Complainant is Weil Cadillac-Hummer, Inc. of Libertyville, Illinois, United States of America, represented by Madden, Jiganti, Moore & Sinars LLP, United States of America.
Respondent is Stanley Pace of Flower Mound, Texas, United States of America.
The disputed domain name <weilcadillac.com> (the “Domain Name”) is registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 11, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On October 12, 2010, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. According to the registration information provided by Fabulous.com, the registrant of the Domain Name appeared to be Complainant’s representative. The Center requested Complainant’s representative to confirm that it has gained actual control over the Domain Name. On October 14, 2010, Complainant’s representative indicated it did not have actual control over the Domain Name.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2010.
The Center appointed Mark Partridge as the sole panelist in this matter on November 17, 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.
Complainant is a Cadillac dealership located in Libertyville, Illinois, and has operated under the name Weil Cadillac-Hummer, Inc. since February 5, 2001. From 1970, until July 6, 1689, Complainant operated under the name Weil Oldsmobile, Inc. Thereafter, from July 6, 1989, to February 5, 2001, Complainant operated under the name Weil Oldsmobile-Cadillac Inc.
The Domain Name was registered on July 28, 1999.
Complainant contends that it has used the terms Weil Oldsmobile, Inc., Weil Oldsmobile-Cadillac, Inc., and Weil Oldsmobile-Cadillac-Hummer, Inc., in connection with vehicle sales since the early 1970s; and that it is an authorized General Motors dealer. Pursuant to an agreement with General Motors, Complainant changed its name to Weil Cadillac, Inc., on or around October 15, 2010. For the past 40 years, Complainant has used the name Weil as a trademark and has built a reputation as a highly regarded purveyor of high-end automobiles.
Complainant also contends that the Domain Name is identical or confusingly similar to a mark in which it has rights, namely Weil; that Respondent has no rights or legitimate interests in the Domain Name nor is he making a bona fide offering of goods or services; and that Respondent registered and is using the Domain Name in bad faith as shown by his pattern of bad faith registrations and by his offer to sell the Domain Name to Complainant for USD 5,000.
Respondent did not formally reply to Complainant’s contentions1.
Paragraph 14 of the Rules provides in the event of default that the Panel may “draw such inferences therefrom as it considers appropriate.”
Paragraph 15(a) of the Rules states that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.”
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown , doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004.
Complainant claims common law rights in WEIL, WEIL CADILLAC and WEIL CADILLAC-HUMMER based on its business of selling automobiles and related services since 1970. Complainant argues it acquired goodwill and rights in WEIL and WEIL CADILLAC through its continuous and exclusive use of the name to transact its business since 1989.
In the past, UDRP panels have allowed the transfer of domain names incorporating vehicle manufacturer names to dealers. See, AutoNation Holding Corp. v. Asia Ventures, Inc., WIPO Case No. D2005-0789 (transferring the domain name <johnelwaytoyota.com> to a dealer of Toyota vehicles); Justin Kent Luhrs v. Steve Regan, WIPO Case No. D2002-0671 (transferring the domain name <toyota-of-glendale.com> to a dealer of Toyota vehicles); Ourisman Dodge, Inc. v. Ourisman “Okie doke” Dodge dot com and Ourificeman Dodge dot com, WIPO Case No. D2001-0108 (transferring the domain names <ourismandodge.com>, <ourismandodge.org>, and <ourismandodge.net> to a dealer of Dodge vehicles).
Accordingly, the Panel finds that Complainant has rights in the marks at issue; that the Domain Name is identical or confusingly similar to marks in which Complainant has rights; and that Complainant has therefore satisfied the first requirement of paragraph 4(a) of the Policy.
Complainant has made a prima facie showing that Respondent is not known by the “Weil Cadillac” name, does not use the name for a bona fide offering of goods or services, and is not making fair descriptive use of the name for a non-commercial purpose. After reviewing the website at <weilcadillac.com>, the Panel finds Respondent's Domain Name is used to produce revenue based on the links provided on the webpage. Prior panels have decided that the use of domain names that are confusingly similar to terms in which other parties have rights in connection with a “click-through” scheme does not serve to establish a bona fide offering of goods and services. (See The Evening Store.com, Inc. v. Henry Chan, WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356).
Accordingly, the Panel finds Respondent lacks any rights or legitimate interests in the Domain Name.
It appears to this Panel that the Domain Name was deliberately used for commercial gain based on confusion or mistake with Complainant’s mark. Complainant’s mark was being used to lead Internet users to a website that offers links to Complainant’s competitors. The website was not approved or authorized by Complainant. Persons seeking information or material relating to Complainant could be misled in a manner that is deceptive and contrary to Complainant’s right to control its mark.
Further, under the Policy, an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is evidence that the domain name has been registered and is being used in bad faith. An exception to this is where the respondent can show that it has rights to or legitimate interests in the domain name at issue. See, CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243. In this case, Complainant asserted that Respondent, who had no rights or legitimate interests in the Domain Name, offered to transfer the Domain Name to Complainant in exchange for USD 5,000.
These facts lead to the conclusion that Respondent has registered and used the Domain Name in bad faith for commercial gain.
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 <weilcadillac.com> be transferred to Complainant.
Mark Partridge
Sole Panelist
Dated: December 7, 2010
1 Respondent submitted an email in which he indicated he attempted to transfer the domain to Complainant by changing the WhoIs information, but that the Domain Name was never actually transferred.