WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FCA US LLC v. Host Master, Transure Enterprise Ltd
Case No. D2019-3101
1. The Parties
The Complainant is FCA US LLC, United States of America (“United States”), represented by Miller, Canfield, Paddock & Stone, PLC, United States.
The Respondent is Host Master, Transure Enterprise Ltd, United States.
2. The Domain Name and Registrar
The disputed domain name <myaccountchryslercapital.com> (the “Domain Name”) is registered with Above.com Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 20, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on January 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2020.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on February 12, 2020. 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 owns registrations in the United States for its mark CHRYSLER CAPITAL in Class 36 for automotive financing services issued on December 10, 2013, and for its mark CHRYSLER in Class 12 for automobiles and automobile parts issued on March 25, 1947. The Complainant also owns other registrations for its CHRYSLER mark, for figurative CHRYSLER marks, and for variations of its CHRYSLER mark for motor vehicles, motor vehicle parts, and related goods and services.
The Respondent, Transure Enterprise Ltd, an American company, owns the Domain Name. The Registrar’s WhoIs data shows that the Registrar registered the Domain Name on October 21, 2013, and updated the record on March 21, 2016.
5. Parties’ Contentions
A. Complainant
In addition to facts set forth in the Factual Background in Part 4 above, the Complainant contends the following.
Regarding the first element of a claim set forth in the Policy, paragraph 4(a)(i), the Complainant contends:
The Domain Name is confusingly similar to the Complainant’s registered marks, CHRYSLER and CHRYSLER CAPITAL, in which the Complainant has rights, because the Domain Name has as components the name and marks CHRYSLER and CHRYSLER CAPITAL, under which the Complainant does business and for which it has registered trademarks. Additionally, the Domain Name wholly incorporates the trademark CHRYSLER CAPITAL and merely adds generic terms relating to financing services, i.e., “my account.” The Domain Name is also confusingly similar to the CHRYSLER and CHRYSLER CAPITAL marks because it is phonetically similar, further heightening the likelihood of confusion.
Regarding the second element set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:
The Respondent does not have any rights or legitimate interests with respect to the Domain Name. The Complainant first used its CHRYSLER mark as early as 1924 and registered it in 1953 1 , long before the registration of the Domain Name. The Complainant first used its CHRYSLER CAPITAL mark as early as May 2013 and registered it on December 10, 2013. The Domain Name was registered on October 21, 2013.
The Complainant has never assigned, licensed, or granted permission to the Respondent to use its CHRYSLER and CHRYSLER CAPITAL trademarks or any other trademark that incorporates the CHRYSLER and CHRYSLER CAPITAL marks. The Respondent has not acquired any trademark, service mark, or common law rights in the Domain Name. The Respondent as a business is not commonly known, nor does it hold itself out as “myaccountchryslercapital.com”.
The Respondent uses the web site associated with the Domain Name as a portal to house automobile financing services related links, some of which ultimately link to web sites of the Complainant’s competitors. Diverting consumers who are looking for the Complainant’s services on the Internet to competing financial and banking related sites for commercial gain is not a legitimate, bona fide use and does not confer legitimate interests in the domain name.
No evidence exists of the Respondent’s use 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. The Respondent, with intent for commercial gain, to misleadingly divert consumers or to tarnish the trademarks CHRYSLER and CHRYSLER CAPITAL, is not making a legitimate noncommercial or fair use of the domain name.
Regarding the third element set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:
The Respondent is using the Domain Name in bad faith for the following reasons. The Respondent’s registration of a domain name incorporating the Complainant’s trademarks and adding generic terms relating to financing services shows that the Respondent was aware of the Complainant’s business and reputation at the time of registration and that it registered the Domain Name with the intent to mislead consumers for the Respondent’s commercial gain. The Complainant sent a cease and desist letter to the Respondent and the Respondent failed to respond.
The Respondent’s web site associated with the Domain Name links to web sites that feature competing automobile financing services. Upon information and belief, the Respondent receives click-through fees for featuring such links on the Respondent’s web site. Consumers who access the Respondent’s web site by using the Domain Name may become confused as to the Complainant’s affiliation or sponsorship of the web sites reached by the links on the Respondent’s web site, because the Domain Name is confusingly similar to the Complainant’s CHRYSLER and CHRYSLER CAPITAL marks. Such competing use constitutes evidence of bad faith registration and use pursuant to the Policy.
The Respondent’s inclusion of services competing with the Complainant’s services show that the Respondent had actual knowledge of the Complainant’s rights when it registered the Domain Name. The Panel can infer from the Respondent’s inclusion of links to web sites offering competing services that the Respondent had knowledge of the Complainant’s rights and should therefore presume bad faith.
Because the Respondent’s website associated with the Domain Name is not used in connection with a bona fide offering of goods or services, the Complainant submits that the Panel should infer that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
The confusing similarity of the Domain Name to the Complainant’s CHRYSLER and CHRYSLER CAPITAL marks will cause consumers mistakenly to believe that the ”www.myaccountchryslercapital.com” web site is affiliated with or owned by the Complainant. Accordingly, the Respondent has improperly used the Domain Name to attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a service offered on the Respondent’s web site.
B. Respondent
The Respondent did not submit a response to the Complaint.
6. Discussion and Findings
A. The Effect of the Respondent’s Default
The Respondent has not responded to the Complaint. If a respondent does not submit a response, the panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).
Because the Complainant has the burden of proof, Policy, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the 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. Policy, paragraph 4(a).
However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; Facebook Inc. v. te5gfh gtfghbfh, WIPO Case No. D2018-2433.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3; PVH CORP. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2018-1013.
B. Elements of a Claim
The Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; (ii) the 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. Policy, paragraph 4(a).
(i) Identical or Confusingly Similar
To prove the first element, the Complainant must prove that (1) it has rights in a trademark and (2) the Domain Names are identical or confusingly similar to this trademark.
The Panel finds that the Complainant’s trademark registrations in the United States establish the Complainant’s trademark rights. WIPO Overview 3.0, section 1.2.1.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s CHRYSLER CAPITAL trademark and to its CHRYSLER trademark. The Domain Name incorporates the entire CHRYSLER trademark and the entire CHRYSLER CAPITAL trademark, and these trademarks are easily recognizable within the Domain Name. WIPO Overview 3.0, section 1.7.
The inclusion of the generic phrase “my account” in the Domain Name does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.
Lastly, panels disregard the generic Top-Level Domain (“gTLD”) “.com” in determining confusing similarity. WIPO Overview 3.0, section 1.11.
Accordingly, the Panel concludes that the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights.
(ii) Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, its 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 finds, on the basis of the Complainant’s trademark registrations and the date of the Domain Name registration, that the Complainant’s trademark rights precede the registration of the Domain Name.
The Complainant has alleged that it has not authorized the Respondent to use its CHRYSLER CAPITAL or its CHRYSLER trademarks. Because the Respondent has not contested these allegations and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts these allegations as proven for the purposes of the Policy. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.
Additionally, the Respondent has not claimed that (1) it is using, or has made any preparations to use, the Domain Name in connection with a bona fide offering of goods or services; or (2) it is commonly known by the Domain Name; or (3) it is making a noncommercial or fair use of the Domain Name. For the reasons set forth in this paragraph and the preceding paragraph, the Panel finds that the Complainant has shown, prima facie, the second element––that the Respondent lacks rights or legitimate interests in the Domain Name.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
The Respondent here has not submitted any evidence to rebut the prima facie showing, having failed to respond to the Complaint.
If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media WIPO Case No. D2019-0245.
Accordingly, the Panel concludes that the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name.
(iii) Registered and Used in Bad Faith
The Policy provides that the following circumstances are “evidence of the registration and use of a domain name in bad faith: […] (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. Policy, paragraph 4(b).
Because the scenarios enumerated in paragraph 4(b) of the Policy are without limitation, panels have applied the concept of a “competitor” beyond an ordinary business competitor, to include “a person who acts in opposition to another” for some means of commercial gain. WIPO Overview 3.0, section 3.1.3.
The Complainant has alleged that the Respondent was aware of its trademarks when it registered the Domain Name, because of its well-known character and reputation. The Respondent has not denied this allegation, and, therefore, the Panel accepts this allegation.
Additionally, previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark can create a presumption of bad faith registration. WIPO Overview 3.0, section 3.1.4; LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, supra; Facebook Inc. v. te5gfh gtfghbfh, supra.
The selection of the Domain Name, therefore, demands an explanation. Panels have found the Respondent’s lack of an explanation, coupled with an absence of rights or legitimate interests, to be a factor tending to show bad faith. WIPO Overview 3.0, section 3.2.1. Additionally, the implausibility of any good faith use to which the Domain Name might be put supports a finding of bad faith registration and use. Cf. WIPO Overview 3.0, section 3.3. Because the Respondent has not offered an explanation and the Panel cannot conceive of one, the Panel finds that the targeting of the well-known CHRYSLER trademark demonstrates bad faith use and that this bad faith existed at the time of the registration of the Domain Name. WIPO Overview 3.0, section 3.2.1. These circumstances compel the Panel to find that the Respondent intentionally chose the Domain Name to take unfair advantage of the Complainant’s trademark and that its use of the domain name has disrupted the business of the Complainant in violation of the Policy, paragraph 4(b)(iii). WIPO Overview 3.0, sections 3.1,4, 3.2, and 3.5.
Additionally, the Complainant has alleged, and the Respondent has not denied, that the Respondent is using the Domain Name to exploit confusion with the Complainant’s trademarks and attract Internet users to click on third-party commercial links to web sites competing with the Complainant, solely for commercial gain, demonstrating bad faith. The Complainant is correct that panels under the UDRP have found that using a domain name to host a parking page with pay-per-click links is not a bona fide offering where the links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. Accordingly, the Panel finds that the Respondent registered and used the Domain Name intentionally to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark, in violation of the Policy, paragraph 4(b)(iv). WIPO Overview 3.0, sections 3.1 and 3.1.4.
Lastly, although the Complainant has not alleged a pattern of abuse, the Respondent has been named in many other cases in which it targeted well-known marks in a domain name, which the panels ordered transferred to the trademark owner. A pattern of targeting, which may support a conclusion of bad faith on its own, at a minimum corroborates and supports the findings of bad faith registration and use in this case. WIPO Overview 3.0, sections 3.1.1, 3.2.1, and 3.2.2.
Accordingly, the Panel concludes that the Complainant has proven the third element, namely, that the Respondent registered and has used the Domain Name in bad faith.
7. Decision
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, <myaccountchryslercapital.com> be transferred to the Complainant.
A. Justin Ourso III
Sole Panelist
Date: February 25, 2020
1 Although its first trademark registration has expired, the records of the United State Trademark Office show that Chrysler’s first registration issued in 1924.