WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frank Kent Motor Co. v. Mike Hamud
Case No. D2018-0180
1. The Parties
Complainant is Frank Kent Motor Co. of Fort Worth, Texas, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
Respondent is Mike Hamud of Grand Prairie, Texas, United States, self-represented.
2. The Domain Names and Registrar
The disputed domain names <frankkentacura.com>, <frankkentchevy.com>, <frankkentchrysler.com>, <frankkentjeep.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2018. On January 30, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On January 31, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2018. The Center received two informal e-mail communications from Respondent on February 6, 2018, and February 8, 2018. Respondent did not submit any formal Response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on February 27, 2018. The Center received three additional informal e-mail communications from Respondent on February 28, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 9, 2018. 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, owned by twin siblings Corrie Watson and Will Churchill, owns and operates several automobile dealerships in Texas. Since 1935, Complainant has used the mark FRANK KENT to identify and distinguish its auto dealerships, which include Frank Kent Cadillac and Frank Kent Hyundai. The mark FRANK KENT has been registered with the United States Patent and Trademark Office since March 5, 2002, Registration No. 2544790.
Complainant uses the domain name <frankkent.com> in connection with its business.
Complainant was recently awarded a Jeep dealership by Chrysler, and will be opening the dealership soon.
Respondent was previously employed as a sales manager at a Texas automobile dealership owned by the father of Complainant’s owners. It is alleged that Respondent, through that position, learned of the impending opening of the Frank Kent Jeep dealership.
The Domain Names were registered on May 12, 2017. The Domain Names resolve to an inactive website bearing the message “website coming soon.”
On December 26, 2017, Complainant’s counsel sent Respondent a cease-and-desist letter. On January 7, 2018, Respondent replied by e-mail (verbatim; errors included): “I just got back from my holiday trip. I purchased them from go daddy long time ago. You can make me an offer on the domains. I legally own them.” On January 12, 2018, Respondent followed up with another e-mail: “U still want to buy the domains?” That day, Complainant’s counsel responded by e-mail, stating that Complainant had decided to pursue legal action, but would refrain if Respondent transferred the Domain Names immediately. There was no further communication between the Parties before the filing of this Complaint.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of each of the Domain Names.
Respondent did not reply to Complainant’s substantive contentions. In two e-mails to the Center, Respondent merely stated that he had tried to ask the Registrar to release the Domain Names, but they are locked because of this proceeding. In three additional e-mails to the Center, Respondent stated that it had tried to release the Domain Names to the Complainant, but could not due to registrar lock.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(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
The Panel concludes that Complainant has rights in the mark FRANK KENT through longstanding registration and use. Each of the Domain Names is confusingly similar to this mark. In each instance, the FRANK KENT mark is incorporated in its entirety, with the addition of the mark of an automobile make. As Complainant notes, there is a well-established convention in the United States of America whereby an auto manufacturer’s mark is preceded by the mark of the auto dealer’s name.1
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the 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.
The Panel concludes that Respondent clearly has no rights or legitimate interests in respect of any of the Domain Names. Respondent has not come forward to articulate or defend his motives in registering the Domain Names. Respondent did not even deny the assertion in Complainant’s cease-and-desist letter that, as an employee of an auto dealership in the same geographic area as Complainant, he was aware of the FRANK KENT trademark. When confronted with the cease-and-desist letter, Respondent asked Complainant to make him an offer to buy the Domain Names.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the 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.
For essentially the same reasons as were discussed in the “rights or legitimate interests” section, the Panel concludes that Respondent has registered and used the Domain Names in bad faith. There is no doubt from this record that Respondent had Complainant’s longstanding (and locally well-known) FRANK KENT mark in mind when registering the Domain Names. Respondent immediately sought an offer to sell the Domain Names when Complainant sent a cease-and-desist letter. Under the circumstances here, when it is clear that Respondent was targeting an established mark and solicited an offer to sell, it is fair to infer that Respondent sought an offer in excess of his documented out-of-pocket costs directly related to the Domain Names. This is bad faith under Policy paragraph 4(b)(i).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <frankkentacura.com>, <frankkentchevy.com>, <frankkentchrysler.com>, and <frankkentjeep.com> be transferred to Complainant.
Robert A. Badgley
Date: March 23, 2018
1 Whether any of the auto manufacturers whose marks are included in the Domain Names at issue in this proceeding have any basis to object to Complainant’s ownership or use of these Domain Names is a question beyond the scope of this proceeding. At issue in this proceeding is only the question of Complainant’s rights vis-à-vis Respondent’s rights.