WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dutch Miller Chevrolet, Inc. v. Perfect Privacy, LLC / Brendhan Hight, Marchex Sales, LLC
Case No. D2015-0786
1. The Parties
The Complainant is Dutch Miller Chevrolet, Inc. of Huntington, West Virginia, United States of America (“United States”), represented by Jenkins Fenstermaker, PLLC, United States.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Brendhan Hight, Marchex Sales, LLC of Las Vegas, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <dutchmiller.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2015. On May 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 11, 2015.
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 May 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2015.
The Center appointed William F Hamilton as the sole panelist in this matter on June 5, 2015. 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
Since 1961 the Complainant has owned and operated a number of automobile dealerships in West Virginia, United States, utilizing various names under the DUTCH MILLER trademark such as “Dutch Miller Chevrolet”, “Dutch Miller Hyundai”, “Dutch Miller Dodge” and “Dutch Miller Kia”. The Complaint has registered and uses numerous domain names that incorporate “Dutch Miller”, including but not limited to <dutchmillerauto.com> and <dutchmillerdodge.com>, to promote the Complainant’s automobile sales and services businesses. The Complainant extensively promotes the Dutch Miller branded automobile dealerships in a wide variety of media including print and television.
The Respondent registered the disputed domain name on June 18, 2004. The disputed domain name resolves to a “click-through” website featuring both a search capability and links to various new and used automobile sales and financing businesses.
5. Parties’ Contentions
The Complainant asserts that the words “Dutch Miller” in the disputed domain name are identical to the Complainant’s service mark, that the Respondent has no legitimate business that operates under the name “Dutch Miller,” and that the Respondent registered and is using the disputed domain name to confuse, attract, and divert persons looking for Dutch Miller automobile dealerships to competitive automobile sellers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established common law trademark rights in DUTCH MILLER through its extensive use and promotion of the mark for over 50 years. The amended Complaint and its annexes demonstrate that DUTCH MILLER has attained a “secondary meaning” such that the DUTCH MILLER mark signifies to the relevant market the Complainant’s automobile sales and service businesses. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7. The disputed domain name is identical to the Complainant’s DUTCH MILLER unregistered mark, with the exception of the inconsequential space between the two words. The Panel thus finds that the disputed domain name is identical or confusingly similar to the Complainant’s DUTCH MILLER mark.
B. Rights or Legitimate Interests
The Respondent lacks any rights or legitimate interests in the disputed domain name or the DUTCH MILLER mark. The Complainant has not authorized the Respondent to register the disputed domain name, nor has the Complainant authorized the Respondent to use the DUTCH MILLER mark. The disputed domain name resolves to a commercial website that demonstrates that the Respondent does not operate a separate independent Dutch Miller business, but is simply using the DUTCH MILLER mark as part of a domain name. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, which the Respondent has not rebutted. See WIPO Overview 2.0, paragraph 2.1. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. The Respondent was clearly aware of the Complainant’s business when registering the disputed domain name as some of the Complainant’s businesses appear as sponsored links on the Respondent’s website. An Internet search of the expression “Dutch Miller” at the time the disputed domain was registered would have quickly revealed the Complainant’s businesses. There is no conceivable reason on this record for the Respondent to have registered and to continue to use the disputed domain name except to trade on the Complainant’s brand, goodwill and reputation.
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 <dutchmiller.com> be transferred to the Complainant.
William F Hamilton
Date: June 8, 2015