DECISION

California Mustang Sales and Parts, Inc. v. Vlad Volkov

Claim Number:  FA0403000250032

PARTIES

Complainant is California Mustang Sales and Parts, Inc. (“Complainant”), represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Ste. 500, P.O. Box 7068, Pasadena, CA 91109-7068.  Respondent is Vlad Volkov  (“Respondent”), 128 Valakolamskoye Shosse, Moscow, Russia 12838.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <calmustang.com>, registered with Enom, Inc.

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 Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 30, 2004; the Forum received a hard copy of the Complaint on March 31, 2004.

On March 31, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <calmustang.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 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@calmustang.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 May 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 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 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 makes the following assertions:

1. Respondent’s <calmustang.com> domain name is confusingly similar to Complainant’s CALIFORNIA MUSTANG and CAL-MUSTANG marks.

2. Respondent does not have any rights or legitimate interests in the <calmustang.com> domain name.

3. Respondent registered and used the <calmustang.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, California Mustang Sales and Parts, Inc., is the world’s largest Mustang parts supply company in the world. Complainant carries the largest in-stock inventory and widest selection of parts and accessories for early and late model Mustangs, as well as other Ford automobiles.

Complainant began selling automobile parts in California in 1976 and has been continuously using the CALIFORNIA MUSTANG and CAL-MUSTANG trademarks in connection with its business, advertising and promotional materials, and main website since 1976 and 1996, respectivly. Complainant has been the exclusive user of these marks since their original use. Complainant supplies Mustang parts to almost every other company operating in the Mustang parts business. Each year, Complainant supplies parts to customers in every state and in more then forty countries around the world.

Complainant has invested substantial time, money, and effort in promoting the sale of Mustang automobile parts in association with its CALIFORNIA MUSTANG and CAL-MUSTANG marks. In the last ten years, Complainant has spent $400,000-500,000 per year on advertising and promotional materials that incorporate these marks. Since 1976, Complainant has sold millions of Mustang parts and generated more then $84 million dollars in sales associated with these marks. As a result of the high quality of Complainant’s goods, extensive promotion, sales and public response, Complainant’s goods and services have acquired an outstanding reputation and the public now associates these goods with Complainant and the CALIFORNIA MUSTANG and CAL-MUSTANG marks.

Complainant originally was the owner of the disputed domain name. Complainant registered the domain name in February 2000 and owned the registration until 2003, when the registration inadvertently lapsed.

Respondent registered the disputed domain name on May 2, 2003 and is using the domain name to offer directory and search services for Mustang parts as well as unrelated pop-up advertisements. After registering the domain name Respondent twice offered to sell the <calmustang.com> domain name registration to Complainant, initially for $500 and subsequently for $1000. Complainant did not accept these offers.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Registration of a mark with a governmental authority is unnecessary for a Complainant to establish rights in a mark if a common law mark has been established. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant has established rights in the CALIFORNIA MUSTANG and CAL-MUSTANG marks through its ownership of common law marks. Through Complainant’s long-term, continued use of the marks since 1976 and 1996, Complainant and Complainant’s related goods and services have acquired secondary meaning and become distinctive of Complainant’s goods and services. A common law mark is established when a plaintiff’s goods or services become distinctive and acquire secondary meaning. Complainant has established secondary meaning in the CALIFORNIA MUSTANG and CAL-MUSTANG marks through its continued and exclusive use for the last twenty-eight and eight years, respectivly. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

Respondent’s <calmustang.com> domain name is confusingly similar to Complainant’s common law mark because it incorporates Complainant’s mark in its entirety and only deviates by the removal of the hyphen between the abbreviation “cal,” an abbreviation for the state of California and place of Complainant’s business, and the word “mustang,” along with the addition of the top-level domain “.com.” Merely removing a hyphen from the words in Complainant’s mark and adding the top-level domain “.com” does not remove the domain name from the realm of confusing similarity with regard to Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See 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.”); see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <calmustang.com> domain name to divert Internet traffic to a website that offers directory and search services for products and services identical to those Complainant offers, including links to Complainant’s competitors, as well as unrelated pop-up advertisements, where Respondent likely receives a referral fee. Respondent’s use of a domain name that is confusingly similar to Complainant’s CAL-MUSTANG mark to redirect Internet users interested in Complainant’s goods and services to a commercial website that offers directory and search services for products and services identical to those offered by Complainant, including links to Complainant’s competitors, and unrelated pop-up advertisements where Respondent likely receives a referral fee, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <calmustang.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain name for its own commercial gain. Respondent’s domain name diverts Internet users, who intend to search under Complainant’s well-known mark, to a website sponsored by Respondent that offers directory and search services for products and services identical to those offered by Complainant. Furthermore, Respondent provides links to many of Complainant’s competitors and likely receives referral fees for diverting Internet users to its website. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to the Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Furthermore, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that offers search and directory services and links to websites that compete with Complainant by offering similar products and services. Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

Additionally, Respondent registered the domain name for the purpose of selling the domain name to Complainant, the owner of the mark, for monetary gain. Respondent offered to sell the domain name registration to Complainant, not once, but twice, for a considerable sum, in excess of its costs related to the domain name. Registering a domain name for the primary purpose of selling the registration to the owner of the mark for monetary gain in excess of documented costs related to the domain name evidences bad faith registration and use pursuant to the Policy ¶ 4(b)(i). See 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 Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <calmustang.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 17, 2004

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