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Generic Top Level Domain Name (gTLD) Decisions |
Sonic-Crest Cadillac, LLC d/b/a Crest
Hummer d/b/a Crest Cadillac v. Neil Hayes d/b/a Autozcape d/b/a Autozcape.com
Claim
Number: FA0311000212652
Complainant is Sonic-Crest Cadillac, LLC d/b/a Crest Hummer d/b/a Crest Cadillac (“Complainant”), represented
by Jami M. Jackson of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center, 401 South Tryon Street, Suite 3000,
Charlotte, NC, 28202. Respondent is Neil Hayes d/b/a Autozcape d/b/a Autozcape.com (“Respondent”), 2976 Highrigger Drive, Nashville, TN 37217.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com>, registered with Melbourne IT,
Ltd. d/b/a Internet Names Worldwide (hereinafter “Internet Names
Worldwide”).
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding.
Hon.
Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically November 19, 2003; the
Forum received a hard copy of the
Complaint November 24, 2003.
On
November 20, 2003, Internet Names Worldwide confirmed by e-mail to the Forum
that the domain names <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com> are registered with Internet Names
Worldwide and that Respondent is the current registrant of the names. Internet
Names Worldwide
verified that Respondent is bound by the Internet Names
Worldwide registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
December 1, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 22, 2003, 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@crest-hummer.com, postmaster@hummerofnashville.com
and postmaster@cadillacofnashville.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
December 31, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com>, are confusingly similar to
Complainant’s CREST HUMMER, CADILLAC OF NASHVILLE and HUMMER OF NASHVILLE
marks.
2. Respondent has no rights to or legitimate
interests in the <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com> domain names.
3. Respondent registered and used the <crest-hummer.com>,
<hummerofnashville.com> and <cadillacofnashville.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
established by extrinsic proof in this proceeding that it has operated a
Cadillac motor vehicle dealership since March
of 2002, and a Hummer motor
vehicle dealership since July 17, 2002, in Nashville, Tennessee. Complainant
uses the names CREST HUMMER,
CADILLAC OF NASHVILLE and HUMMER OF NASHVILLE to
promote these dealerships. In addition to using these names in commerce,
Complainant
obtained a registration for the CREST HUMMER mark in the state of
Tennessee August 22, 2003, with a stated first date of use on July
17, 2002.
As an employee
of Complainant, Respondent registered the <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com> domain names July 17, 2002. These
registrations were to be done on behalf of Complainant, during normal working
hours and under Complainant’s
name. Instead, Respondent registered the disputed
domain names under the name of his company, Autozcape and autozcape.com.
Complainant paid
Respondent $624.95 for the registration and transfer of the three disputed
domain names to an entity going by the
name Automark, Complainant’s chosen host
for the domain names. Despite accepting and cashing the check, Respondent did
not transfer
the domain names.
However, on
August 13, 2003, Respondent agreed to transfer the <crest-hummer.com>
domain name to Complainant in exchange for an additional $20. to defray
transfer costs. Currently, Complainant has been permitted
by Respondent to
operate a website at the <crest-hummer.com> domain name, although
Respondent has still refused to transfer the domain name registration to
Complainant.
Prior to
permitting Complainant to use the <crest-hummer.com> domain name,
Respondent used that domain name to host a website offering the sale of that
domain name registration and the <hummerofnashville.com> domain
name. Respondent also offered to sell these two domain name registrations on
eBay, with a starting price of $2,004.
Of the two
domain names that are not currently being “used” by Complainant, the <hummerofnashville.com>
domain name is inactive, and the <cadillacofnashville.com> domain
name links to a temporary “placeholder” Verio website. At no point has
Respondent ever used the disputed domain names, or
the CREST HUMMER, CADILLAC
OF NASHVILLE and HUMMER OF NASHVILLE marks, in connection with any commercial
enterprise.
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
will draw such inferences as the Panel 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.
Complainant has
established rights in the CREST HUMMER mark through registration of the mark in
the State of Tennessee. Proof that
it obtained a registration of the mark is
sufficient to meet the burden established by Policy ¶ 4(a)(i). See Desktop Media, Inc. v. Desktop Media, Inc.,
FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the
domain name dispute resolution process[,] a low threshold
of proof is all that
is required to meet the first element”); see also Quality Custom Cabinetry,
Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7,
2002) (finding that Complainant’s trademark registrations in Pennsylvania and
New Jersey operated
as evidence that Complainant had sufficient standing to
bring a claim under the UDRP).
As for the
CADILLAC OF NASHVILLE and HUMMER OF NASHVILLE marks, the Panel finds
that Complainant sufficiently established that it has common-law rights in those
marks. At least within the
geographic area around Nashville, Complainant has
supplied uncontested evidence to the Panel that it has established source
identifying,
secondary meaning associated with these marks, which is sufficient
to establish rights in these marks under the Policy. See British Broad.
Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy
“does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service
marks”); see
also 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).
The domain names registered by Respondent are identical to
Complainant’s marks. Each domain name duplicates one of Complainant’s marks,
except for the elimination of the spaces between the words of the marks and/or
the addition of a hyphen. Both of these variations
are inconsequential for the
purposes of Policy ¶ 4(a)(i). See 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 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”).
Accordingly, the
Panel finds that the <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com> domain names are identical to Complainant’s CREST HUMMER, HUMMER
OF NASHVILLE and CADILLAC OF
NASHVILLE marks under Policy ¶ 4(a)(i).
As Respondent
did not submit a Response to the Complaint, the Panel will view the Complaint
in a light most favorable to Complainant,
and will draw all reasonable factual
inferences in favor of Complainant. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to
admitting the truth of
complainant’s assertion in this regard”); see also 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”).
In this dispute, Respondent registered the disputed domain names on
behalf of Complainant, but contrary to his employer’s or his principal’s
instructions, Respondent created three domain name registrations in the name of
Respondent’s company and not that of Complainant.
As an employee or agent of
Complainant, Respondent knew that it had no right to register the disputed
domain names using Complainant’s
marks and knew that any use of these domain
names would be illegitimate. The fact that Respondent’s only actual use of the
domain
names in question has been to offer them for sale (with Complainant as
the obvious intended purchaser) further underscores the fact
that Respondent
has no rights or legitimate interests in the disputed domain names. See
Vinidex Pty. Ltd. v. Auinger, AF-0402 (eRes. Oct. 18, 2000) (finding
that as a former employee, Respondent knew or should have known Complainant’s
mark was in
use as an integral part of the corporate name and as a trademark
and that Respondent understood the legitimate interests and rights
of
Complainant and, by contrast, its own lack of interest or right. This is sufficient for Complainant to
establish that Respondent had no rights or interest in the domain name); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel considers Respondent’s failure to respond to the Complaint as
additional evidence that Respondent lacks rights or legitimate
interests in the
disputed domain names. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no
legitimate interest in the domain
names); see also BIC Deutschland
GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not
submitting a response, Respondent has failed to invoke any circumstance which
could demonstrate,
pursuant to ¶ 4(c) of the Policy, any rights or legitimate
interests in the domain name”).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<crest-hummer.com>, <hummerofnashville.com> and <cadillacofnashville.com>
domain names under Policy ¶
4(a)(ii).
Complainant alleged that Respondent acted in bad faith. As set out above, Complainant contended that
Respondent registered the disputed domain names on behalf of and with
instructions from
Complainant, but registered them in the name of Respondent’s
entity. In this context, Respondent’s registration of the disputed domain
names
for any entity other than Complainant is evidence of bad faith. See
Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000)
(finding bad faith registration and use where Respondent was employed by
Complainant’s business,
was fully aware of the name of her employer, and made
no use of the infringing domain name).
As for
additional evidence that the domain names have been or are being used in bad
faith, the Panel notes that Respondent attempted
to sell two of the domain name
registrations (the <crest-hummer.com> and <hummerofnashville.com>
domain names) under circumstances where it was evident that Respondent was
hoping to sell the domain name registrations to Complainant,
for a price in
excess of any costs Respondent could have incurred in the registration of the
domain names. Pursuant to Policy ¶ 4(b)(i),
this is evidence that these two
domain names were both used and registered in bad faith. See Pocatello Idaho Auditorium Dist. v.
CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("What 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"); see
also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when he requested monetary compensation beyond
out-of-pocket costs in
exchange for the registered domain name).
Further, the
failure to actually use the <hummerofnashville.com> and <cadillacofnashville.com>
domain names equates to passive
holding, and thus bad faith use, of these two domain names. Given the fact that
Respondent attempted
to sell the registrations for the <crest-hummer.com>
and <hummerofnashville.com> domain names, the Panel finds that
Respondent’s passive holding of the <cadillacofnashville.com> domain name veils an intent to attempt to
sell this registration in the future. For these reasons, the Panel finds that
the <cadillacofnashville.com> domain name was also registered and
used in bad faith. See Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that mere passive holding of a domain name can qualify as bad faith if the
domain name
owner’s conduct creates the impression that the name is for sale); see
generally Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (holding that, despite Respondent’s decision to
passively hold the disputed domain name, “Respondent
has made its intention
clear and the continuing threat hanging over the Complainant’s head constitutes
bad faith use”).
The Panel thus
finds that Respondent registered and used the <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <crest-hummer.com>, <hummerofnashville.com>
and <cadillacofnashville.com> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 14, 2004.
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