The Complainants are Banister Enterprises Inc., Banister Nissan of Chesapeake, LLC, and Banister Nissan of Norfolk, LLC, United States of America (“United States”), represented by Wolcott Rivers Gates, United States.
The Respondent is bannisternissan.com@privacy C/O Above.com Pty Ltd., Australia / Tulip Trading Company Limited, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 3, 2021, 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 the Complainant on March 3, 2021 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 amended Complaint on March 4, 2021 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021. The Center appointed Nick J. Gardner as the sole panelist in this matter on April 6, 2021. 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 relationship between the Complainants has not been clearly explained. It appears the Complainants are companies based in the State of Virginia in the United States and are all controlled by an individual called Daniel Banister (with the name Banister spelt with a single “n”). They are all involved in the sale of Nissan motor vehicles. It is a matter of public record that businesses described as “Banister Nissan” operates authorised Nissan dealerships in various locations in Virginia. The Disputed Domain Name was registered on June 5, 2018. At the time of this decision the Disputed Domain Name resolves to a pay per click (“PPC”) webpage bearing automatically generated links to third party websites. Filed evidence shows that previously the Disputed Domain Name has been linked by redirection to a Nissan corporate website and has also on occasion linked to a webpage which indicates the Disputed Domain Name may be for sale. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows. The Disputed Domain Name is confusingly similar to the term “Banister Nissan”, in which the Complainants claim to have unregistered trademark rights. The Complainants say the name “banister” can be spelled with one or two “n”s and in relation to the latter gives the example of Roger Bannister (the first man to run a mile in under four minutes). It says the Disputed Domain Name is simply using this variation in spelling of their name. The Complainants say that they have since at least 2017 used the trade name “Banister Nissan” to promote the sale of automobiles and have advertised “Banister Nissan” using print, newspaper, TV, radio, and Internet. The Complainants claim, albeit without specific evidence, they have sold USD 250,000,000 in goods under the trading style “Banister Nissan” and have spent USD 8,000,000 on advertising that trading style. The Complainants have no registered trademarks The Complainants say the Respondent has no rights or legitimate interests in the terms “Banister Nissan” (or “Bannister Nissan”). There is no other meaning associated with “Banister Nissan” (or “Bannister Nissan”) other than in relation to the Complainants and their business. The Complainants say the Disputed Domain Name was registered and is being used in bad faith. It was clearly registered with knowledge of the Complainants and likely with the intention to sell it to the Complainants. In the meantime it has been used to attract traffic based on a misspelling of the Complainants trademark. The Complainant cites two previous UDRP cases where the Respondent has been found to have acted in bad faith and says this establishes a pattern of bad faith registrations. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Matters – No Response The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Preliminary Matters – Respondent Identity The Panel also notes this is a case where one Respondent (bannisternissan.com@privacy C/O Above.com Pty Ltd.) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case, the Panel considers the substantive Respondent to be Tulip Trading Company Limited and references to the Respondent are to that company. Preliminary Matters – Multiple Complainants In the present case whilst the relationship between the Complainants is not entirely clear to the Panel it would appear that they are all members of the same corporate group and are under common control and have a common interest in their grievance against the Respondent – see WIPO Overview 3.0 at section 4.11.1. Accordingly, the Panel considers it would be equitable and procedurally efficient to permit the complaint being brought by multiple complainants. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (1) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (3) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has not relied upon any registered trademarks. The Panel has not found the evidence filed by the Complainant as to its unregistered trademark rights particularly comprehensive. The Complaint needs to demonstrate it has acquired a reputation in the term “Banister Nissan” sufficient to support its claim to unregistered trademark rights. No evidence has been filed to support the assertions in the Complaint as to turnover or advertising spend. However it appears to be clear that the Complainants’ collectively operate at least two Nissan car dealerships in Virginia under the name “Banister Nissan” and as such the Panel accepts they must have at least a significant local reputation in that term. It is well established that a local reputation can suffice to support a claim to unregistered trademark rights – see WIPO Overview 3.0 at section 1.3. Accordingly, the Panel concludes that on the balance of probabilities the Complainant has shown it has unregistered trademark rights in the term “Banister Nissan” for the purposes of the Policy. Indeed, in support of this finding, the fact the Respondent thought it worthwhile to register a variation of the Complainant’s name would suggest that it considered a reputation in that name existed. The Disputed Domain Name is clearly a typographical variation of “Banister Nissan”. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely: “Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark? A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests “Banister Nissan” (or its misspelling in the form “Bannister Nissan”) is as far as the Panel is aware a term with no other meaning save in relation to the Complainants and their business. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name: (i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or (iii) the Respondent is making a 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. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the term “Banister Nissan” (or “Bannister Nissan”). The Complainant had clearly chosen the terms “Banister Nissan” as a source identifier prior to the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith In the present circumstances, the distinctive nature of the Banister Nissan trademark, and the fact that the Disputed Domain Name is simply a misspelling of this trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use were in bad faith. The Panel concludes that the Respondent chose to register a name comprising a misspelling of the Complainant’s trademark. The evidence before the Panel does not provide sufficient material for the Panel to reach a conclusion on exactly what the Respondent’s intention was in so doing. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (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 out-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 site or location. In the present circumstances the Panel cannot clearly determine which, if any, of the other factors may apply. However, the Panel notes that in any event this list is non exhaustive and takes the view that the acquisition of the Disputed Domain Name with knowledge of the Complainants’ trademark is itself evidence of bad faith – see The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038. The Respondent cannot have chosen the Disputed Domain Name coincidentally. The Panel infers it selected the Disputed Domain Name because of its similarity to the Complainants’ trademark and that its motive was some form of commercial gain which supports a finding of bad faith. This is particularly so given that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. The Panel also notes two previous UDRP cases where the respondent has been found to have acted in bad faith (see, Fenix International Limited v. c/o whoisprivacy.com / Tulip Trading Company, Tulip Trading Company Limited,WIPO Case No. DCO2020-0038, and A.S. Roma S.p.A., A.S.R. Media & Sponsorship S.r.l. v. Tulip Trading Company Limited,WIPO Case No. D2015-1977). These further support the finding of bad faith in the present case in that the Respondent appears to be engaged in a pattern of registering third party trademarks as domain names. As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: April 20, 2021
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