WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Grass Automotive, Inc. dba Blue Grass Motorsport v. Domain Hostmaster, Customer ID: 03313550483336 / Lisa Katz, Domain Protection LLC
Case No. D2015-1511
1. The Parties
Complainant is Blue Grass Automotive, Inc. dba Blue Grass Motorsport of Louisville, Kentucky, United States of America, represented by Frost Brown Todd LLC, United States of America.
Respondent is Domain Hostmaster, Customer ID: 03313550483336 of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bluegrassmotorsport.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2015. On August 25, 2015, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 2015, the Registrar transmitted by e-mail 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 e-mail communication to Complainant on September 2, 2015 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 September 8, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 19, 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
Complainant is an automobile dealership in Louisville, Kentucky. Complainant and its predecessor have been selling and servicing luxury sport vehicles (Porsche, Jaguar, Land Rover, etc.) at its Blue Grass Motorsport dealership since the 1990s. Complainant advertises and promotes its Blue Grass Motorsport dealership in printed advertisements and sponsored events, and through its website located at “www.bluegrassauto.com”. Complainant also holds a registered trademark with the Commonwealth of Kentucky Secretary of State’s Office for the mark BLUE GRASS MOTORSPORT. This mark was registered in June 2008, and confirms a first use of the mark in commerce in December 1997.
The Domain Name was initially registered in February 2005 by Texas International Property Associates, an entity that has been held in bad faith in more than 100 decisions under the Policy. In December 2010, the Domain Name was acquired by Respondent, who has been held in bad faith in several decisions under the Policy, including recent (2015) decisions involving the domain names <michelin2b.com>, <softitel.com>, and <valerorefinery.com>.
The Domain Name resolves to a website with a series of sponsored links, such as “Used Cars Louisville ky”, “Louisville Car dealerships” and “Classic Auto Dealers”. It is alleged, and not disputed or otherwise found to be implausible, that Respondent generates pay-per-click revenue from these sponsored links. It is also alleged, and neither disputed nor found implausible, that these links direct the Internet user to websites operated by some of Complainant’s direct competitors.
5. Parties’ Contentions
Complainant contends that it is entitled to an order transferring the Domain Name under the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds rights, through registration and use, in the mark BLUE GRASS MOTOR SPORT. Further, the Panel concludes that the Domain Name is identical to that mark.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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.
Complainant has not authorized Respondent to use its BLUE GRASS MOTOR SPORT mark in a domain name. Respondent has not come forward with any assertion, much less evidence, of any bona fide basis for having registered the Domain Name, and the Panel on this record can discern no such legitimate interest.
The Panel concludes that Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of Policy, paragraph 4(b)(ii). The Panel finds it more likely than not that Respondent had Complainant’s BLUE GRASS MOTOR SPORT mark in mind when registering the Domain Name. The fact that the Domain Name resolves to a website with hyperlinks pointing to the websites of Complainant’s competitors, and the fact that Respondent has registered several other domain names incorporating or resembling distinctive trademarks, supports this finding. As noted above, Respondent has been found to be in bad faith in several prior decisions under the Policy, and its conduct in the present case reinforces the impression that it is a serial cybersquatter.
The Panel also finds Respondent in bad faith because the Domain Name resolves to a website where, on a balance of probabilities on this undisputed record, Respondent derives pay-per-click revenues. Such conduct violates Policy, paragraph 4(b)(iv).
The Panel concludes that Complainant has established paragraph 4(a)(iii) 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 Domain Name <bluegrassmotorsport.com> be transferred to Complainant.
Robert A. Badgley
Date: October 19, 2015