WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Win Kelly Chevrolet L.L.C. v. PrivacyProtect.org / Tech Domain Services Private Limited

Case No. D2013-2018

1. The Parties

The Complainant is Win Kelly Chevrolet L.L.C. of Clarksville, Maryland, United States of America, represented by The Law Office of Oliver Edwards LLC, United States of America.

The Respondent is PrivacyProtect.org of Queensland, Australia / Tech Domain Services Private Limited of Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <winnkelly.com> (the “Domain Name”), is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2013, the Registrar 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. The Center sent an email communication to the Complainant on November 28, 2013 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 December 3, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 9, 2014. 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.

The filing of the amended Complaint stemmed from the Registrar’s disclosure to the Center that Tech Domain Services Private Limited is the underlying registrant behind the PrivacyProtect.org privacy service. The latter is clearly an agent of the former insofar as the Domain Name registration is concerned and for the purposes of this Decision the Panel treats the named Respondents as one.

4. Factual Background

The unchallenged evidence of the Complainant is that it has been trading in the automobile business in Maryland, United States of America under various names incorporating the name “Win Kelly” since its incorporation in 1994. That evidence is supported by Maryland State documents showing that the Complainant was trading under “Win Kelly” names at least as far back as July 1998.

The Complainant operates a website connected to its domain name <winkelly.com>, which it registered on November 1, 1997.

The Complainant is the proprietor of Maryland State Registration No. 1998/00541 for a device mark incorporating inter alia the name “Win Kelly” for the manufacture and sale of vehicles. The trade mark was applied for on July 30, 1998 and the registration was granted the same day. The Complainant also relies on common law rights in WIN KELLY for its claimed continuous and extensive use since 1994 in connection with automobile sales and services.

The Domain Name was created on January 19, 2007 and is connected to a pay-per-click parking page featuring advertising links for the sale of automobiles.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name, absent the generic top-level domain (gTLD) identifier “.com”, is identical to the name “Win Kelly” save for the absence of a space and the addition of an “n”. It is also identical to the Complainant’s domain name <winkelly.com>, save for the addition of the “n”.

Is WIN KELLY a trade mark in which the Complainant has rights? The Complainant is the proprietor of a Maryland State trade mark registration of a device featuring the “Win Kelly” name, but it is to be treated with caution for two reasons: first, it is a complex device mark, not a simple word mark and, secondly, UDRP panels tend to give little weight to registered trade marks, which have not undergone an examination process. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) The Maryland State registration was granted on the very same day that it was applied for. Any examination can only have been sparse in the extreme.

While the Complainant’s evidence as to the nature and extent of its business over the years is not as full as one would have wished, the Panel is nonetheless satisfied on the balance of probabilities from the evidence in the case file (including evidence of advertising) that the Complainant will have acquired unregistered, common law trade mark rights in its name, “Win Kelly” for the purpose of the Policy. Moreover, the Complainant’s evidence is unchallenged.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Panel accepts the Complainant’s unchallenged contention that “Win Kelly” is an unusually distinctive name and accepts the Complainant’s assertion that it is unaware of any other use of that name or anything like it in the automobile business.

The Complainant contends that the adoption of a close variant of that name by the Respondent and the connection of it to a pay-per-click parking page featuring advertising links relating to the sale of automobiles can only have been with a view to exploiting the Complainant’s name for commercial gain.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer.

In the absence of an answer from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

In the absence of any explanation for having adopted a name so close to the substantive element of the Complainant’s name and then using it to host advertising links associated with the Complainant’s business (including links to competitors of the Complainant), the Panel finds that the Respondent’s intention from the outset, as contended for by the Complainant, was to use the Domain Name to attract Internet users to the Respondent’s website on the back of the Complainant’s name and with a view to commercial gain.

The Panel finds that this is a clear case of typosquatting and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

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 Domain Name <winnkelly.com> be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 13, 2014