WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fraternal Enterprises Limited Partnership d/b/a Bredemann Ford v. DVLPMNT Marketing, Inc.
Case No. D2016-0442
1. The Parties
The Complainant is Fraternal Enterprises Limited Partnership d/b/a Bredemann Ford of Glenview, Illinois, United States of America (“United States”), represented by Saunders & Silverstein LLP, United States.
The Respondent is DVLPMNT Marketing, Inc. of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <bredemannford.com> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amendment to the Complaint on March 22, 2016.
The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on April 21, 2016. 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
The Complainant is a United States Ford car dealer which also provides automotive dealership services online on the website published at the domain name <bredemannfordauto.com>, registered on March 18, 2010 in the name of Ford Direct.
The disputed domain name <bredemannford.com> was originally created on August 11, 2004 and is currently pointed to a parking page with sponsored links.
5. Parties’ Contentions
The Complainant states that the disputed domain name was registered by the Respondent on August 29, 20131 and claims to have extensive common law rights in the mark BREDEMANN FORD that were established well before said date.
The Complainant asserts that the mark BREDEMANN FORD has achieved secondary meaning in the relevant marketplace since, at least as early as 1949, the Complainant or its predecessor in interest have used BREDEMANN or BREDEMANN-formative marks in connection with automotive dealership services.
The Complainant informs the Panel that the Bredemann family has been in the automotive dealership business in the Chicago, Illinois area for over 100 years and that, on July 1, 1990, the Complainant purchased a Ford dealership in Glenview, Illinois. Since then, the Complainant, trading as Bredemann Ford, has been ranked one of the top 25 Ford dealerships in Illinois annually in the Chicago region.
The Complainant claims to have been using the mark BREDEMANN FORD in commerce in connection with automotive dealership services since at least as early as July 1, 1990, and to have provided those services online on its website “www.bredemannfordauto.com” since at least as early as 2010.
The Complainant also indicates that, since 2000, it has spent at least USD 2,000,000 annually advertising BREDEMANN branded automotive dealership services, including BREDEMANN FORD branded automotive dealership services.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s mark BREDEMANN FORD and that the Respondent’s use of BREDEMANN FORD creates a likelihood of confusion between the disputed domain name and the Complainant’s trademark.
The Complainant highlights that the Respondent is pointing the disputed domain name to a website containing pay-per-click links to third party websites that compete with the Complainant and concludes that capitalizing on a well-known trademark in order to sell goods or services that directly compete with the trademark owner is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant further states that the Respondent cannot claim any legitimate right to the disputed domain name based on familiarity with either the general public or the relevant market since no evidence indicates that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name.
As to the bad faith requirement, the Complainant contends that the Respondent registered and used the disputed domain name to profit from the goodwill of the Complainant’s mark BREDEMANN FORD.
With specific reference to the bad faith at the time of registration, the Complainant asserts that the Respondent was not the original registrant of the disputed domain name, but registered the disputed domain name only in 2013. The Complainant also states that “registration” for the purpose of determining bad faith registration includes registration in the name of a new registrant.
Since the Complainant’s claimed common law rights in the BREDEMANN FORD mark were established at least as early as 1990, the Complainant also asserts that any claim by the Respondent that it was not aware of the Complainant’s mark when it first registered the disputed domain name is not credible and that, therefore, the Respondent’s registration in 2013 was undeniably in bad faith.
The Complainant states that the Respondent intended to disrupt the Complainant’s business and to divert Internet traffic away from the Complainant’s website, in order to attract users for commercial gain by creating a likelihood of confusion amongst the consuming public as to the source, sponsorship, affiliation, or endorsement of the website located at the disputed domain name.
As an additional circumstance of bad faith, the Complainant asserts that the Respondent is associated with approximately 38,901 other domain names and that, with this experience, there is no possibility that the registrant could have been unaware of the BREDEMANN FORD mark when it registered the disputed domain name.
The Complainant finally states that the Respondent has engaged in a pattern of registration and use of domain names incorporating trademarks or variants thereof of third parties to redirect Internet users to parking pages displaying sponsored links, and cites several prior UDRP decisions involving the same Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant does not rely on any registered trademark but claims to have acquired common law rights in BREDEMANN FORD based on the Complainant’s use of the mark in commerce in connection with automotive dealership services since at least as early as July 1, 1990.
According to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), in order to successfully assert common law rights, a complainant “must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark . . . . However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted”.
The Panel notes that BREDEMANN FORD is constituted of two terms, “Bredemann” and “Ford”, which have no meaning in English language and correspond, respectively, to the name of the Complainant’s founder and to a well-known trademark in the automotive sector.
According to the Complainant’s allegations, the Complainant and its predecessors in interest traded as BREDEMANN in connection automotive dealership services since at least 1949 and started trading as BREDEMANN FORD after the purchase of a Ford dealership in 1990.
It was not disclosed to the Panel whether the mentioned dealership agreement implied an authorization to use the trademark FORD as part of the Complainant’s trade name and marks, although the Panel verified that the Complainant is cited as an authorized Ford dealer on the website “www.ford.com” and the website operated by the Complainant is published at a domain name owned by a company of the Ford group2 .
In any event, the Panel finds that the Complainant has established common law rights on the trademark BREDEMANN based on the affidavit of the Complainant’s president attached to the Complaint – mentioning the Complainant’s USD 2,000,000 annual investments in advertising in connection with the BREDEMANN branded automotive dealership services since 2000 – and the Archive.org web captures of “www.bredemannfordauto.com” submitted by the Complainant as Annex E, showing that the Complainant used this mark on its website at least as of April 4, 2010, to promote its dealership services of Ford vehicles.
In light of the above, the Panel is satisfied that the Complainant has established trademark rights for the purpose of paragraph 4(a)(i) of the Policy and that the disputed domain name, encompassing it in its entirety, is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
With respect to this requirement, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation between the Respondent and the Complainant and that the Respondent has not obtained any authorization to use the Complainant’s trademark or the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
Furthermore, there is no evidence on record that the Respondent might have used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute, since the disputed domain name has been pointed to a mere parking page with sponsored links.
In view of the above and in the absence of a response, the Panel finds that the Complainant has proven the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has proven to the satisfaction of the Panel that it has been using the signs BREDEMANN and BREDEMANN FORD since several years before the Respondent’s registration of the disputed domain name.
In view of the distinctiveness of the Complainant’s mark, corresponding to the name of the Complainant’s founder, of the correspondence of the disputed domain name with the Complainant’s trade name and the sponsored links, which refer to the Complainant, published on the website at the disputed domain name, the Panel finds that the Respondent was very likely aware of the Complainant and its mark at the time of registration.
In light of the above-described use of the disputed domain name in connection with a pay-per-click landing page, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website and the sites linked thereto, according to paragraph 4(b)(iv) of the Policy.
The Panel also finds paragraph 4(b)(ii) of the Policy to be applicable in this case since the Respondent has engaged in a pattern of registering and using domain names incorporating trademarks or variants thereof of third parties to redirect Internet users to parking pages displaying sponsored links. See, inter alia, Miltronics USA, Inc. v. Domain Administrator, DVLPMNT Marketing, Inc. (DMI), WIPO Case No. D2015-1916; FirstMerit Corporation v. DVLPMNT MARKETING, INC., WIPO Case No. D2014-1995; and Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-0200.
Therefore, the Panel finds that the Complainant has proven that the Respondent has registered and is using the disputed domain name in bad faith.
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 <bredemannford.com> be transferred to the Complainant.
Date: May 5, 2016
1 While this is not clear from the annexed WhoIs search, it does show one “drop” since the initial registration supporting an inference that the Respondent acquired the disputed domain name after its initial creation.