WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Voss Auto Network v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2018-1126
1. The Parties
The Complainant is Voss Auto Network of Dayton, Ohio, United States of America (“United States”), represented by Roetzel & Andress LPA, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <vosschevrolet.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2018, 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 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 the Respondent of the Complaint, and the proceedings commenced on May 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on June 28, 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
Since the 1970s, the Complainant has traded as a motor dealer in the state of Ohio, under the name “Voss” as well as related trading names including “Voss Auto”, “Voss Auto Network”, “Voss Chevrolet”, and “Voss Chevy”.
The Complainant has owned the domain names <vossauto.com> and <vosschevy.com> since 1999 and 2000, respectively.
The Complainant owns an Ohio State trade mark registration for VOSS, document no. 201734200998, in class 35, with an effective date of December 8, 2017, and claiming first use in Ohio since December 31, 1972.
General Motors, LLC (“GM”) has owned registered trade marks for the term CHEVROLET since the at least the 1920s (see e.g., United States registration no. 0216070, registered August 3, 1926). The Complainant has express permission from GM to use this term as part of the Complainant’s trading names.
The disputed domain name was registered on November 27, 2002.
As of May 18, 2018, the disputed domain name redirected to a website at <cheoletautodaler.com>, which comprised a list of Chevrolet-related sponsored links, including to competitors of the Complainant.
The Complainant sent a cease-and-desist letter to the Respondent on December 8, 2017. No response was received.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant has acquired significant and substantial common law rights in the state of Ohio in the name “Voss” and its related trading names.
The disputed domain name is confusingly similar to the Complainant’s trade mark because it incorporates the Complainant’s entire “Voss” trade mark. The addition of the term “Chevrolet” is insufficient to differentiate the disputed domain name from the Complainant’s trade mark as it suggests an affiliation with the Complainant, who is an authorised Chevrolet dealer. Also, the term “Chevrolet” merely describes the products which the Complainant sells. In fact, the use of the term “Chevrolet” exacerbates the likelihood of confusion.
The disputed domain name is substantially identical and/or confusingly similar, to the Complainant’s numerous business names that include “Voss”, including phonetically, visually and as a matter of overall commercial impression.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not used the disputed domain name for a bona fide offering of goods or services. Instead, it has diverted users searching for the Complainant’s services. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name, nor is it commonly known by the disputed domain name.
The Complainant never authorised the Respondent to use its trade marks.
The disputed domain name was registered and used in bad faith.
The Respondent has intentionally attempted to redirect Internet users seeking the Complainant’s services to websites displaying competitor services.
The fact that the Respondent has continued to use the disputed domain name following the Complainant’s cease-and-desist letter is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant relies on an Ohio state registered trade mark. However, section 1.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) observes that automatic/unexamined registered trade marks such as state registrations are not accorded the same deference as United States federal registrations and may not on their own satisfy the UDRP’s “rights in a mark” standing test.
The Complainant has provided little evidence in support of its claim to common law rights.
However, the record does include a website screenshot indicating that the Complainant is indeed trading under the distinctive name “Voss Chevrolet” as well as a photograph of the Complainant’s retail premises branded with both “Voss” and “Chevrolet”. The Complainant is plainly trading as an official Chevrolet dealer and the “first use” date shown on the Ohio State registration indicates that it has been using the name “Voss” since the 1970s. Furthermore, the Respondent has not appeared in this proceeding to contest the Complainant’s allegations.
In the above circumstances, the Panel concludes that on balance the Complainant has established common law rights in the mark “VOSS Chevrolet”.
Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive trade mark in mind.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with links to the Complainant’s competitors, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
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 <vosschevrolet.com> be transferred to the Complainant.
Date: July 12, 2018