DECISION

Barrett-Jackson Auction Company, LLC v. Name Delegation Co.

Claim Number:  FA0312000216798

PARTIES

Complainant is Barrett-Jackson Auction Company, LLC (“Complainant”), represented by Adam D.H. Grant, of Richardson & Patel LLP, 10900 Wilshire Boulevard, Suite 500, Los Angeles, CA 90024.  Respondent is Name Delegation Co.  (“Respondent”) P.O. Box #26, Choongjoo Post Office, Choongjoo-city, Choongbook, Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barettjackson.com>, registered with Fabulous.Com Pty. Ltd.

PANEL

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

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically December 5, 2003; the Forum received a hard copy of the Complaint December 11, 2003.

On December 11, 2003, Fabulous.Com Pty. Ltd. confirmed by e-mail to the Forum that the domain name <barettjackson.com> is registered with Fabulous.Com Pty. Ltd. and that Respondent is the current registrant of the name. Fabulous.Com Pty. Ltd. verified that Respondent is bound by the Fabulous.Com Pty. Ltd. 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 December 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 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@barettjackson.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 January 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <barettjackson.com>, is confusingly similar to Complainant’s BARRETT-JACKSON mark.

2. Respondent has no rights to or legitimate interests in the <barettjackson.com> domain name.

3. Respondent registered and used the <barettjackson.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the BARRETT-JACKSON mark to identify its car auction services since January 1979.  Complainant registered the BARRETT-JACKSON mark with the U.S. Patent and Trademark Office (“USPTO”) August 25, 1998, (Reg. No. 2,184,115).  Complainant also registered the <barrett-jackson.com> domain name May 31, 1995, and uses it in conjunction with its business. 

Respondent registered the <barettjackson.com> domain name November 17, 2003.  The domain name directs Internet users to a website that features a search engine and various search topics, including links to car retailers. 

DISCUSSION

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 will draw such inferences as the Panel 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.

Identical to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights in the BARRETT-JACKSON mark through its use in commerce since 1979 and by registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

The domain name registered by Respondent, <barettjackson.com>, is confusingly similar to Complainant’s BARRETT-JACKSON mark because the domain name fully incorporates the mark and merely omits the letter “r” and the hyphen and adds the generic top-level domain “.com” to the mark.  Omission of a single letter from a mark and the addition of a generic top-level domain are insufficient to distinguish a domain name from another’s mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

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

Rights to or Legitimate Interests

Complainant established in this proceeding by extrinsic proof that Complainant has rights to or legitimate interests in the mark contained in its entirety in the domain name registered by Respondent.  Complainant also alleged that Respondent has no such rights to or legitimate interests. Respondent failed to contest the allegations of the Complaint, and in such circumstances the Panel may conclude that Respondent lacks rights and legitimate interests in the domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, Complainant alleged that Respondent was not authorized or licensed to register or use domain names that incorporate the BARRETT-JACKSON mark.  Again, Respondent did not contest this allegation.  Further, the record fails to establish that Respondent is commonly known by the <barettjackson.com> domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

The domain name registered by Respondent, <barettjackson.com>, directs Internet users to a website that features a search engine.  The search engine features links to auto-related websites, some of which presumably compete with Complainant.  The Panel presumes that Respondent commercially benefits from the misleading domain name by redirecting Internet users to the search engine website.  Use of a domain name identical to another’s mark for commercial gain constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Compaq Info. Techs. Group v. Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from Complainant's competitor).

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

Registration and Use in Bad Faith

Complainant alleged that Respondent acted in bad faith in registering and using the disputed domain name. Respondent’s misleading domain name directs Internet users to a commercial website unrelated to Complainant’s business in order to compete with Complainant and this constitutes evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <barettjackson.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated:  January 21, 2004.

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