DECISION

Iten Chevrolet v. Michael Kern

Claim Number: FA0010000095831

PARTIES

The Complainant is Iten Chevrolet Company, Brooklyn Center, MN, USA ("Complainant") represented by Ann K. Bloodhart, Gray, Plant, Mooty, Mooty & Bennett.  The Respondent is Michael Kern, Aitkin, MN, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is itenchevrolet.com, registered with Network Solutions, Inc.

PANELIST

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

James Alan Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 17, 2000; The Forum received a hard copy of the Complaint on October 18, 2000.

On October 18, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that the domain name itenchevrolet.com is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 2000 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@itenchevrolet.com by e-mail.

On November 15, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James Alan Crary as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is an automobile dealership. She had been in business since 1965. It is commonly known as ITEN CHEVROLET. The Respondent was an employee working as a service advisor. He was hired on February 28, 1999 and terminated March 2, 2000.

Respondent registered the domain name itenchevrolet.com February 24, 2000. This was done without Complainant’s permission.

It was asserted that Respondent does not possess a registered trademark for ITEN CHEVROLET and is not commonly known as ITEN CHEVROLET and further that Respondent has no legitimate interest in the domain name itenchevrolet.com.

Bad faith was asserted. On May 20, 2000 Respondent came to the Complainant’s place of business where he left a letter addressed to Marty Iten. The letter was dated May 13, 2000 when Complainant asserted Respondent registered the domain name to unfairly compete with Complainant’s existing web site and infringe on Complainant’s trademark rights. The letter contained a rough draft of the web site Respondent proposed to launch. The rough draft suggested that there would be links to sexually explicit sites as well as other sites that might place Complainant in an unfavorable light. Complainant asserted that Respondent threatened to launch the web site containing materials referred to in the rough draft unless Complainant paid $925,000 with a combination of cash, vehicles from inventory, donated cash and vehicles to non-profit entities owned by Respondent and $200,000 in “investments”.

The Complainant maintained that the Respondent was a disgruntled former employee who registered the domain name in bad faith to extract money from the Complainant and to attract Complainant’s customers.

Complainant sought transfer of the domain name.

B. Respondent

Respondent asserted that the disputed domain name itenchevrolet.com was not identical to or confusingly similar to Complainant’s trademark or servicemark.

Respondent asserted that ITENCHEVROLET stood for I Teach Even Numskulls Cheap Harmless Excruciatingly Vindictive Rights Or Legal Entity Tricks. Respondent asserted that he specialized in symbol domain names. He also owns E241BID.com and ezwife.com, which he listed as examples of domain names he owned.

Respondent asserted he made demonstratable preparations for use of the domain name before notice of the dispute. He cited page three of his March 13, 2000 letter, which listed services that his web site would provide or connect to. Services would include a customer comment section where customer’s comments “deemed fit” by Respondent would be posted. The web site was to act as a communication tool informing the public about their vehicle purchase decisions and other types of links.

Respondent noted that the web site was not completed or uploaded for public viewing. Respondent denied that he was commonly known by the domain name or had acquired a trademark or servicemark right.

Respondent asserted he was making a legitimate noncommercial or fair use of the domain name without the intent for commercial gain, misleadingly divert customers or to tarnish the trademark or servicemark of Complainant. He asserted that nothing in “my personal letter to (2) personal friends” was a reference to anything for sale or any fee to be paid.

Respondent asserted that since his web site was not up and viewable by the general public he was not violating the policy.

Respondent asserted that when the site was launched there would be a section stating that the web site was unauthorized by the Complainant. It was asserted that any “competent individual” viewing the site would not be confused that the site was the Complainant’s site.

The Respondent asserted that a web site of this nature was protected under the First Amendment of the United States Constitution as protected free speech.

Respondent denied bad faith.

Respondent asserted that he developed the itenchevrolet.com web site with his own funds on his own time. Respondent asserted that there was other evidence not submitted by Complainant. Respondent denied that he requested any funds from the Complainant or that he intended to do so. Respondent denied any personal contact in any form with the owner’s or directors of Complainant with regard to sale of the disputed domain name.

The Respondent asserted that certain evidence not offered by Complainant would show that the letter was enclosed in an envelope clearly marked on the outside “For Lori Burnes eyes only!”

A second letter was enclosed and sealed in an enveloped addressed “For Fred Kracck only!” This was said to be placed in a personal mailbox section of his desk. Respondent asserted that notes enclosed with the letters would tend to show that he was not trying to sell intellectual property to the Complainant.

Respondent asserted that his words were taken out of context and that he was improperly portrayed as a disgruntled employee.

FINDINGS

1.   The Complainant has operated an automobile dealership known as ITEN CHEVROLET since 1965. By virtue of its longstanding business operations in the state of Minnesota, the Complainant has acquired common law trademark rights in the trademark ITENCHEVROLET.

2.   Respondent was an employee of Complainant for an approximate one-year period ending March 2, 2000 when his employment was terminated.

3.   Respondent registered the domain name itenchevrolet.com on February 24, 2000.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“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.

The Panel was satisfied that the Complainant which had been doing business under the trade name ITEN CHEVROLET had developed common law trademark rights by virtue of it’s long-standing business operation. The Respondent did not dispute this.

Under the Policy Section 4(c) a Respondent may demonstrate their right or legitimate interest in a domain name.

The Respondent admitted that he was not commonly known by the domain name ITEN CHEVROLET.

The Respondent registered the domain name within a few days of his termination as a service advisor. The evidence did not support a finding that the Respondent was making demonstratable preparations to use the domain name in connection with a bona fide offering of goods or services. (Emphasis added)  Instead the Respondent registered a domain name that corresponded with his former employers trademark. He subsequently hand carried the three-page letter to the Complainant’s office in which he lays out a plan for a web site launch using the disputed domain name.

The rough draft of the web site outlined in the letter obviously proposed a web site that would be harmful of Complainant’s trade name and which would disparage Respondent’s former employer. The circumstances here appear to be nothing more than retaliation taken in an employment dispute. There was no convincing evidence that Respondent was making demonstratable preparations for use in connection with a bona fide offering of goods or services.

Respondent suggests that it’s domain name registration and proposed site constitute a legitimate or noncommercial or fair use of the disputed domain name. It is asserted that the site as proposed would operate as a vehicle of public education, consumer information, etc. and that this constituted protected speech under the First Amendment.

The case cited by Respondent Daniel J. Quirk v. Michael J. Maccini Forum Case FA000600094964 is clearly distinguishable from Respondent’s situation. Maccini was an upset car customer who launched a web site using the disputed domain name. When the site was launched and available to web users the site contained materials useful to the general public as well as upset car dealer customers. These materials and Maccini’s right to post such materials was protected by the free speech clause of the First Amendment. See Bally Total Fitness Holding Corporation v. Faber, 29F Supp. 2d 1161 (USDC C.D. Cal. 1998). In that case the federal court found that criticism of Bally Fitness Company on a ‘Bally Sucks’ web site did not infringe the company’s trademark because it amounted to non-commercial expression protected by the First Amendment of the United States Constitution. The “Bally Sucks” web site did not tarnish the underlying trademark and was unrelated to the goods and services involved.

Respondent in his rough draft suggests that the Complainant’s trade name would be associated with an adult sexually explicit materials and that Complainant is somehow associated with exploiting minorities and workplace discrimination.

Threats of extortion are no more protected by the First Amendment than shouting “fire” in a crowded theater. It is fundamental to the understanding of the First Amendment that not all speech is protected. Clearly liable, slander, commercial disparagement, and threats of extortion are examples of speech that has never been protected by the First Amendment.

Identical and/or Confusingly Similar

The Panel concluded that the name itenchevrolet.com is identical to Complainant’s trademark ITEN CHEVROLET. The only difference between the domain name and Complainant’s mark is the addition of the italicized dot com. TLD.C Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) which found that the top level of the domain names such as “net”, or “com” does not effect the domain name for the purpose of determining whether it is identical or confusingly similar.

Having done business under the name ITEN CHEVROLET for over 35 years, Complainant had sufficient rights under the ICANN Policy. See Fishtech v. Rossiter, FA92976 (National Arbitration Forum Mar. 10, 2000) which found that the Complainant had common law rights to the mark (Fishtech), which it had used since 1982.

Rights or Legitimate Interests

The Panel concluded that the Respondent had no rights or legitimate interests in respect of the domain name itenchevrolet.com.

Respondent admittedly is not commonly known by the domain name. As was noted above, Respondent has not used or made demonstratable preparations for use of the domain name in connection with a bona fide offering of goods or services. Respondent’s proposed use is hardly legitimate and will likely tarnish the ITEN CHEVROLET mark. See Compangnie de Saint Gobain v. Com-Union Corp. D2000-20 (WIPO Mar. 14, 2000) which found no rights or legitimate interests where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademark name.

Registration and Use in Bad Faith

The Panel concluded that the circumstances of this case warrant a bad faith finding under Paragraph 4(b)(i). The Respondent registered the domain name about the time of his termination and subsequently albeit by any innuendo and reference suggests that the disputed domain name be acquired for a large sum of money and other property. See Moynahan v. Fantastic Sites, Inc. D2000-1083 (WIPO October 22, 2000) which found bad faith where the Respondent offered to sell the domain name to the Complainant for $10,000.

Respondent also proposes to link the web site to adult materials and sexually explicit materials. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) which found bad faith where Respondent threatened to develop the domain name in question into a pornography site.

DECISION

The Panel concluded that the Respondent engaged in an abusive domain name registration within the meaning of the Policy therefore pursuant to paragraph 4(i) of the Policy it is ordered that the domain name itenchevrolet.com be transferred to the Complainant.

 James Alan Crary, Panelist

Dated: November 25, 2000

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