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Redwood City Dodge & Kia v. Web2Marketing.com [2000] GENDND 735 (20 July 2000)

National Arbitration Forum

DECISION

Redwood City Dodge & Kia v Web2Marketing.com

Claim Number: FA0006000094969

PARTIES

The Complainant is Redwood City Dodge & Kia, Inc., Redwood City, CA, USA ("Complainant"). The Respondent is Web2Marketing.com, San Jose, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain names at issue are "REDWOODCITYDODGE.COM" and "REDWOODCITYKIA.COM", registered with Register.com.

PANELIST(s)

The Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/06/2000; The Forum received a hard copy of the Complaint on 06/09/2000.

On 06/09/2000, Register.com confirmed by e-mail to The Forum that the domain names "REDWOODCITYDODGE.COM" and "REDWOODCITYKIA.COM" are registered with Register.com and that the Respondent is the current registrant of the name.

On 06/12/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/05/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 7, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed The Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent by obtaining and using the domain names that are the subject of this Complaint, has created confusion among potential customers as the domain names are identical or confusingly similar to the Complainant’s trade name. Further, the Respondent violated the DaimlerChrysler and Kia of America trademarks and, finally, is using the domain names in bad faith and cyber squatting for profit.

B. Respondent

The Respondent contends that the Complainant purchased its web address www.rcdodge.com in 1997 and have marketed the web address to promote their business. The Respondent also contends that as they do not claim to be a dealer and do not sell any products, they have not committed any trademark violations. Further, the Respondent states that they did not acquire the names in bad faith

FINDINGS

The Complainant is a franchisee of the Dodge Corporation, a division of DaimlerChrysler, and Kia Motors America, Inc., The Complainant has used the names Redwood City Dodge and Redwood City Kia for some time, as a franchisee of the Dodge Corporation and Kia Motors America, Inc., respectively.

Neither the Complainant nor its franchisers, DaimlerChyrsler and Kia Motors, America, Inc., authorized the Respondent to use any DaimlerChyrsler or Kia mark or name for any purpose.

The Respondent states that they did not set out to cyber squat any business, as their intention was to create a dealer locator business to span across the U.S.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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 domain names redwoodcitydodge.com and redwoodcitykia.com may create confusion for potential customers who may be looking for the Complainant’s businesses on the internet; however when they log into these websites they are given a list of every Dodge dealer in Northern California, instead of a direct link to the Complainant’s business.

The Respondent is using the marks of the DaimlerChrysler Corporation on the redwoodcitydodge.com site, infringing upon the trademark rights of the DaimlerChrysler Corporation, including each of the company’s primary brands as set forth in the Complaint, its model nameplates, and its corporate logos and emblems. These marks are subject to the trademark rights of DaimlerChrysler Corporation, the owner of this trademark.

The Kia name, mark and designed are registered trademarks of Kia Motors Corporation of Korea, and may not be used, downloaded, copied or distributed in any way.

The Complainant is a franchisee of the Dodge Corporation. As a franchisee, the Complaint would have the right to use the names "Dodge" and "Kia" in their respective domain names. The Respondent, who is not a franchisee and is not in any way affiliated with DaimlerChyrsler, Kia, Redwood City Dodge or Redwood City Kia, would not have any rights or legitimate interests in any of these marks or the domain names in questions.

That while a response was filed, the Respondent fails to present any evidence that it has any rights or legitimate interests in the domain names in questions.

The Respondent registered the domain names on April 1, 2000. On April 7, 2000, the Respondent sent an e-mail to the Complainant offering the websites for lease and to solicit advertising space from the Complainant on the website. The Respondent was advised that the Complainant had no interest in purchasing or leasing the domain names. After the filing of the subject Complaint, the Respondent then contacted the Complainant advising that the cost of the domain names would increase should the Complainant not receive a favorable decision.

In addition, the Respondent, admits to registering over 200 names and that the purpose for this registration is to create a dealer locator business.

In the "Company Statement" section of the Response, the Respondent admits that they are out to lease advertising space on their websites. Also, the Respondent states that when the Complainant’s agent contacted the Respondent to discuss the possible purchase of the domain names, the Complainant was advised that the names were for lease and not for sale. Attached to their Response was a lease agreement, which appears to be a standard form used by the Respondent for the purpose of leasing the domain names. In its first communication to the Complainant, the Respondent advises that they will be contacting the Complainant regarding leasing space on their websites, either by the link or the entire site.

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "redwoodcitydodge.com and redwoodcitykia.com" be transferred from the Respondent to the Complainant.

The Honorable Paul A. Dorf, (Ret).
Dated: July 20, 2000

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