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Cook Motorcars, Limited v. Patricia Soto [2000] GENDND 717 (18 July 2000)

National Arbitration Forum

THE NATIONAL ARBITRATION FORUM

P.O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

Cook Motorcars, Limited, }

}

Complainant, } Case Number: } FA0006000094992

v. }

}

Patricia Soto }

Respondent.

__________________________________________________________________

DOMAIN NAME DISPUTE DECISION

The above entitled matter came on for hearing on July 18, 2000 before Tyrus R. Atkinson, Jr., Arbitrator, on the Complaint of Cook Motorcars, Limited, hereafter "Complainant" against Patricia Soto, hereafter "Respondent". Complainant is represented by Robert J. Carson, P.A. Respondent is represented by Steven E. Tiller of the firm of Whiteford, Taylor & Preston, LLP. Upon the written Record, the following decision is made.

PROCEDURAL FINDINGS

An administrative proceeding was commenced by Complainant against Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Complaint filed by Complainant against Respondent was certified to have been served upon Respondent on June 1, 2000. The Complaint was received by the National Arbitration Forum on June 7, 2000. Commencement of Administrative Proceedings began on June 16, 2000. The National Arbitration Forum sent notice of the commencement of this proceeding to Network Solutions, Inc. on June 8, 2000.

Respondent served its Response upon Complainant and the National Arbitration Forum on July 6, 2000.

Complainant served an Additional Response upon Respondent and the National Arbitration Forum on July 10, 2000.

The Complaint, Response and Additional Response and exhibits and attachments thereto constitute the Record and form the issues to be decided in this case.

Network Solutions, Inc. verified that it is the Registrar of the domain name "MOTORCARSCOOK.COM" and that the Registrant is "Trish Soto (MOTORCARSCOOK-DOM)". The registration was created on the 12th day of January, 1998. Registrant's address is 3478 Albantowne Way, Edgewood, MD 21040.

Registrant is bound by the Network Solution, Inc. Service Agreement, Version 5.0.

The National Arbitration Forum complied in this case with the procedural requirements set out in the Policy and Rules adopted by ICAAN.

STATEMENT OF THE CASE

Complainant contends that it incorporated in 1963 and by amendment changed its name to Cook Motorcars, Inc. 1983. It contends that it used the name "Cook Motorcars" in the business of selling automobiles for seventeen (17) years and expended considerable sums of money in promoting and advertising the name by use of various advertising media and promotional efforts. Complainant does not contend that it has registered the name with the United States Patent and Trademark Office. It does contend that its continued use of the name and promotion thereof for commercial purposes makes it unique, distinct and well known in the Baltimore metropolitan region as its identifying mark. Complainant contends that it registered the domain name "COOKMOTOR.COM" on December 2, 1997.

Complainant contends that Respondent was an employee of Complainant when Respondent registered the domain name "MOTORCARSCOOK.COM" without Complainant's knowledge or permission on January 12, 1998. It is contended that Respondent did make known to Complainant the existence of the domain name at a later time and stated to Complainant that the domain name was to be used solely for promoting sales of motor vehicles which Respondent was selling as an employee of Complainant.

Complainant contends that after Respondent left the employ of Complainant, Respondent continued to use the domain name "MOTORCARSCOOK.COM" to obtain for herself customers and business for Respondent's financial benefit and for the benefit of Respondent's new employer which is in the automobile sales business directly in competition with Complainant in the greater Baltimore area.

Complainant contends that the domain name "MOTORCARSCOOK.COM" is likely to cause confusion, mistake, and deception among the trade and public and is intended to draw business to Respondent and her new employer and away from Complainant.

Respondent contends that the domain name "MOTORCARSCOOK.COM" was not registered in bad faith. The registration was done with the full knowledge of Complainant while Respondent was an employee of Complainant with the intended purpose of being used under the umbrella of Complainant's dealership thereby providing Complainant with a profit. Respondent contends that the registration, design of the web page and purchase of calendars represent a substantial investment made by Respondent in the enterprise. Respondent contends that because of the differences in the domain names, there is no likelihood that a customer will be confused. Respondent contends that no willful infringement has occurred nor is any confusion caused by the use of the domain name. Respondent contends that the name "Cook Motorcars" is not famous. Respondent further contends that Complainant is estopped from pursuing this claim, that Complainant waived its rights, that laches on part of Complainant prevents relief and that Respondent's domain name does not infringe on any trademark rights owned by Complainant.

Complainant requests that the domain name "MOTORCARSCOOK.COM" be transferred to Complainant. Respondent denies that such relief is warranted under the Rules or applicable law.

FINDINGS OF FACT

1. Complainant is a corporation doing business in Aberdeen, Maryland, as an automobile sales dealership selling various types of motor vehicles to the public and has done so since 1983 under the name "Cook Motorcars, Inc". The name "Cook Motorcars" has been used continuously in such business and has been promoted and advertised by Complainant. Complainant has valuable rights in the name "Cook Motorcars".

2. Complainant registered the domain name "COOKMOTOR.COM" in 1997.

3. Respondent was an employee of Complainant from the year 1997 until the year 2000.

4. In the year 1998, Respondent developed an automobile sales plan through use of the internet. Respondent registered the domain name "MOTORCARSCOOK.COM" in January of 1998. Respondent made Complainant aware of the domain name and internet sales plan. The sales plan was to be used and the automobile sales done under the umbrella of the Complainant dealership thereby providing Complainant a profit and Respondent a sales commission. Complainant advertised the domain name "MOTORCARSCOOK.COM" in newspaper advertisements and assisted Respondent in obtaining internet links.

5. The full expenses of registering the domain name, the web page design and promotional materials were paid by Respondent.

6. The domain name "MOTORCARSCOOK.COM" was chosen by Respondent to identify Respondent as an employee of Complainant and to promote the mutual business interests of Respondent and Complainant. Since the domain name was chosen to identify Complainant, it cannot be said that the domain name "MOTORCARSCOOK.COM", is not so similar to the domain name "COOKMOTOR.COM" or the name "Cook Motorcars" as not to cause confusion and mistake.

7. After Respondent was no longer employed by Complainant, Respondent continued to use the domain name "MOTORCARSCOOK.COM" to attract internet inquiry associated with the automobile sales business. Respondent made and continues to make use of a hyperlink which directs internet inquiry made to "MOTORCARSCOOK.COM" to "TRISHSOTO.COM". "TRISHSOTO.COM" identifies Respondent as an employee of an automobile sales dealer directly in competition with Complainant in the greater Baltimore area and invites the prospective customer to purchase automobiles, through Respondent, from the automobile sales dealership now the employer of Respondent.

8. The conflicting contentions of the parties as to the number of searches of the domain name "MOTORCARSCOOK.COM" and subsequent referral by hyperlink to TRISHSOTO.COM" permits no definite finding on this issue. However, it is found that a significant number of internet referrals by hyperlink, as above described, have occurred.

9. Complainant brings its Complaint under the name "Cook Motorcars, Limited". Complainant avers in Paragraph Two of the Complaint that its name is "Cook Motorcars, Inc". Complainant avers in Paragraph One of the Complaint that "Cook Motorcars" is a Maryland corporation. Respondent admits the allegations of Paragraph One of the Complaint.

Respondent has not contested the proposition that "Cook Motorcars, Limited" is the true party in interest. The Network Solutions, Inc. printout attached to the Complaint states that the registrant of "COOKMOTOR.COM" is "Cook Motor Car". The billing contact is an officer or employee of "Cook Motorcars, Ltd." These unexplained differences in name identification are not found to be a reason, under the Rules here applicable, to prevent a decision on the merits of the case.

CONCLUSIONS

1. The domain name "MOTORCARSCOOK.COM" is identical or confusingly similar to the domain name "COOKMOTOR.COM" and the name "Cook Motorcars" in which Complainant has rights.

2. Respondent had no rights or legitimate interests in respect of the domain name "MOTORCARSCOOK.COM".

3. By using the domain name, Respondent is intentionally attempting to attract, for commercial gain, internet users to Respondent's website by creating a likelihood of confusion with the Complainant's domain name and business use name as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location of a product or service on Respondent's web site.

4. Respondent chose the domain name with notice of its association with Complainant's domain name and the name commonly used by Complainant in business. Respondent's evidence fails to show that Respondent was commonly known by the domain name except insofar as it associated Respondent with Complainant during Respondent's employment. Respondent's evidence fails to show a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark of another.

DECISION

THE DOMAIN NAME "MOTORCARSCOOK.COM" REGISTERED BY RESPONDENT, PATRICIA SOTO, BE TRANSFERRED TO COMPLAINANT, COOK MOTORCARS, LIMITED.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this case. The undersigned certifies that he was impartial and decided the case on the written record presented for decision.

This 18th day July, 2000. Tyrus R. Atkinson, Jr., Panelist

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