Generic Top Level Domain Name (gTLD) Decisions

Complainant is J. L. Huffines, Plano, TX, USA ("Complainants") represented by John W. Patton, of Hughes & Luce, LLP. Respondent is Mick Brazeal, Arlington, TX, USA ("Respondent").

The domain names at issue are <huffinesauto.com>, <huffines-auto.com>, and <huffines-chrysler.com> registered with Register.com.

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.

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 4, 2001; the Forum received a hard copy of the Complaint on April 4, 2001.

On April 4, 2001, Register.com confirmed by e-mail to the Forum that the domain names <huffinesauto.com>, <huffines-auto.com>, and <huffines-chrysler.com> are registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 25, 2001 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@huffinesauto.com, postmaster@huffines-auto.com, and postmaster@huffines-chrysler.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 2, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody 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.

Complainants request that the domain names be transferred from Respondent to Complainants.

B. Respondent

Respondent did not submit a Response to this matter.

Complainants’ family founded the Huffines Motor Company in 1924. For almost eighty years, Complainants’ family has expended, and continues to expend, a substantial amount of resources, money, time and effort building consumer recognition and goodwill in the HUFFINES marks. Today, the HUFFINES marks are used throughout northern Texas, and consumers associate the HUFFINES marks with the Huffines’ auto sales and other automotive services. Complainants own all rights, title, and interests to the HUFFINES marks.

The HUFFINES marks are promoted extensively in television, print and radio advertisements throughout northern Texas, including the Dallas-Fort Worth Metroplex. Complainants license the use of the HUFFINES marks to dealerships such as HUFFINES DODGEä , HUFFINES CHRYSLER PLYMOUTHä , and HUFFINES CHEVROLETä .

The HUFFINES marks are also used online under the domain names <huffines.net>, <huffinesautogroup.com>, <huffinesdodge.com>, and

<huffineschevrolet.com>. Complainants use these web sites to market, advertise, promote and sell HUFFINES products and services.

Respondent’s <huffinesauto.com> site purports to be for Respondent’s use only.

A user must click a large button certifying that they "are Mick Brazeal" in order to visit the remainder of the site. The remainder of the site purportedly contains Respondent’s personal documents. But if a user clicks the box indicating that they are "not Mick Brazeal," they are taken to a page that asks "Are you sure you aren’t Michael Brazeal?" If the user chooses "yes," the site then asks "Yes you are Michael Brazeal or your [sic] not Michael Brazeal?" When the user chooses "not Michael," they are then transferred to a web site promoting a Dallas band known as "Cowboys and Indians."

Further, Respondent has passively held the domain names <huffines-auto.com> and <huffines-chrysler.com>.

Respondent has demanded funds from Complainants in exchange for transfer of the domains. During a conversation with Complainants last summer, Respondent offered to sell all of the domains to Complainants. Although Respondent refused to name a certain figure, Respondent made it apparent that his price would far exceed the costs of registration. Further, Respondent’s <huffinesauto.com> site states that Respondent will "release this domain for a fee of my choice." The site also notes that "The cost of maintaining this site will cause the price to increase over time." However, the site is hosted for free by Tripod.

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 the Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that Complainants 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 Complainants have 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.

Respondent’s domain names are confusingly similar to the Complainants’ HUFFINES marks since each contains the name "huffines" and a reference to automobiles. Given the similarity in name and products, there is a strong likelihood of confusion between the domain names and the marks at issue. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Caterpillar Inc. v. Matthew Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names of <caterpillarparts.com> and <caterpillarspares.com> were found to be confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar.").

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

Respondent has no legitimate rights or interest in either the HUFFINES marks or the disputed domain name. Respondent is not in any way associated with Complainants, is not authorized to use Complainants’ marks, and is not commonly known by the names "huffinesauto", "huffines-auto" or "huffines-chrysler". See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).

Respondent’s use of the <huffinesauto.com> domain name is not a bona fide offering of goods nor a legitimate noncommercial or fair use, because Respodent is using Complainants’ marks to lure Internet traffic to his web site. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own web site by using Complainant’s trademarks).

Additionally, Respondent has never used the <huffines-auto.com> and <huffines-chrysler.com> domain names for any purpose, and therefore has not demonstrated any rights or legitimate interests in those domain names. See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

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

Respondent demonstrated bad faith registration and use by offering the <huffinesauto.com> domain name for sale, because the domain name is confusingly similar to Complainant’s mark and services. See Am. Anti-Vivisection Soc’y v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that an offer to sell the domain name, even without stating a price, is evidence of bad faith).

Likewise, Respondent’s passive holding of the <huffines-auto.com> and <huffines-chrysler.com> domain names is a demonstration of bad faith use and registration because Respondent knew or should have known of Complainant’s marks and services. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>).

Respondent’s registration and use of the <huffinesauto.com>, <huffines-auto.com>, and <huffines-chrysler.com> domain names prevent the Complainant from reflecting the HUFFINES mark in a corresponding domain name, as well as establish a pattern of such conduct in violation of the Policy 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net> and <warneremi.org> in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names belonging to Complainant, evidencing a pattern of preventative conduct).

The Panel therefore concludes that the Respondent has registered and used the disputed domain names in bad faith and Policy 4(a)(iii) has been satisfied.

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

Accordingly, it is Ordered that the <huffinesauto.com>, <huffines-auto.com>, and <huffines-chrysler.com> domain names be transferred from Respondent to Complainants.