WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Flow Companies, LLC v. Stanley Pace Case No. D2010-0651 1. The Parties
The Complainant is Flow Companies, LLC of Winston-Salem, North Caroline, United States of America, represented by Kilpatrick Stockton LLP, United States of America.
The Respondent is Stanley Pace of Flower Mound, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Go Australia Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2010. On April 23, 2010, the Center transmitted by email to Go Australia Domains, Inc., a request for registrar verification in connection with the disputed domain name. On April 24, 2010, Go Australia Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 29, 2010. The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on May 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 25, 2010.
The Center appointed Richard Hill as the sole panelist in this matter on June 8, 2010. 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. 4. Factual Background
The Complainant has been using its FLOW mark since 1960 in connection with the operation of retail automotive dealerships. The mark was registered in 2003.
The Complainant's mark and website are well-known in the retail car business.
The Respondent registered the disputed domain name in 2007 and is using it to point to a website offering referral links to competitors of the Complainant.
The Respondent appears to obtain revenue from the referral links.
The Complainant did not authorize or license the Respondent to use the Complainant's mark. 5. Parties' Contentions A. Complainant
The Complainant alleges that it is focused primarily on the operation of retail automobile dealerships. Started over fifty years ago, the Complainant, through its predecessors-in-interest, began its business with a pre-owned center that offered fully-reconditioned cars with a warranty. The Complainant soon began acquiring dealership rights for such manufacturers as Volkswagen, Honda and BMW.
The Complainant states that it has rights to the trademark FLOW, registered in the United States in 2003, and that it has used the FLOW mark in commerce in connection with its automobile dealerships since the early 1960s.
At present, says the Complainant, it represents nineteen automobile manufacturers, including Chevrolet, through thirty-one franchises in North Carolina and Virginia, all of which use and display the FLOW mark. The Complainant has spent significant sums advertising and promoting the FLOW mark and maintaining its numerous websites. As a result of the Complainant's substantial marketing, advertising, and promotional efforts and activities in connection with the FLOW mark and the FLOW Chevrolet trade name, the Complainant's FLOW mark and FLOW Chevrolet trade name have become distinctive and well known for automobile dealership services provided by the Complainant's dealership system.
According to the Complainant the Respondent is using the disputed domain name to attract persons looking for the Complainant's services relating to its FLOW Chevrolet dealership. The Respondent has placed advertising links to third-party web sites, which compete with the Complainant, at the top of the web page at the disputed domain name, and he is collecting “click-through” fees from those links.
The Complainant states that the disputed domain name is identical and/or confusingly similar to Complainant's FLOW mark, as it fully incorporates the arbitrary mark FLOW exactly and in its entirety. It cites case law under the Policy to support this position.
Further, says the Complainant, the Respondent's inclusion of “Chevrolet” in the disputed domain name after the FLOW mark is clearly intended to create the mistaken impression that Respondent's web site is somehow affiliated with or endorsed by Complainant, which it is not.
According to the Complainant, there is no relationship between the parties giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant's FLOW mark. There has never been any business relationship whatsoever between the parties. The Complainant does not sponsor or endorse the Respondent's activities in any respect and has not provided its consent for the Respondent's use and exploitation of the FLOW mark.
Further, says the Complainant, the Respondent's use of the disputed domain name, namely to generate click-through revenue by directing consumers to competitors of the Complainant, cannot be considered to be a bona fide or otherwise legitimate use of the disputed domain name. The Complainant cites UDPR precedent to support its position.
The Complainant alleges that the Respondent's bad faith use of the disputed domain name is evidenced by the fact that the Respondent has sought to profit from the disputed domain name by using it to create an aura of affiliation with the Complainant and the goodwill associated with the Complainant's mark. The Respondent is using the disputed domain name to divert web traffic to a search engine and linking portal. Previous panels have concluded that the use of a domain name to point to a website that offers search engine services and sponsored links to a Complainant's potential competitors is evidence of bad faith. The Complainant cites numerous UDRP cases to support its position. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's registered mark, plus the term “chevrolet”, which is a well known automobile make. In the context of car sales, “chevrolet” cannot be considered to be distinctive: indeed, many businesses use that word to advertise the fact that they sell that make of car, as does the Complainant itself.
Thus the Panel finds that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant's mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). See also Microgaming Software Systems Limited v. DomainsByP and BB1Webs,WIPO Case No. D2008-0870 (finding that the inclusion of the generic word “slots” did not add distinctive matter so as to distinguish the disputed domain name from the Complainant's mark). B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant's mark. He is using the disputed domain name to operate a website that contains referrals to merchants offering the sale of various products and services that compete with the Complainant. The Respondent appears to obtain revenue from the referrals.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant's products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scotland Group PLC, Direct Line Insurance PLC, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C., NAF Case No. FA 714952 (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Damien Persohn c/o CPPD SAS / Têtu v. Joshua Lim c/o Webxel Consulting Pte Ltd, NAF Case No. FA 874447 (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant's customers and presumably earning “click-through fees” in the process).
The Panel finds that the Complainant has satisfied its burden of proof for this element of the Policy. C. Registered and Used in Bad Faith
It seems highly unlikely that the Respondent was not aware of the Complainant's mark when he registered and started using the disputed domain name.
The Respondent (who did not reply) has not presented any plausible explanation for his use of the Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when he registered the disputed domain name.
Indeed the Respondent's actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a website that contains referrals to products and services that compete with the Complainant. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the Complainant's mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Aamir Siddiqi c/o DotC, NAF Case No. FA 721969 (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant's mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .name, NAF Case No. FA 857581 (holding that the respondent's use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).
The Panel finds that the Complainant has satisfied its burden of proof for this element of the Policy. 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 the Complainant.
Richard Hill
Sole Panelist
Dated: June 10, 2010
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