEVROLET corporate and tradenames since that time.  BYERS CHEVROLET has been an active, registered Ohio tradename owned by Complainant since December 29, 1986 (although this registration claims the “Byers Chevrolet” name was used by Geo. Byers Sons, Inc. only since December 28, 1986 and does not explain how these rights got transferred to Complainant from Geo. Byers Sons, Inc.).

Nevertheless, the Panel finds Complainant has conducted business as an automobile dealership under that registered tradename.  It is a common practice for Chevrolet car dealers to be known as their name, followed by the word Chevrolet (such as Byers Chevrolet in this case).

Byers Chevrolet is part of a multi-faceted automobile sales, service and marketing organization in central Ohio operated by the Byers family.  Byers Holding, Inc., formed in 1932, and Geo. Byers Sons Holding, Inc., formed in 1929, operate numerous automobile dealerships in central Ohio, including Byers Chrysler, Byers Chevrolet, Byers Mazda-Subaru, Byers Dublin Chevrolet, Byers Dublin Dodge, Byers Imports, Byers Volvo, and Byers Car Rentals.  While Respondent claims he resided in Athens County (presumably in Ohio) at the time <byerschevrolet.com> was registered (March 29, 1997 per Respondent’s Exhibit A), it is clear the “Byers Chevrolet” mark was in use at that time and registered in Ohio.

The domain name registered by Respondent, <byerschevrolet.com>, is identical to and confusingly similar to the foregoing BYERS and BYERS CHEVROLET tradenames registered and used by Complainant.  The fact a disclaimer is contained on the web site suggests the question has arisen so frequently that it needed to be addressed on an on-going basis.

Respondent’s web site contained an open ended offer to sell the web site on May 29, 2002 (and very probably on other days as well).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical 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

Respondent’s domain name is identical to Complainant’s tradename because spaces are impermissible in the second level domain and the generic top-level domain “.com” is of no consequence. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests

Respondent registered the <byerschevrolet.com> domain name (March 2, 2000 according to Complainant’s Exhibit G and March 29, 1997 according to Respondent’s Exhibit A; the analysis is the same with either date).  Since that time, Respondent has developed two different uses for the domain name.

First, Respondent attached a website to the domain name that offered the domain name for sale.  Second, Respondent currently uses the domain name to resolve to a website that contains links to Respondent’s “favorite Adult sites”, inter alia.

Neither use of the domain name represents a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

There was no suggestion the domain name was used solely (or even primarily) for email services.

Respondent is not commonly known by the <byerschevrolet.com> domain name.  Respondent has never been associated with the domain name and has no rights of legitimate interests in the domain name.  Respondent has no legitimate rights and interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith

Not only did Respondent initially resolve the domain name to a website that offered the domain name for sale, Respondent communicated to Complainant’s attorney that “If your client wishes to purchase the said domain, then I would have to contemplate an offer and make a business decision based on such an offer.”  Respondent’s behavior of registering the domain name and establishing an intent to sell the domain name warrants a finding of bad faith registration and use. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").

Furthermore, Respondent’s second use of the domain name linking Internet users to other websites, including pornographic websites, constitutes bad faith under Policy ¶ 4(b)(iv).  Respondent presumably benefits from its use of the domain name and creates consumer confusion because the domain name is identical to Complainant’s BYERS CHEVROLET tradename, See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); 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); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Frankly, Respondent’s claims about the use of the domain name are not credible.  It is very odd indeed to erect a web site in someone’s honor and then fail to mention their name.  Such factors weigh heavily on the Panel’s mind and suggest the claimed reasons for registration and use are a pretext for some other purpose.

The fact Respondent had a disclaimer on the site to differentiate himself from Complainant surely must indicate Respondent either knew of Complainant’s marks and/or there was confusion about who operated the domain.

DECISION

The <byerschevrolet.com> domain name shall be forthwith transferred from Respondent to Complainant.

Houston Putnam Lowry, Panelist and Chartered Arbitrator
Dated: July 30, 2002

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