WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ourisman Dodge, Inc. v. Ourisman "Okie doke" Dodge dot com and Ourificeman Dodge dot com
Case No. D2001-0108
1. The Parties
The Complainant is: Ourisman Dodge, Inc., a corporation incorporated in the state of Virginia with its principal place of business at 5900 Richmond Highway, Alexandria, Virginia 22303, U.S.A. The Complainant is represented by Bingham B. Leverich, Esq. and Marie A. Lavalleye, Esq. of Covington & Burling, 1201 Pennsylvania Avenue, N.W., Washington, D.C. 20004-2401, U.S.A.
The Respondents are Ourisman "Okie Doke" Dodge dot com, an entity located at P.O. Box 1209, Cherokee, North Carolina 28719, U.S.A.; and Ourificeman Dodge dot com located at the same address.
2. The Domain Names and Registrar
The disputed domain names are <ourismandodge.com> registered by Ourisman "Okie doke" Dodge dot com; and <ourismandodge.org> and <ourismandodge.net> registered by Ourificeman Dodge dot com.
The registrar for the three (3) domain names in dispute is Network Solutions , Inc. (NSI) of 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy Domain Name Dispute Resolution Policy(the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on January 22, 2001. On January 26, 2001 the Center requested that the registrar NSI check and report back on the registrants for the domain names <ourismandodge.com>, <ourismandodge.org> and <ourismandodge.net>. On
February 1, 2001, NSI reported to the Center that the registrants were the Respondents in this proceeding.
On February 1, 2001 the Center notified the Complainant of a deficiency in its Complaint regarding "Mutual Jurisdiction" per the Rules, 3(b)(xiii). The Complainant submitted a satisfactory amendment on February 6, 2001.
On February 7, 2001 the Center forwarded a copy of the Complaint to the Respondents by registered mail and by e-mail and this proceeding officially began. The Respondents did not file a response and were declared in default on March 1, 2001 (Rule 5).
The Administrative Panel submitted a Declaration of Impartiality and Independence on March 7, 2001, and the Center proceeded to appoint the Panel on March 9, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by March 22, 2001.
4. Factual Background
The Complainant is a corporation that for some twenty (20) years has been selling motor vehicles and related services in the Virginia, Maryland and the District of Columbia areas of the U.S.A. The Respondents are both entities whose administrative contact person,
Mr. Gregory I. Perry, apparently attempted to buy a motor vehicle from the Complainant around June, 1999. Shortly thereafter, the Respondents registered the three (3) disputed domain names (the Complaint Annex A). Judging from the sharp criticism of Complainant that the Respondents have voiced on their website, Mr. Perry was not happy with the Complainant's services. In fact, on the website connected with the disputed domain names, the Respondents actively sought to dissuade the public from doing business with the Complainant.
The Complainant has brought this proceeding in order to obtain transfer of the disputed domain names.
5. The Parties' Contentions
- The disputed domain names are identical to its "Ourisman Dodge" Service Mark and Trade Name.
- The Respondents have no rights or legitimate interests in the disputed domain
- Respondents registered and are using the disputed domain names in bad faith.
The Respondents did not file a Response and are in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant is claiming rights in the disputed domain names through its use of the name Ourisman Dodge for its business of selling automobiles and related services since its incorporation in the Commonwealth of Virginia, U.S.A., on January 17, 1978 (Complaint Annex C). The Complainant argues that it has acquired good will and rights in the name through its continued use of the name to transact its business since that time. The Panel agrees with this analysis since, in the U.S.A., use alone can establish rights in a mark.
The disputed domain names, <ourismandodge.com>, <ourismandodge.org>, and <ourismandodge.net> are identical to the Complainant's service mark "OURISMAN DODGE" since the top level designations such as .com and spaces are usually irrelevant for domain name mark analysis (Busy Body, Inc. v. Fitness Outlet Inc., ICANN/WIPO Case No.D2000-0127, April 22, 2000; and InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, ICANN/ WIPO Case No. D2000-0069, April 3, 2000). The Panel finds the Complainant has satisfied this part of the Policy requirements for name transfer.
Legitimate Rights or Interests
The Complainant denies that the Respondent has ever had any right to use the service mark in the disputed domain names. However, the Complainant does admit that the Respondent has used the disputed domain names in order to criticize the Complainant which, under some circumstances, might amount to fair use.
The Policy allows for fair use of marks as domain names at paragraph 4 (c)(iii):
"You are 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."
The Respondents' use of Complainant's mark fails to qualify as fair use because it is identical to the Complainant's mark, without in any way signalling that it is a fair use protest or criticism domain name (Monty and Pat Roberts, Inc. v. J. Bartell, ICANN/WIPO Case No. D2000-0300, June 13, 2000. See also the United States appellate case, Planned Parenthood Federation of America, Inc. v. Bucci, 152 F.3d 920 (2d Cir. 1998). Since the Respondents fail to qualify for fair use of the Complainant's mark, the Panel finds the Respondents do not have legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
In reading over the various materials that the Respondents have featured at the website of the disputed domain names, the Panel finds that one of the Respondents' goals was to criticize the Complainant for what the Respondents saw as inadequate service when the Respondents attempted to purchase a vehicle from the Complainant. However, the Panel finds this was not the Respondents' main objective, and their further objectives were viz., to vindicate themselves by disrupting the Complainant's business and by preventing the Complainant from using its own name on the internet, are both proscribed by the Policy.
The Respondents at one point used the Complainant's contact information, including its mailing address, on the website to try to dupe the public into believing the Respondents were the Complainants at the disputed domain name websites (Complaint Annex K). As the Panel finds this was a primary objective of the Respondents, this violates section 4(b)(iii) of the Policy.
Furthermore, the Panel views the Respondents' three (3) registrations of the Complainant's service mark as an attempt to prevent the Complainant from using the same registrations based on Complainant's service mark. The Panel believes the Respondent reasoned these multiple registrations would harm the Complainant and in this way the Respondents would feel vindicated. In the Panel's view, three (3) such registrations do constitute a "pattern" per the Policy paragraph 4(b)(ii). (Smokey Mountain Knife Works v. Deon Carpenter, ICANN/eResolution Case Nos. AF-230a and AF-2306b, July 3, 2000).
Based on the preceding discussion, the Panel has found that the Respondents' domain name registrations are identical to the Complainant's service mark. The Respondents do not have legitimate rights or interests in the names and the Respondents failed to establish that they were making fair use of the disputed names. Finally, the Panel finds the Respondents registered and were using the disputed domain names in bad faith.
Therefore, per the Policy 4(i) and Rule 15, the Panel orders that the registrar NSI transfer the disputed domain name <ourismandodge.com> from the Respondent, Ourisman "Okie doke" Dodge dot com to the Complainant, Ourisman Dodge, Inc. The Panel also orders that the registrar NSI transfer the disputed domain names <ourismandodge.org> and <ourismandodge.net> from the Respondent, Ourificeman Dodge dot com, to the Complainant, Ourisman Dodge, Inc.
Dennis A. Foster
Dated: March 22, 2001