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Generic Top Level Domain Name (gTLD) Decisions |
Keffer Dodge, Inc. v. Modern
Limited-Cayman Web Development c/o Domain Administrator
Claim
Number: FA0408000311382
Complainant is Keffer Dodge, Inc. (“Complainant”),
represented by Christopher A. Hicks, of Katten Muchin Zavis Rosenman,
401 South Tryon Street, Suite 2600, Charlotte, NC 28202. Respondent is Modern Limited-Cayman Web Development c/o Domain Administrator (“Respondent”),
P.O. Box 908, George Town, Grand Cayman GT KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <kefferdodge.com>, registered with Enom,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 12, 2004; the
Forum received a hard copy of the
Complaint on August 16, 2004.
On
August 13, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <kefferdodge.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent
is bound by the Enom, Inc. 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
August 18, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 7, 2004 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@kefferdodge.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
September 13, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
James A. Carmody, Esq.,
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kefferdodge.com>
domain name is identical to Complainant’s KEFFER DODGE mark.
2. Respondent does not have any rights or
legitimate interests in the <kefferdodge.com> domain name.
3. Respondent registered and used the <kefferdodge.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Keffer Dodge, Inc., owns and operates six car dealerships under the KEFFER
DODGE mark. Complainant use its KEFFER
DODGE trademark in the United States, specifically, in the North Carolina
region. Complainant is a well-known
automobile retailer in Charlotte, North Carolina, and has marketed a variety of
Dodge automobiles and
related services under its KEFFER DODGE mark for over two
decades. Complainant also owns and operates
the <kefferdodge.net> domain name.
Respondent
registered the <kefferdodge.com> domain name on April 19,
1991. Respondent is using the disputed
domain name to host a website with links titled “Dodge extended warranty,”
“Dodge dealerships” and
“Dodge automobile.”
These websites also offer car-related products or services similar to
those offered by Complainant.
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
draw such inferences it 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 that it has rights in the KEFFER DODGE mark through continued use
of its mark in commerce for the past
two decades. See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that Complainant's trademark or service mark be registered
by a government authority or agency for such rights to exist); see also 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 Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority
for such rights to
exist.”).
The domain name
registered by Respondent, <kefferdodge.com>, is identical to
Complainant’s KEFFER DODGE mark because the only difference is the addition of
the top-level domain “.com.” The
addition of a top-level domain does not significantly distinguish the domain
name from the mark under Policy ¶ 4(a)(i).
See Little Six, Inc.
v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to Complainant’s famous NIKE
mark); see also Kabushiki Kaisha
Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that
the domain name <toshiba.net> is identical to Complainant’s trademark
TOSHIBA).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the
disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has
no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate
interest does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. See Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence
of a response, it is appropriate to accept as true all allegations
of the
Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact
in the allegations
of Complainant to be deemed true).
Respondent is
using the <kefferdodge.com> domain name to redirect Internet users
to a website hosting links to various websites which offer products and
services similar to
those offered by Complainant. Respondent’s use of a domain name identical to Complainant’s
KEFFER DODGE mark to redirect Internet users interested in Complainant’s
products and services to commercial websites offering identical car-related
products and services is not a use in connection with
a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use of the domain
name pursuant to Policy ¶ 4(c)(iii). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000)
(finding no rights or legitimate interests in the domain names
<faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and
<faoswartz.com> where Respondent was using these domain names to link to
an advertising website);
see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding
that Respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a
bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name); see
also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (finding that Respondent’s use of infringing domain names
to direct Internet traffic to
a search engine website that hosted pop-up
advertisements was evidence that it lacked rights or legitimate interests in
the domain
name).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the
<kefferdodge.com> domain
name. Thus, Respondent has not
established rights or legitimate intersts in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). 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 and
never applied for a license
or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain name to redirect Internet users to a website
providing links to advertisements and other websites
offering the same
car-related products and services as Complainant. Respondent’s practice of diversion, motivated by commercial gain,
through the use of an identical domain name evidences bad faith
registration
and use pursuant to Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site); see also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith
where Respondent attracted users to a website sponsored by Respondent and
created
confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
Furthermore,
Respondent registered the domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic
intended for Complainant
to Respondent’s website, offering links and advertisements to products and
services in direct competition
with Complainant’s business. Registration of a domain name for the
primary purpose of disrupting the business of a competitor is evidence of bad
faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) (finding that Respondent registered and used the domain name primarily
for the purpose of
disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that Respondent has diverted business from Complainant to a
competitor’s website in violation
of Policy ¶ 4(b)(iii)).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <kefferdodge.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
September 20, 2004
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