Complainant is Barnes Crossing Auto LLC of Saltillo, Mississippi, United States of America (“United States” or “U.S.”), represented by Middleton Reutlinger, United States.
Respondent is Jonathon Hewitt, SEO Sport LLC of Venice, Florida, United States, represented by Law Office of Howard M. Neu, United States. 2. The Domain Names and Registrars
The disputed domain names , , , , , , and are registered with N, Inc. (N LLC), and the disputed domain names and are registered with Wild West Domains, LLC (the “Registrars”). All of the foregoing domain names are referred to collectively hereafter as the “Disputed Domain Names.” 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2017, and an amended Complaint (hereafter, the “Complaint”) was filed with the Center on September 13, 2017. On September 14, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 15, 2017 and September 16, 2017, the Registrars transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. The Response was filed with the Center October 12, 2017.
On November 6, 2017, the Center received an unsolicited Supplemental Filing from Complainant. On the same day, the Center received an email communication from Respondent.
The Center appointed Douglas M. Isenberg as presiding panelist and Carol Anne Been and John Swinson as panelists in this matter on November 22, 2017. The Panel finds that it was properly constituted. Each member of 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. Preliminary Issue: Complainant’s Supplemental Filing
As noted above, Complainant has submitted a supplemental filing in this proceeding. The Rules do not expressly allow for the submission of any unsolicited filings other than a complaint and a response. Indeed, paragraph 12 of the Rules states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” (Emphasis added.) However, paragraph 10(a) of the Rules grants panels with broad authority to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.” Further, as noted below, Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking.
As set forth in section 4.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel…. [P]anels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Depending on the content of any admitted supplemental filing, the panel may issue further instructions to the parties, including a rebuttal/reply opportunity to the non-initiating party.”
Here, it is at best unclear why Complainant was unable to provide in its Complaint the information contained in its supplemental filing. However, where, as here, a respondent has requested that a panel make a finding of Reverse Domain Name Hijacking, it may be appropriate for a complainant to have an opportunity to respond to that request. See, e.g., Puls Elektronische Stromversorgungen GmbH v. NetIdentity,WIPO Case No. D2002-0205 (“[i]n light of the allegation by the Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to respond to that allegation and has decided to accept the Complainant’s Supplemental Filing insofar as it is relevant to that issue”). On the other hand, Complainant’s supplemental filing in this proceeding addresses much more than (if not only) issues other than Reverse Domain Name Hijacking and, in fact, much if not all of the information in the supplemental filing could (and, perhaps, should) have been included in the Complaint itself.
Nevertheless, because the information in the supplemental filing is important but ultimately not determinative to the outcome of this decision, the Panel accepts it and finds it unnecessary to extend to Respondent an opportunity to submit a supplemental filing of its own. 5. Factual Background
Complainant states that it “was formed on April 30, 2010 and since that time has been one of the top rated car dealerships in Mississippi – with services and dealerships extending throughout the State of Mississippi and into Tennessee.” Complainant further states that “[s]ince its formation in 2010, Complainant has been known by the consuming public under the name ‘BC Auto’ and/or ‘BC Auto Group’” – and that “BC” is short for “Barnes Crossing.” Complainant further states that it formed “business entities” (apparently limited liability companies) for its various dealerships, each of which “operates… under agreements with the respective car manufacturers” and that these manufacturers “allow for [Complainant] to use the primary trademarks of the dealers as part of the respective dealership name.”
Respondent states that it “is a custom dealership website and inventory hosting provider with a focus on search engine optimization to increase traffic and organic leads for car dealers.”
Complainant further states that, “[s]ometime in early 2010, Complainant and Respondent began discussing the possibility of entering into an agreement whereby Respondent would develop Complainant’s website as well as individual dealership websites for Complainant, host the various websites, host the email server for Complainant (and its affiliated entities), and assist with Internet marketing efforts on behalf of and for the benefit Complainant (and its affiliated entities), including, inter alia, search engine optimization. Those discussions materialized, and eventually, Complainant, through each of the Individual LLCs, entered into agreements with Respondent for the development of the dealership websites. As part of this relationship, though not set forth in the written agreements, Respondent was to register the respective domain names for the dealership websites to be created. However, Respondent was never instructed to register any dealer website domain name in its own name. It was always understood that any domain names registered for use in connection with the dealership websites would be registered in the name of Complainant.”
Complainant further states that “[d]uring the course of their relationship, Complainant would disclose to Respondent the names that it intended to use as the names and/or marks for its dealerships and Respondent, in turn, took the necessary steps to register the domain names incorporating the names to be used by Complainant. Respondent would then send the bill for the registration and/or renewal of the Domain Names to Complainant and Complainant would pay for the registration and/or renewal.”
The Disputed Domain Names were created on the following dates:
- : July 21, 19951
- : August 6, 2014
- : May 23, 2010
- : July 20, 2014
- : May 23, 2010
- : July 16, 2015
- : February 20, 2012
- : September 25, 2014
- : July 21, 2014
Although each of the Disputed Domain Names is currently being used in connection with one of Complainant’s car dealerships, Complainant states that the Disputed Domain Names had been registered to Respondent, something that Complainant did not learn until 2016. Subsequently, Complainant states that it asked Respondent to transfer the Disputed Domain Names to Complainant, but Respondent has repeatedly refused.
Respondent states that “Complainant and Respondent entered into an agreement, wherein the Complainant would inform the Respondent where it intended to open a new dealership and the Respondent was to acquire a usable domain name for each dealership and develop them into working web sites. With one exception, , all of the other subject domains were registered by Respondent months before, and sometimes years before, the concomitant dealerships were opened by Complainant.”
Respondent provides a copy of a “Master Services Agreement” between Complainant and Respondent, pursuant to which Respondent states that it “created all of the web sites for Complainant’s dealerships, pointed the DNS to those web sites and hosted those web sites, all of which were billed to Complainant.” 6. Parties’ Contentions A. Complaint i. Identical or Confusingly Similar
In its Complaint, Complainant contends, in relevant part, as follows:
- “By virtue of its continuous use in commerce, in advertising and promotional material,” Complainant “owns common law trademark rights in and to” the marks BC AUTO, BC, BC HYUNDAI, BC CHEVROLET, BC KIA, BC VOLKSWAGEN, BC MITSUBISHI, BC MAZDA, HYUNDAI OF COLUMBIA and MAZDA OF RIDGELAND. In support thereof, Complainant provides copies of various advertisements and/or website screenshots. Complainant contends that these marks, which it refers to as the “BC Marks,” “have acquired secondary meaning in that the consuming public has come to associate those marks with the Complainant’s business through the substantial and continuous use of those marks by Complainant in radio and print advertising” and “have become synonymous in the minds of the relevant consuming public with Complainant.”
- Complainant and its affiliated entities are authorized dealers and licensees of marks protected by U.S. registrations for HYUNDAI, MAZDA, CHEVROLET, KIA and MITSUBISHI, which it refers to as the “Manufacturer Marks.” Complainant “has direct authorization to file the present Complaint from Mitsubishi Motors North America, Inc., Kia Motor Corporation, Mazda Motor Corporation, and General Motors/Chevrolet” (copies or correspondence provided) and agreements with Hyundai Motor America and Volkswagen AG that “broadly give Complainant rights as an authorized dealer and to use the registered trademarks in connection with its dealerships” (agreements provided). As a licensee of the Manufacturer Marks, Complainant has standing to bring a claim under the Policy.
- “The Domain Names wholly incorporate the Manufacturer Marks in their entirety and are either identical to the BC Marks or virtually identical. The fact that the Domain Names wholly incorporate both the Manufacturer Marks and the BC Marks is sufficient to establish identity or confusing similarity for purposes of the Policy.” ii. Rights or Legitimate Interests
In its Complaint, Complainant contends, in relevant part, as follows:
- The Disputed Domain Names “were registered by Respondent under the direction and instructions of Complainant. However, it was always understood that the Domain Names were to be registered in the name of Complainant, as the owner and operator of the BC Auto business and the respective car dealerships, and not the Respondent as the contracted Internet marketer and web developer for the websites. As an Internet marketer and web site developer, Respondent could not possibly have a legitimate interest in registering the Domain Names – which relate to the names of various car dealerships operated by Complainant – in its own name.”
- Respondent does not own any rights to trademarks that consist of or include any of the BC Marks or the Manufacturer Marks.
- “Respondent is not a licensee or owner of the BC Marks and is not an authorized dealer for the various car manufacturers.”
- “Respondent has never been commonly known by” any of the BC Marks or the Manufacturer Marks “and upon information and belief, has only registered the Domain Names for the purpose of leveraging additional money from Complainant for the sale of the Domain Names to Complaint or to otherwise interfere or threaten to interfere with Complainant’s online operations.”
- “Since Respondent is not an authorized car dealer or licensee with respect to the Manufacturer Marks, there could be no other reason for Respondent to use the Domain Names unless it was trying to gain commercially from the registration and use of the Domain Names.” iii. Registered and Used in Bad Faith
In its Complaint, Complainant contends, in relevant part, as follows:
- “The intentional registration and use of a domain name incorporating another party’s well-known trademark is evidence of an intentional attempt at commercial gain by creating a likelihood of confusion as to source, sponsorship, or affiliation.”
- In previous disputes under the Policy, panels have found bad faith where an employee of a complainant registered disputed domain names in his or her own name, because “it was “inconceivable” that the complainant would have intended for the respondent to register the domain name in his own name as opposed to the name of the company.” See Intergr8 IT v. Sunshine/ Mr. Louis Botha,WIPO Case No. D2008-0978; Cleanfilm, Inc. v. Stephen Van Someren,WIPO Case No. D2003-0937; and Respiratorius AB v. Dr. Bengt Skogvall, WhoisGuard,WIPO Case No. D2007-1447.
- “Complainant presented the names and marks to Respondent to be registered as domain names, in some cases before those names were actually used by Complainant. Respondent then used this knowledge and purposefully registered the Domain Names in its own name without the permission of Complainant.” B. Response i. Identical or Confusingly Similar
In its Response, Respondent contends, in relevant part, as follows:
- “The Complainant has always been known as Barnes Crossing for its various dealerships and the only indication of ‘BC’ is in the domain names registered by Respondent and the logos which Respondent designed for use on the websites from 2016 and holds copyrights to.”
- “[T]here is no proof of ownership of the so-called Common Law Rights [in the BC Marks] other than [Complainant’s] statement that it is the owner of such so-called rights. The complaint has shown not one single advertisement using the name BC Auto as their trade name in commerce, nor ‘BC Auto Group’ or any of the other alleged BC Common law trademarks. Complainant alleges that the ‘BC Marks’ have developed secondary meaning, but provides no evidence that such is the case.”
- The documents provided by Complainant from some of the auto manufacturers shows that “NO LICENSES were issued by any of the manufacturers.”
- “Complainant has no standing to bring this action against respondent as it is not the registrant nor does it have exclusive license to enforce the manufacturers’ trademarks. Its non-exclusive license is solely for the purpose of establishing dealerships and for no other purpose.”
- “There was never an understanding, either verbal or written, that any domain names registered in connection with the dealership web sites would be registered in the name of the Complainant.” ii. Rights or Legitimate Interests
In its Response, Respondent contends, in relevant part, as follows:
- “Respondent has been contacted by Authorized new car dealerships in British Columbia, Canada (BC) and Bergen County, New Jersey (BC) who have shown interest in working with Respondent to build web sites hosted at” the Disputed Domain Names containing the BC Marks. “Respondent therefore has a legitimate business interest in maintaining and owning the BC domains which would allow respondent to provide custom websites, inventory hosting, email services and application development services to dealers authorized to solve various brands of automobiles. These websites are hosted and operated by SCO SPORT, LLC, not by complainant, or any other dealer.”
- “Respondent has never been an employee of the Complainant who entered into an Independent Service Provider Agreement with Respondent to obtain domain names and develop and host websites for various dealerships.” iii. Registered and Used in Bad Faith
In its Response, Respondent contends, in relevant part, as follows:
- “Respondent was never aware any trademark rights owned by the Complainant, other than those that allowed Complainant to establish dealerships for various auto manufacturers in Mississippi and Tennessee.”
- Complainant’s reference to decisions under the Policy in which employees of complainants registered domain names in their own names are inapplicable because “Respondent herein has never been an agent or trustee for the Complainant.”
- “The subject domain names have never been used in Bad Faith to complete with the Complainant or cause confusion with any trademarks that the Complainant may own.” iv. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking. C. Complainant’s Supplemental Filing
In its supplemental filing, Complainant states: “This case presents complex issues associated with nine (9) separate domain names, ownership of common law rights, licenses to use well-known trademarks, permission to initiate proceedings from the licensor of those well-known trademarks, and the registration of domain names by Respondent based upon instructions and information provided by Complainant – in some cases before the Complainant actually used its corresponding name and common law mark.”
Complainant provides what it describes as “a chart identifying the supporting facts and issues associated with each domain name”; a declaration from Complainant’s owner; “an Excel spreadsheet identifying the advertising expenses and total sales associated with the various common law marks, names and business entities operating under those marks”; audio files of advertisements that Complainant says use many of the relevant trademarks; agreements with three of the relevant automobile manufacturers; a trademark registration certificate for the mark VOLKSWAGEN; email communications between Complainant and Respondent; and copies of invoices for certain domain name renewals. 7. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
Ordinarily, the Panel would now evaluate each of these three elements of the Policy as they apply to the facts of this proceeding. However, this is, as Complainant itself has admitted, no ordinary proceeding. It raises numerous complicated questions of both fact and law, including (but not limited to) the following, which apply only to the first of the three elements:
a. Has Complainant established common law rights in and to the trademark BC? As set forth in WIPO Overview 3.0, section 1.3: “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” Here, it is far from clear whether Complainant has met this burden, and much of the evidence provided by Complainant is not as Complainant describes it. To cite just one example, audio advertisements that Complainant says “feature[e] use of” the BC trademark instead simply recite the Disputed Domain Names and refer to Complainant’s respective automotive dealerships by a name that does not contain the BC trademark (such as “Mazda of Ridgeland”).
b. To the extent Complainant may be relying on the Manufacturer Marks for purposes of the first element, does Complainant have “rights” to the Manufacturer Marks for purposes of paragraph 4(a)(i) of the Policy? The only thing that is certain from the record is that Complainant is not the owner of the Manufacturer Marks. While some panels have recognized such rights in exclusive (or, in some narrow circumstances, non-exclusive) licensees (see WIPO Overview 3.0, section 1.4), it is unclear whether such rights should be recognized here, and Complainant’s mischaracterization of its relationship with the owners of the Manufacturer Marks does not give the panel sufficient confidence in this argument. For example, Complainant states that it has “direct authorization” from Chevrolet to file its Complaint, yet the supporting evidence is merely an email (not a declaration) from a Chevrolet “zone manager” (whose authority with respect to any trademarks is unknown) that “Chevrolet has no objections to Barnes Crossing Chevrolet” (not the Complainant) “filing the complaint as you outlined below.”
c. What is the legal relationship between Complainant and the various “business entities” (apparently limited liability companies) for its dealerships, each of which “operates… under agreements with the respective car manufacturers”? Who (Complainant or the business entities) owns rights in and to the BC trademarks (if such rights even exist) and the Manufacturer Marks? And why aren’t any of these business entities included as complainants in the Complaint? Note that WIPO Overview 3.0, section 4.11.1, states: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” Here, because the business entities were not (but perhaps should have been) included as complainants, the panel cannot adequately evaluate this issue.
In other words, despite the large size of its multiple filings, Complainant has left many questions unanswered. While the Panel could reach its decision even in light of this unclear record, the Panel instead is most troubled by the uncertainty surrounding the terms of the relationship between Complainant and Respondent. As the parties’ pleadings make clear, there is significant disagreement about these terms. As noted above, Complainant believes that it “presented the names and marks to Respondent to be registered as domain names” and that “Respondent then used this knowledge and purposefully registered the Domain Names in its own name without the permission of Complainant.” However, Respondent believes that “[t]here was never an understanding, either verbal or written, that any domain names registered in connection with the dealership web sites would be registered in the name of the Complainant” – and, an affidavit from Respondent’s representative states, “The subject domain names were NOT registered by me under the direction and instructions of the Complainant. They were registered once I determined that a particular name was available and that it would be suitable for a particular dealership website in the future. I acquired the domain names in order to develop and provide service to working websites for each dealership as a joint agreement between me and Complainant.”
Inexplicably, although the parties apparently entered into a written (but undated) agreement with respect to certain work, Complainant did not disclose the existence of this agreement, which instead was provided by Respondent in its Response. Whether Complainant did not provide it because Complainant had overlooked it, thought it inapplicable, or for some other reason is unknown. In any event, this agreement refers to specific statement(s) of work that were not provided by either party, and the agreement does not expressly refer to domain names. The only provision remotely applicable to this proceeding states that the parties “shall be co-owners of all patents, copyrights, trademarks, trade secrets and any other rights and protections connected therewith.” However, this statement, which is both broad and vague, does nothing to clarify rights to the Disputed Domain Names beyond the parties’ assertions on record.
Complainant’s assertions that it requested Respondent to register the Disputed Domain Names for Complainant seem reasonable. However, Respondent disagrees as to this point, which was not committed to writing, although on the other hand, its assertion that it has a legitimate interest in using the Disputed Domain Names for other car dealerships that have contacted it and that are associated with “BC” (such as those in British Columbia or Bergen County) is both unsubstantiated and far-fetched. Accordingly, the Panel is left in the unfortunate position of having to assess the credibility of the parties or to reach its decision notwithstanding this critical factual discrepancy.
As a previous panel wrote: “Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.” General Motors LLC v. Chad Clegg,WIPO Case No. D2012-2196 (citing Jumblatt v. SlantMedia,WIPO Case No. D2012-1011 (“[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).
Given the number of unresolved factual questions, especially the nature of the relationship between the parties and their intentions with respect to the Disputed Domain Names, the Panel finds that this is primarily a contractual dispute between the parties that is not appropriate for resolution in this proceeding. Notwithstanding this conclusion, the Panel notes that this decision need not represent the final outcome to the dispute between the parties. Paragraph 5 of the Policy makes clear that a complainant and respondent retain the right to resolve their dispute “through any court, arbitration or other proceeding that may be available.” In a court proceeding, the questions and concerns discussed above could be properly explored in ways that the Policy simply does not allow. “For good reason, this… process [under the Policy] is designed to be a fast track inexpensive process.” Quoteseek Corporation v. Internet Marketing Group,WIPO Case No. D2002-0511. “Necessary elements of that desirable process are an absence of discovery, depositions, cross examination, [and] live hearings. When … a party critically needs certain evidence available only by discovery forbidden by the [Policy’s] parameters, this process may not produce as confidently sound results as the more expensive court processes that afford those features forbidden here. That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court.” 8. Reverse Domain Name Hijacking
As noted above, Respondent has asked the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”). Under the Rules, RDNH is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
WIPO Overview 3.0, section 4.16, states:
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith… such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.
The Panel does not find any of these (or any other relevant) reasons applicable here. 9. Decision
For the foregoing reasons, the Complaint is denied. Further, the Panel does not make a finding of Reverse Domain Name Hijacking.
Douglas M. Isenberg
Presiding Panelist
Carol Anne Been
Panelist
John Swinson
Panelist
Date: December 5, 2017
1 Although this domain name was created prior to any relationship between Complainant and Respondent, the record does not disclose when this domain name was obtained by Respondent.
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