Complainant is Ted Britt Ford Sales, Inc., United States of America (“United States”), represented by Hyland Law PLLC, United States.
Respondent is Host Master, Transure Enterprise Ltd, United States.
The disputed domain name <tedbrittfordchantilly.com> is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, 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 Complainant on May 1, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 1, 2020.
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 Respondent of the Complaint, and the proceedings commenced on May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 23, 2020. 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 operates a Ford automobile dealership located in Chantilly, Virginia, United States. Complainant has been using its TED BRITT trademark (“Complainant’s Mark”) in connection with automotive sales and services since 1959. Complainant owns United States trademark registration number 1,908,805 for its TED BRITT mark, which was registered on August 1, 1995. Complainant also owns and operates websites at the <tedbritt.com>, <tedbrittford.com>, and <tedbrittchantilly.com> domain names to promote its business and products.
The disputed domain name, <tedbrittfordchantilly.com>, was registered by Respondent on April 16, 2020 and resolved to a parked page displaying pay-per-click links (“PPC links”) regarding automobiles and automotive dealerships. Complainant sent a communication to Respondent sometime before April 26, 2020 demanding that the disputed domain name be transferred to Complainant’s possession. Complainant received a response on April 26, 2020 from someone allegedly representing the Respondent saying that Respondent would release the disputed domain name to Complainant for USD 250.
Respondent is ostensibly located in Delaware, United States. Respondent has been the losing respondent in previous UDRP proceedings. See, e.g., Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy and Transure Enterprise Ltd., WIPO Case No. D2013-0226 (“The underlying Registrant [Transure] apparently makes a practice of registering domain names that consist of famous trademarks and generic or descriptive terms, and then linking those domain names to websites that offer commercial goods or services of third parties.”); (TRS Quality, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd David Smith, WIPO Case No. D2009-0630 (“The Panel has found approximately 11 [UDRP] cases [...] where this Respondent was cited. Transfers were ordered in all instances.”)).
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s Mark because it fully incorporates its TED BRITT mark. Complainant argues that the disputed domain name’s inclusion of the word “Chantilly”, the geographical location where Complainant’s dealership is located, and of “Ford”, the brand of automobile sold at that dealership, does not prevent a finding of confusing similarity.
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot claim to be making legitimate noncommercial or fair use of the disputed domain name, nor a bona fide offering of goods and services, because Complainant’s use and registration of its TED BRITT mark precede the disputed domain name’s registration and the website at the latter merely consists of a parked page displaying PPC links that compete with or capitalize on the reputation of Complainant’s Mark. Complainant also alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way, and was never licensed or authorized to use Complainant’s Mark.
Complainant also alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the TED BRITT mark given the existence of its federal trademark registration at the time the disputed domain name was registered, and the identical reproduction of the TED BRITT mark, which denotes clear awareness of Complainant’s Mark. Furthermore, Complainant argues that Respondent’s demand for payment far in excess of Respondent’s out-of-pocket costs for the purchase of the disputed domain name further shows Respondent’s bad faith registration and use. Lastly, Complainant asserts that Respondent is a well-known cybersquatter that has been the subject of a number of UDRP proceedings, which provides further evidence of Respondent’s bad faith behavior.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the TED BRITT trademark through its United States registration.
With Complainant’s rights in the TED BRITT mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element. WIPO Overview 3.0, section 1.12. Furthermore, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8.
Here, the disputed domain name incorporates Complainant’s Mark in its entirety. Therefore, the addition of the third-party mark FORD and the geographical term “chantilly” does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s TED BRITT trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As expressed in previous UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence; (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards; (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan; (iv) bona fide registration and use of related domain names; and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. WIPO Overview 3.0, section 2.2.
Panels applying UDRP paragraph 4(c) have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolved to a website offering links regarding other automobile dealerships and regarding goods identical to those covered by Complainant’s Mark that compete with Complainant’s business. Therefore, Respondent cannot be considered to be making any bona fide offering of goods and services or noncommercial or fair use through the disputed domain name.
Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use Complainant’s Mark in any way. There is also no evidence on record suggesting that Respondent is commonly known by the disputed domain name. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).
The Policy indicates in paragraph 4(b)(i) that bad faith registration and use can be found when a respondent registered or has 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.
Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration can also be found if a respondent is shown to have registered the domain in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. UDRP panels have found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion; (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful; (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name; (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer; (v) redirecting the domain name to the complainant’s (or a competitor’s) website; and (vi) absence of any conceivable good faith use.” WIPO Overview 3.0, section 3.1.4.
In this case, bad faith can be found in the registration of the disputed domain name. Complainant provided ample evidence showing widespread use and registration of the TED BRITT mark that long predate Respondent’s registration of the disputed domain name. Respondent was likely aware of Complainant’s Mark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Furthermore, the disputed domain name is clearly targeting Complainant’s Mark and business since it incorporates the TED BRITT mark entirely, and references the geographical location where Complainant’s business is located and the third-party brand associated with certain products Complainant sells. Therefore, it is clear that Respondent was aware of Complainant’s Mark and Complainant’s business when Respondent registered the disputed domain name.
The disputed domain name was also used in bad faith. Complainant provided clear evidence that Respondent attempted to sell the disputed domain name for valuable consideration in excess of out-of-pocket costs directly related to the domain name, which is evidence of bad faith under Policy paragraph 4(b)(i).
Respondent has also engaged in a pattern of registering and using domain names that are variations of known third-party trademarks, which makes the existence of bad faith use and registration of the disputed domain name ever more likely. UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Id. Complainant cited at least two other UDRP proceedings where Respondent was found to have been engaging in bad faith conduct targeting trademarks. The Panel independently confirmed that Respondent has been the losing respondent in those UDRP proceedings. That one of the panels in the UDRP proceedings cited by Complainant explicitly noted that Respondent has been named in 11 other UDRP proceedings where Respondent was also the losing respondent makes it even more probable that Respondent has been engaging in a pattern of bad faith registration and use of domain names.
Finally, the disputed domain name resolved to a website displaying PPC links regarding products identical to those offered under Complainant’s Mark. This is clear evidence that Respondent is engaging in efforts to attract Internet users, for commercial gain, to Respondent’s website, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraphs 4(b) (i), (ii), and (iv) of the Policy.
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, <tedbrittfordchantilly.com>, be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: July 7, 2020