Complainants are Ted Britt Ford Sales, Inc. and Ted Britt Sterling Chevrolet LLC of Fairfax, Virginia, United States of America and Sterling, Virginia, United States, respectively, represented by Ifrah PLLC, United States.
Respondents are Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States and Marcello Grimaldi of Leesburg, Virginia, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2013. On May 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2013, the Registrar transmitted by email to the Center its verification response 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 Complainants on May 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on May 19, 2013.
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 May 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2013.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 20, 2013. 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
Complainants are a parent and subsidiary who together within the corporate family have been operating car dealerships in the Washington, D.C. area, in the United States since 1959. Complainants own a registration for the mark TED BRITT, which they use in connection with their automobile sales, United States Registration No. 1,908,805 (registered 1995), named after, and with the consent of Complainants’ original founder, individual Tedd Britt, who has since deceased.
Complainants own the registration for the domain name (registered on April 17, 1998), as well as other domain name registrations that include their mark with descriptive terms, such as (registered on August 12, 1997), (registered on July 15, 2010), and (registered on October 8, 2012).
The disputed domain name was created on September 30, 2012. Respondent has no affiliation with Complainants. Respondent has used the disputed domain name to divert Internet users to a parked page containing links to competitors of Complainants and their automobile sales.
Complainants have not authorized these activities by Respondent, nor any use of their trademark thereby. 5. Parties’ Contentions A. Complainants
Complainants contend that: (i) the disputed domain name is identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not file a reply to Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name directly incorporates Complainant’s registered trademark TED BRITT. Accordingly, consumers would expect to find information offered by Complainants on the website to which the disputed domain name refers. The Panel finds that the added word “chevrolet” is descriptive of automobiles, which are a product sold by Complainants.
That Complainants have other domain name registrations and marks that incorporate the registered trademark TED BRITT with similarly descriptive terms further compounds the likelihood of confusion.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with additional descriptive wording does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; and Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainants have rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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.”
Respondent did not submit a reply to the Complaint, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a parked page containing links to competitors of Complainants and their automobile sales.
Therefore, this Panel finds that Complainants have provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy, which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where:
“by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”.
As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a parked page containing links to competitors of Complainants and their automobile sales. Hence, the Panel finds that Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainants, without prejudice to any third-parties’ rights.
Lorelei Ritchie
Sole Panelist
Dated: June 26, 2013
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