WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Norm Reeves, Inc. v. Texas International Property Associates Case No. D2009-1462 1. The Parties
Complainant is Norm Reeves, Inc. of Cerritos, California, United States of America, represented by Venable, LLP, United States.
Respondent is Texas International Property Associates of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Compana LLC dba Budgetnames. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2009. On November 5, 2009, the Center transmitted by email to Compana LLC dba Budgetnames a request for registrar verification in connection with the Disputed Domain Name. On November 7, 2009, Compana LLC dba Budgetnames transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an Amended Complaint on November 11, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on December 4, 2009.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 11, 2009. The Panel finds that this matter 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. 4. Factual Background
Through its predecessors in interest, Complainant has used the NORM REEVES HONDA trademark continuously since 1961 in the state of California (United States) to designate its automobile dealership franchise. As set forth in the uncontroverted declaration of David Conant (“Conant”) annexed to the Amended Complaint, Complainant owns and operates “Norm Reeves Honda Superstore” in Cerritos, California, and licenses rights to use the NORM REEVES trademark to Norm Reeves Honda dealerships in Huntington Beach and West Covina, California. Conant is Complainant's principal owner and also principal owner of Coastal Auto Sales, Inc., which does business under the trademark NORM REEVES COASTAL ACURA. Complainant uses the NORM REEVES trademark in the domains and and in advertisements in the websites to which each of these domains resolve. Through the use of the NORM REEVES name in connection with its business, Complainant has acquired common law trademark and trade name rights in and to NORM REEVES.
In addition to its common law rights, Complainant owns California State trademark registrations for the marks NORM REEVES THE HONDA SUPERSTORE (California State Registration No. 37,821) and NORM REEVES THE AUTO SUPERSTORE, (California State Registration No. 43,967), both marks covering automotive sales and leasing services. Coastal Auto Sales, Inc. owns a California State trademark registration for NORM REEVES ACURA & Design (California State Registration No. 41,376).12
Respondent, a Texas company, registered the domain on October 18, 2005. Complainant wrote to Respondent on August 1, 2008 requesting transfer of the Disputed Domain Name. Respondent replied to Complainant's August 1 letter on October 15, 2008 and stated that it intended to assign its rights in the Disputed Domain Name to Complainant. Assignment of the Disputed Domain Name to Complainant apparently did not occur despite follow up emails and letters to Respondent. 5. Parties' Contentions A. Complainant
Complainant argues that: (i) Respondent's Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant states that the Disputed Domain Name is identical to Complainant's NORM REEVES trademark with the addition of a generic term describing the location of Complainant's dealership, that Complainant's use of the NORM REEVES trademarks dates back to well before Respondent or a predecessor registered the Disputed Domain Name, and that a domain name containing a trademark, particularly a well known mark such as NORM REEVES, in connection with a generic term for which the mark is known, such as “Cerritos”, a geographic descriptor, is considered “confusingly similar” to that trademark for purposes of the UDRP, paragraph 4(a).
The Conant declaration alleges that “Norm Reeves Honda Cerritos” is one of the largest Honda dealers internationally, is the number two volume Honda dealer in the United States and for the past nineteen years has been the top selling Honda dealer in California. Complainant contends that it has annual sales of new and used cars and repair services in excess of USD$500,000,000.00, that it spends millions of dollars per year on advertising in television, radio, Internet, newspapers and sources of vehicle advertising, and that all of its advertising relies upon the NORM REEVES name as the branding identifier for its stores.
Regarding the second element, Complainant contends that NORM REEVES is a unique and well-known service mark in the field of car dealerships, and that a search for NORM REEVES on the Google search engine reveals virtually exclusive references to Complainant's Norm Reeves Dealerships. Complainant attached the results of its Google search as Annex E to the Complaint. Complainant contends that when the name NORM REEVES is coupled with the town of Cerritos, “there can be no allegation of a coincidence or innocent purpose” in registering the Disputed Domain Name, and that the intention of Respondent was clearly to refer to Complainant's “Norm Reeves” dealerships. Complainant asserts that Respondent is not authorized to use the NORM REEVES trademark in a domain name, yet is using the Disputed Domain Name in connection with a pay-per-click landing page. Complainant concludes that it is “inconceivable that Respondent has any legitimate rights to the name NORM REEVES.”
As to the third element, Complainant contends that the Disputed Domain Name resolves to a landing page of pay-per-click links that include a direct reference to Complainant, including a link entitled “Norm Reeves Honda.” Complainant points out that the website to which the Disputed Domain Name resolves contains additional links that resolve to websites with links to car dealers and/or car dealerships other than Complainant's. Complainant argues that Respondent's use of a pay-per-click link service is not use of a domain in connection with a bona fide business or an otherwise legitimate commercial use, under the Policy's use of that term, and evidences bad faith to the extent the links are being used to exploit Complainant's rights in the NORM REEVES trademark.
Complainant argues that Respondent is a serial cybersquatter, pointing out that Respondent has had as many as 100 cases filed against it before WIPO and the National Arbitration Forum. Within these cases, Complainant identifies a common fact pattern whereby Respondent, after registering a domain name, fails to acknowledge attempts by brand owners to contact it until after the brand owner files a UDRP proceeding, at which point Respondent offers to convey the domain name, but subsequently fails to follow through on that offer. In the instant matter, Complainant alleges that its counsel had “numerous exchanges” with Respondent and its counsel, and that Complainant received the proverbial “runaround,” which is consistent with Respondent's pattern of conduct established in the numerous other UDRP cases filed against Respondent.
Complainant estimates that, to date, brand owners collectively have expended at least USD$150,000 and potentially up to USD$500,000 in combating Respondent's “repugnant” cybersquatting activities. Complainant concludes that in this case, as in the multiple other UDRP cases filed against it, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online locations, by creating a likelihood of confusion with Complainant's NORM REEVES trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. All of this, according to Complainant, evidences bad faith use and registration of the Disputed Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. A. Identical or Confusingly Similar
Complainant has established common law rights in the NORM REEVES trademark through continuous and longstanding use of this mark in relation to automobile dealerships. There is no doubt that unregistered trademark or service mark rights may qualify as “rights” in a trademark or service mark for purposes of paragraph 4(a)(i) of the Policy. To establish such common law rights a complainant must show that the claimed mark has acquired a “secondary meaning” as an indicator of an association with complainant or a business operated by complainant. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Maritime-Ontario Freight Lines Limited v. Magic Domain,WIPO Case No. D2007-0202; ProCPR, LLC v. Name Administration Inc. (BVI),WIPO Case No. D2007-0823. Complainant's common law trademark rights in combination with its California State trademark registrations leave no doubt in the Panel's mind that Complainant possesses the requisite interest in the NORM REEVES trademark.
The Panel further concludes that the Disputed Domain Name is confusingly similar to Complainant's NORM REEVES trademark. The Disputed Domain Name incorporates the NORM REEVES trademark in its entirety, the only difference being the insertion at the end of the Disputed Domain Name of the geographical term “Cerritos”. Administrative panels considering similar cases where registrants simply added a geographical name to a trademark have found such domain names to be confusingly similar. See AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553 (, ) (transfer ordered where domain names incorporating the AT&T trademark plus a country or place name were found to be confusingly similar to the AT&T trademarks); America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713 (, , , ) (transfer ordered where domain names were confusingly similar because the “addition of a place name generally does not alter the underlying mark to which it is added.”); Wal-Mart Stores, Inc. v. Walmarket Canada,WIPO Case No. D2000-0150 () (transfer ordered where domain name was found to be confusingly similar to complainant's WAL-MART trademark); Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 () (transfer ordered where domain name was found to be identical or confusingly similar to the CELLULARONE trademark). The Panel concludes that Complainant has satisfied the first element. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use the NORM REEVES trademark. There is also no evidence that Respondent (Texas International Property Associates) is commonly known by the Disputed Domain Name, and thus paragraph 4(c)(ii) of the Policy in inapplicable in this case. Moreover, Respondent's use of a pay-per-click landing page, presumably to generate revenue because of the association of the Disputed Domain Name with Complainant's NORM REEVES trademark, is trading on Complainant's goodwill and cannot constitute a bona fide offering of goods or services. Use of the Disputed Domain Name to direct Internet users to various third party commercial websites as here also does not constitute a legitimate, noncommercial or fair use of the Disputed Domain Name under the Policy. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146 (stating that “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit”). Accordingly, Respondent's use of the Disputed Domain falls outside the scope of both paragraph 4(c)(ii) and paragraph 4(c)(iii) of the Policy.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some right or legitimate interest in respect of the Disputed Domain Name. Respondent has not filed a Response and thus offers nothing to legitimize its claim to the Disputed Domain Name. Indeed, having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described paragraph 4(c) of the Policy, or otherwise. The Panel therefore finds that Complainant has prevailed on this part of its Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Accepting all facts alleged in the Complaint as true, the Panel finds that Complainant has shown registration and use in bad faith by Respondent.
Given Complainant's long standing and well publicized use of the NORM REEVES trademark since 1961 for automobile dealerships, as evidenced by its expenditure of millions of dollars per year on advertising in television, radio, the Internet, newspapers and other sources of vehicle advertising, Respondent was quite likely aware of Complainant at the time it registered the Disputed Domain Name. The Panel's conclusion is reinforced by virtue of Respondent's incorporation of a geographical designator into the Disputed Domain Name that corresponds to the location of Complainant's dealership operating under the NORM REEVES trademark. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation, and its business.
Respondent's registration of the Disputed Domain Name which directly reflects Complainant's NORM REEVES trademark, and then using this domain to attract Internet users to its website and to divert users to other websites for business services similar to those of Complainant while presumably deriving such commercial value from Complainant's mark is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy. See America Online, Inc. v. Tencent Communications Corporation, NAF Claim No. 93668 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101. The Panel concludes that by using the Disputed Domain Name in connection with a pay-per-click link website, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
Further, as an operator of a website that links to automobile dealerships that compete directly with Complainant, Respondent is competing with Complainant, itself a well known automobile franchise. Respondent's registration and use of the Disputed Domain Name thus amounts to disruption of the business of a competitor and thus to bad faith registration and use of the Disputed Domain Name as set forth under paragraph 4(b)(iii) of the Policy.
Finally, the Panel concludes that Respondent has registered the Disputed Domain Name in order to prevent Complainant from reflecting its trademark in a corresponding domain name under paragraph 4(b)(ii) of the Policy. This Respondent is a notorious serial cybersquatter. Respondent has been found by previous panels under the Policy to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them. See Les Parfumeries Fragonard v. Texas International Property Associates,WIPO Case No. D2009-0835. Respondent's course of conduct here with respect to Complainant's NORM REEVES trademark justifies an adverse finding under the terms of paragraph 4(b)(ii) of the Policy. See also Legal Rights Defenders, Inc. v. Texas International Property Associates NA NA,WIPO Case No. D2009-0284. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Andrew J. Park
Sole Panelist
Dated: December 22, 2009
1 Although the Complaint does not specify the nature of the relationship, if any, between Norm Reeves Coastal Auto Sales, Inc. and Norm Reeves, Inc., the Panel presumes based on the Conant Declaration that use of the NORM REEVES ACURA & Design trademark by Coastal Auto Sales, Inc. is expressly and/or impliedly licensed and/or approved by Norm Reeves, Inc. and that all such use inures to Complainant's benefit.
2 . Complainant did not submit its registrations with the Complaint, but the Panel has confirmed with the California Secretary of State that the cited registrations are in force and were registered prior to the Disputed Domain Name.
Full & Egal Universal Law Academy