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AutoNation Holding Corp. v. Asia Ventures, Inc. [2005] GENDND 1970 (3 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AutoNation Holding Corp. v. Asia Ventures, Inc.

Case No. D2005-0789

1. The Parties

The Complainant is AutoNation Holding Corp., Fort Lauderdale, Florida, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.

The Respondent is Asia Ventures, Inc., Central, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <johnelwaytoyota.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2005. On July 25, 2005, the Center transmitted by email to the Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On July 26, 2005, The Registry at Info Avenue d/b/a IA Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2005.

The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on September 5, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complaint did not contain much documentary evidence of the fact that the Complainant is legally authorized to use the mark JOHN ELWAY and TOYOTA. Thus, on September 30, 2005, clarification was sought from the Complainant by a Panel Order. On October 18, 2005 the Complainant electronically submitted copy of license agreement with Mr. John Elway authorizing the Complainant to use the mark JOHN ELWAY. Similarly, the Complainant submitted Toyota Dealership Agreement granting the Complainant authority and permission to use their mark TOYOTA.

4. Factual Background

From the Complaint and the various annexures to it, the Panel has found the following facts:

Complainant’s activities

The Complainant AutoNation Holding and its related company AutoNation Inc. are the automotive dealers in about nineteen (19) States of the United States of America. It has approximately 365 automobile dealerships. The Complainant buys and sells both new and used automobiles and related goods under various national and local brand names. In addition, the Complainant provides various other services, such as, automobile financing, automobile insurance, repair service and ancillary services. Since 1997, the Complainant in partnership with Mr. John Elway, the famous football player, has been operating several automobile dealerships by the name of “John Elway Automobile Dealership”. Most of these dealerships are in the State of Colorado. One such dealership in Centennial, Colorado has been operating under the mark and name JOHN ELWAY TOYOTA since 1997.

Respondent’s Identity and Activities

The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.

5. Parties Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute. These elements are as follows:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) The Respondent has no right or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

In relation to element (i), the Complainant contends that it has used the name and trademark JOHN ELWAY TOYOTA since 1998. JOHN ELWAY and TOYOTA names and marks are used as components of AutoNation’s JOHN ELWAY TOYOTA name and mark under licenses and/or permission from the owners of the respective name and mark. It is contended by the Complainant that based on AutoNation’s extensive, continuous and exclusive use, the JOHN ELWAY TOYOTA name and trademark have come to be recognized by the relevant purchasing public as indicating source of automobile sales, services and related goods in AutoNation’s market. In addition, the Complainant also owns the domain name <elwaydealers.com>. The Complainant has also relied on the findings of the panel in the case of Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D2001-0698. Thus, the domain name <johnelwaytoyota.com> is substantially similar or identical to the name and mark of the Complainant.

In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <johnelwaytoyota.com>. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of earning a profit by selling the domain name or misleading the general public and customers of the Complainant. In this respect see also the decision in the case of Alcan Inc. v. Digicom Technologies Inc., WIPO Case No. D2003-0388 wherein the panel has held that, in that particular case, there was no evidence to suggest that the respondent had ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Furthermore, the respondent is not making a legitimate non-commercial or fair use of the said domain name. Thus, it was proved that there were no legitimate rights or interests of the respondent in the domain name.

Regarding the element at (iii), the Complainant contends that the main purpose for registering the domain name <johnelwaytoyota.com> by the Respondent is either to earn profit by selling it or to mislead the general public and the customers of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall 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.”

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The present dispute pertains to the domain name <johnelwaytoyota.com>. It is made up of two components, namely, John Elway and Toyota. John Elway is the name a famous football player. TOYOTA is the name and mark of the Toyota Motor Corporation (a Japanese company) manufacturing automobiles. The Complainant is using JOHN ELWAY and TOYOTA name and mark under licenses and/or permission from the owners of the respective name and mark. The AutoNation Holding’s dealership mark is JOHN ELWAY TOYOTA and the domain name is <johnelwaytoyota.com>. The Respondent is known by the name of Asia Ventures, Inc. The domain name <johnelwaytoyota.com> indicates the Complainant’s business name and mark.

There is no doubt that the domain name is confusingly similar to the name and mark of the Complainant. The Panel finds that the domain name is confusingly similar to the name and mark of the Complainant.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not filed any response in this case. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. And Glenn Greenhouse, WIPO Case No. D2000-1221. JOHN ELWAY TOYOTA is the name and mark of the Complainant. The Respondent is commonly known by the name of “Asia Ventures, Inc”. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant or the holders of the names and marks have not licensed or otherwise permitted the Respondent to use their name or mark or to apply for or use the domain name incorporating said name and that nobody would use the words John Elway and Toyota unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The contention of the Complainant is that the present case is covered by the first and the second element. The Complainant has furnished evidence of the fact that the actions of the Respondent have prevented the Complainant from registering the domain name in question, that is, <johnelwaytoyota.com>. The failure of the Respondent to activate the site goes to show that the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant. Panels have held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and in a number of other cases, that in some cases “inaction” may constitute bad faith use of the domain name. Further, it has been held in United States Trust Company of New York v. Big Picture Media, WIPO Case No. D2000-1652 that the purpose of registration of a domain name may be discerned from subsequent use made of it. The respondent’s failure to make commercial use of the disputed domain name leads to the conclusion that respondent has registered the domain name in bad faith.

This and other information submitted by the Complainant leads to the presumption that the domain name in dispute was registered and used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.

7. Decision

In light of the foregoing findings, namely, that the domain name is confusingly similar to the mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the domain name <johnelwaytoyota.com> be transferred to the Complainant.

V. K. Agarwal
Sole Panelist

Dated: November 3, 2005