National Arbitration Forum

DECISION

Elm Grove Dodge Chrysler Jeep, Inc. v. Schedule Star c/o Adolph Santorine

Claim Number: FA0410000352423

PARTIES

Complainant is Elm Grove Dodge Chrysler Jeep, Inc. (“Complainant”), represented by David R. Croft, of Seibert & Kasserman, L.C., P.O. Box 311, 1217 Chapline Street, Wheeling, WV 26003.  Respondent is Schedule Star c/o Adolph Santorine  (“Respondent”), represented by Keith Peluchette, Esq., Rte 40 East, Liberty Bldg., P.O. Box 60, Triadelphia, WV 26059.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <elmgrovedodge.com> and <elmgrovedodge.net>, registered with Gkg.net, Inc.  <elmgrovedodge.com> was registered on July 17, 2002.  <elmgrovedodge.net> was registered on April 14, 2003.

PANEL

The undersigned Daniel B. Banks, Jr., certifies that he and the other panelists acted independently and impartially and to the best of his knowledge and belief, have no known conflict in serving as Panelists in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2004.

On October 26, 2004, Gkg.net, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <elmgrovedodge.com> and <elmgrovedodge.net> are registered with Gkg.net, Inc. and that the Respondent is the current registrant of the name.  Gkg.net, Inc. has verified that Respondent is bound by the Gkg.net, 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 November 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 2004 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@elmgrovedodge.com and postmaster@elmgrovedodge.net by e-mail.

A timely Response was received and determined to be complete on December 6, 2004.

On December 15, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz, G. Gervaise Davis, III and Daniel B. Banks, Jr., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is in the business of selling and servicing new and used automobiles.  It claims common law trademark and West Virginia statutory service mark rights and trade name rights with respect to Elm Grove Dodge Chrysler Jeep, Inc. (EGDCJ), Elm Grove Dodge Chrysler Jeep and Elm Grove Dodge, Inc.  Elm Grove Dodge, Inc. was registered by Complainant with the Secretary of State of West Virginia (WVSOS) on September 30, 1987.  A change of name amendment was filed on June 24, 1993 to change the name to Elm Grove Dodge Chrysler Jeep, Inc.  The trade name, Elm Grove Dodge Chrysler Jeep was established with the WVSOS on October 17, 2003.  The Service Mark was registered with the WVSOS on August 11, 2004.

Respondent has no rights or legitimate interests in respect of the disputed domain names for the following reasons:          

1 – Respondent is not affiliated in any way with Complainant.

2 – Respondent is not in the business of selling or servicing automobiles.

3 – Respondent is not commonly known by the <elmgrovedodge.com> or <elmgrovedodge.net> domain names.

Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.  Respondent’s use of the disputed domain names will misleadingly divert customers and will tarnish Complainant’s mark. 

The disputed domain names were registered and are being used by Respondent in bad faith.  Respondent’s intent is to circumvent legitimate Internet traffic intended for Complainant to websites that contain defamatory information about Complainant.  Respondent is attempting to embody an alleged lemon law claim against the manufacturer of the automobile he purchased with this domain name dispute for his commercial gain.  Such use violates ICANN Policy which prohibits registration and use to “intentionally attempt to attract, for commercial gain, internet users …by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.” 

B. Respondent

Respondent challenges Complainant’s legal status as a corporation entitled to recognition under West Virginia law and cites a lack of evidence to support such a finding.  Respondent also challenges Complainant’s lack of evidence of usage of the marks claimed.  Respondent asserts that the only evidence of such usage is Complainant’s attorney’s “bald-faced” assertion of such usage in the Complaint.  In this regard, a corporation called Elm Grove Dodge, Inc. was “authorized to do business” in West Virginia on September 30, 1987.  That corporation ceased such authority on June 24, 1993 when such authority was transferred to a “new” entity named Elm Grove Dodge Chrysler Jeep, Inc.  In conclusion, Respondent asserts that Complainant has proven no protectable mark.  Respondent also asserts that Complainant’s alleged marks are not identical or confusingly similar to the disputed domain name because the alleged marks are in “huge letters with strike-through lines” while the disputed domain names are in lower case with no spaces between and the disputed domain names do not contain the words “Chrysler” and “Jeep”.

Respondent claims rights and legitimate interests in the domain names.  In 2002, Respondent purchased a new vehicle from Complainant.  This purchase was apparently not an enjoyable experience for Respondent and he uses the disputed domain names for the purpose of complaining about his experience.  Respondent claims a legitimate noncommercial or fair use of the domain names without intent for commercial gain.  

As to registration and use in bad faith, Respondent claims that commercial gain is a definite, express prerequisite for bad faith and Respondent’s use of the domain names is not for a commercial gain.  Also, Respondent has made no practice of attempting to capitalize on domain names.  Respondent claims that Complainant’s underlying motive is to harass and bully Respondent in order to squelch the free speech of those interested in comparing notes about auto dealer practices and makes no showing of any deleterious effects due to Respondent’s use of the domains.  This proceeding is a bad faith attempt to reverse hijack the domains. 

FINDINGS

1 – The disputed domain names are identical or confusingly similar to marks claimed by the Complainant.

2 – Respondent has demonstrated rights and legitimate interests in the disputed domain names.

3 – The disputed domain names were not registered and are not being used in bad faith.

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

While the panel finds that the disputed domain names are identical or confusingly similar to the marks claimed by the Complainant, the panel also finds that Respondent’s 2002 and 2003 registration of the disputed domain names predates both Complainant’s trade name and service mark registration.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration. . .of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, D2002-0943 (WIPO Nov. 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”).

Furthermore, Complainant has failed to provide proof that Complainant’s mark has gained secondary meaning.  Complainant makes a mere recitation of secondary meaning in the Complaint.  See Weatherford Int’ll, Inc. v. Paul Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“[a]lthough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [a]lthough Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself).

Rights or Legitimate Interests

The Panel finds that Respondent has rights and legitimate interests in the disputed domain names because they are used to criticize Complainant.  See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where Respondent linked the domain name to a “complaint” website about Complainant’s products); see also TMP Worldwide Inc. v. Potter, D2000-0536 (WIPO Aug. 5, 2000) (finding that a criticism forum is an exercise of First Amendment rights and, therefore, a legitimate noncommercial use of the <tmpworldwide.net> and <tmpworldwide.org> domain names); see also Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (“the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain”).

There is absolutely no evidence that Respondent is using the disputed domains for a commercial use.  Therefore, the Panel finds that Respondent’s use of the disputed domain names is noncommercial in nature, and therefore, legitimate pursuant to Policy ¶ 4(c)(iii).  See New York Press v. New York Press, FA 94428 (Nat. Arb. Forum May 18, 2000) (finding that Respondent's use of its website for review and criticism of the New York press (media) and the fact that he applied to the U.S. Patent and Trademark Office for the NEW YORK PRESS mark, for use with his online publication is evidence that he began to use the domain name for a legitimate non-commercial use); see also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose).

Furthermore, the Panel finds that Respondent registered the disputed domain names prior to the date in which Complainant established rights in the EGDCJ mark.  Therefore, the Respondent has demonstrated rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark); see also Warm Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that Respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before Complainant had established rights in its alleged mark).

Registration and Use in Bad Faith

Respondent asserts that it only registered the disputed domain names to voice concerns and complaints about Complainant.  Respondent currently uses the domain names for this very function.  No one reading the web site would be confused as to sponsorship.  The Panel finds that Respondent’s registration and use of the disputed domain names does not constitute bad faith registration and use pursuant to Policy ¶ (4)(a)(iii).  See Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding initial interest confusion is displaced by the criticism content at Respondent's website and that such a "low level of confusion is a price worth paying to preserve the free exchange of ideas via the Internet"); see also Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (stating that as a general proposition, “the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent” (citing Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d at 535-536)).

The Panel also finds that Respondent has rights and legitimate interests in the domain names in using the domain names for a noncommercial purpose.  Therefore, Respondent did not register or use the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith where Respondent operates the fan club website without commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) cannot be established).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Daniel B. Banks, Jr., Panel Chair

G. Gervaise Davis & Hon. Nelson Diaz, Panelists
Dated: December 27, 2004

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