WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lombard Kawasaki, Suzuki, Inc. ("Lombard"), v. Herb Silverman
Case No. D2002-0534
1. The Parties
The Complainant in this administrative proceeding is Lombard Kawasaki, Suzuki, Inc. incorporated in the State of Illinois and having its principal place of business at 660 E. North Avenue, Lombard, Illinois, United States of America.
According to Go Daddy Software, Inc. the Registrar with whom the domain name is registered, the Domain Name is registered to the Respondent, Mr. Herb Silverman, with an address of 5 Goodyear, Irvine, California, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name (the "Domain Name"). The registrar with whom the Domain Name is registered is Go Daddy Sofware, Inc. 14455 North Hayden Road, Suite 219, Scottsdale, United States of America (the "Registrar"). The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 7, 2002. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 11, 2002.
No formal deficiencies having been recorded, on June 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of July 4, 2002, by which the Respondent would file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by fax, e-mail and by express courier.
Having received no Response from Respondent, on July 9, 2002, the WIPO Center sent a Notification of Default to the parties.
Having received this Panelist's Statement of Acceptance and Declaration of Impartiality and Independence, on July 18, 2002, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date was set for August 1, 2002.
4. Factual Background
The following facts appear from the Complaint and have not been disputed by Respondent. Complainant has operated its business under the name Lombard Kawasaki Suzuki for over 15 years and is one of Illinois�s premier motorcycle, watercraft, snowmobile and ATV dealers, selling an extensive selection of vehicles, parts and accessories from top quality manufacturers. Complainant has developed significant trademark rights in and to the name LOMBARD KAWASAKI SUZUKI, although no evidence was presented that the mark was registered. Complainant has used the Lombard Kawasaki Suzuki mark in connection with its services for over 15 years.
Complainant owned the Domain Name until December of 2000. Complainant�s online service provider accidentally allowed the Domain Name registration to expire, at which point the Respondent registered the Domain Name before the Complainant realized the registration had expired. Respondent first linked or directed the Domain Name to a website that competes against Complainant. It appears, Respondent is receiving, or received, a fee for traffic that is directed to the "www." website. Subsequently, Respondent redirected the Domain Name to a site that provides links to multiple websites of competitors of Complainant.
5. Parties' Contentions
A. Complainant
Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name at issue, and that the Respondent has registered and is using the Domain Name at issue in bad faith.
B. Respondent
Respondent has not disputed the allegations in the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel 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." Since the parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith."
The Domain Name is confusingly similar to Complainant�s mark, Lombard Kawasaki Suzuki, since it merely adds ".com." a generic top-level domain ("gTLD") to Complainant�s mark. The addition of a gTLD is not significant in determining whether it is confusingly similar to Complainant�s mark. While Complainant�s mark does not appear to be registered, Complainant has developed significant common law rights in it through its use of it for over 15 years. The Panel is also mindful that the Domain Name contains Complainant�s trade name as well.
With respect to Paragraph 4(a)(ii), Respondent does not have any legitimate interest in using the Domain Name under these circumstances to link to a website that directly links to, or provides links to, websites that compete against Complainant. See paragraph 4 (b)(iv) of the Policy.
Paragraph 4(b) of the Policy provides guidance on Paragraph 4(a)(iii) of the Policy. It provides:
b. Evidence of Registration and Use in Bad Faith
For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and used of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented our-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web sit or location."
This Panel finds that Respondent�s use of the Domain Name violates Paragraph 4(b)(iv), if not 4(b)(iii) as well. Respondent is clearly using the Domain Name to attract Complainant�s customers to Respondent�s site so that they can be redirected to sites belonging to competitors of Complainant. Clearly a likelihood of confusion exists. Because the violation of 4(b)(iv) is so clear, the Panel need not consider whether 4(b)(iii) has been violated as well.
Accordingly, the Panel finds that Respondent's ownership of the Domain Name violates Paragraph 4(a)(iii) and therefore Paragraph 4(a) of the Policy.
7. Decision
For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent's Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of the Policy, the Panel requires that the registration of the Domain Name be transferred to the Complainant.
Thomas D. Halket
Sole Panelist
Dated: August 1, 2002
Full & Egal Universal Law Academy