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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caledonia Motor Group Limited v. Amizon
Case No. D2001-0860
1. The Parties
1.1 The Complainant is the Caledonia Motor Group, a UK Company, of Bishops Weald House, Albion Way, Horshaw, East Sussex, RH112 1AH, United Kingdom.
1.2 The Respondent is Amizon, organizational status unknown, but with an address at 42 Starr Avenue, Holgate, New Jersey, 08008-1132, United States of America.
2. The Domain Name and Registrar
2.1 The domain name upon which this complaint is based is <caledonia-motors.com> (the "Domain Name").
2.2 The registrar of the domain name as at the date of the Complaint is Tucows, Inc., based in Canada ("Tucows").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on July 6, 2001 and in hard copy on July 8, 2001. The fees prescribed under the Supplemental Rules were paid by the Complainant via bank transfer.
3.3 The Center sent to the Complainant and Acknowledgment of Receipt of Complaint by email on July 11, 2001.
3.4 The Center sent a Request for Registrar Verification to Tucows on July 12, 2001, by email. Tucows responded to the Center’s request by email on July 12, 2001, verifying (1) that Tucows was the Registrar for the Domain Name, (2) that the Respondent was the current registrant of the Domain Name, and (3) that the Domain Name had a ‘hold’ status, to ensure that no changes occur to the ownership or the Registrar for the duration of the dispute. The Panel notes that the response from Tucows also confirmed that Tucows had received a copy of the Complaint from the Complainant, as required by Supplemental Rules paragraph 4(b).
3.5 Compliance with formal requirements having been satisfied on July 13, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding on July 13, 2001, via email to <firstname.lastname@example.org>, and to the email address of the Administrative Contact for the Domain Name as advised by Tucows in its Verification Response (<email@example.com>) as well as to email address for the Technical and Billing Contacts for the Domain Name (<firstname.lastname@example.org>). According to the Center’s "Communications" record, hard copy documents were also dispatched to the Respondent in Holgate, USA and to the Technical Contact shown in Tucow’s Whois database, namely, WebFusion, Portland Street, Beeson, Nottingham, Nottinghamshire, NG9 2LP, United Kingdom, on the same day by FedEx courier (however the Panel notes that it has received from the Center FedEx documentation for the delivery to the United States address only). The Panel has been furnished with a documentary record of the email transmissions, which show that the email attaching the Notification of Complaint and Commencement of Administrative Proceeding was "transferred" to all three email addresses listed above on July 13, 2001, and delivered to the domain of all three of those email addresses. The Panel also notes that no facsimile numbers were available for the Respondent from the Registrar’s Whois database, or from the Registrar itself. The Panel is satisfied, on the basis of the evidence referred to in this paragraph 3.5, that the Center has satisfied the requirements of paragraph 2(a) of the Rules. In accordance with paragraph 2(f)(iii) of the Rules, the Panel finds that communication of the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent was deemed to have been made on July 13, 2001. The time of actual notice to the Respondent is not clear. However, in the opinion of the Panel, actual notice would have taken place at some point between July 13 and July 16, 2001.
3.6 Although the Notification made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a response to the Complaint, the Center had received no response by August 1, 2001, and, accordingly, sent a Notification of Respondent Default on August 2, 2001, to the Respondent via email to <email@example.com> (the email address given for Respondent’s Administrative Contact). The Panel has been furnished with a documentary record of this email transmission, which shows that the email attaching the Notification of Respondent Default was "transferred" to the email address listed above on August 3, 2001, and delivered to the domain of that email address. Although the Panel would have preferred for the Center to have communicated the Notification of Respondent Default to all of the addresses for the Respondent provided by the Registrar, both electronically and by post, the Panel is satisfied that the Center has complied with paragraph 2(b)(iii) of the Rules.
3.7 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant, via email, on August 9, 2001. Again, the Center sent the Notification only to the email address for the Respondent’s Administrative Contract. As stated in paragraph 3.6, the Panel would have preferred for the Center to have communicated the Notification of Respondent Default to all of the addresses for the Respondent provided by the Registrar, both electronically and by post. Paragraph 2(b)(iii) of the Rules provides that a written communication to the Respondent, in the absence of any preferred means stated by the Respondent, may be made "electronically via the Internet, provided a record of the transmission is available". In this case, the Notification was sent to the Respondent via email, but the Panel has not been provided with a record of its transmission. However, the Panel does not feel that this anomaly is sufficient to jeopardize these proceedings.
3.8 The Center sent a Transmission of Case File to the Panel, the Respondent and the Complainant on August 9, 2001.
3.9 On August 23, 2001, the Panel sent to the Center, by email, a request for further information from the Respondent in accordance with paragraph 12 of the Rules. The Panel received the Complainant’s response to the Panel’s request, via the Center, on August 26, 2001, by email.
3.10 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact in the Complaint and remains uncontested:
The Complainant is one of the largest privately owned motor vehicle retailers in the United Kingdom. The Complainant currently operates 27 car dealerships throughout England and Wales, and had a turnover in the last financial year of Ј214 million.
The Complainant also own the domain names <caledonia-motors.co.uk> (registered on May 2, 1997) and <caledoniamotors.com> (registered on June 5, 2001). In November 1997, the Complainant launched a website at "www.caledonia-motors.com" to promote its goods and services. The domain name <caledoniamotors.com> diverts to this website. Since its launch, the Complainant’s website has attracted a substantial number of hits, with an average of 14,000 page impressions per month. The Complainant has sold over 300 vehicles through direct leads from its website, which has generated around Ј2 million worth of business.
4.2 The Complainants’ Trademarks
The Complainant has United Kingdom trademark registrations for both CALEDONIA and CALEDONIA MOTOR GROUP (the "Marks"). The CALEDONIA mark has been registered in relation to classes 12, 16 and 39, and the CALEDONIA MOTOR GROUP mark has been registered in relation to classes 12, 16, 36 and 39. All of the classes in relation to which the Marks are registered relate to motor vehicles and/or motor vehicle products and services.
The Complainant is also the registered proprietor of numerous other registered trademarks which contains the word "Caledonia". These marks include CALEDONIA SELFDRIVE, CALEDONIA FLEET SERVICES, CALEDONIA AUTO DROME, and CALEDONIA CONTRACT HIRE.
5. The Complainant’s Contentions
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element described in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Domain Name is confusingly similar to the Marks. The Complainant also contends that the Domain Name is confusingly similar to "CALEDONIA MOTORS" which the Complainant further contends is its "trading name". Somewhat surprisingly, the Complainant did not submit expressly that CALEDONIA MOTORS had achieved common law trademark status, but the Panel infers this from the other submissions made.
5.3 The Complainant submits that the use of a hyphen in the Domain Name does not affect the overall impression of the dominant part of the Domain Name being confusingly similar to the Complainant’s Marks and trading name.
5.4 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the Domain Name. It submits that the Respondent was not authorized by the Complainant to register and use the Domain Name. The Complainant contends that if the Respondent had a legitimate interest in the Domain Name, then it would be reasonable to infer that the Respondent would have responded to the Complainant’s letter, which challenged the Respondent’s rights to the Domain Name.
5.5 The Complainant submits that the Respondent cannot satisfy paragraph 4(c)(i) of the Policy (in order to establish a right or legitimate interest), as the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. This is demonstrated, according to the Complainant, by the Respondent’s behavior, which included initially using the Domain Name as a gateway to a pornographic website, and subsequently re-directing the Domain Name to various unrelated websites to which the Respondent has no connection. As a result of this behavior, the Complainant submits that the "Respondent is misleadingly diverting internet users to other sites in a manner which takes unfair advantage of, or is detrimental to, the distinctive character of the Complainant’s reputation in the word CALEDONIA MOTORS".
5.6 In reference to the bad faith requirement of paragraph 4(a)(iii) of the Policy, the Complainant asserts that the initial use of the Domain Name by the Respondent to re-direct internet users to a pornographic site is evidence of registration and use of the Domain Name in bad faith.
5.7 The Complainant also submits that the registration of the Domain Name, and the registration by the Respondent of the domain name <caledoniamotors.co.uk> on the same date, prevents the Complainant from reflecting its name in corresponding domain names. Although the Complainant concedes that the domain name <caledoniamotors.co.uk> is not governed by the Policy, it submits that its registration, along with the registration of the Domain Name, evidences a pattern of conduct as described in paragraph 4(b)(ii) of the Policy. [The Complainant appears slightly confused on this issue, as it seems to assume that the "pattern of conduct" requirement of paragraph 4(b)(ii) applies to paragraph 4(b)(iii)].
5.8 The Complainant also contends that the Respondent has registered the Domain Name for the purpose of disrupting the business of the Complainant.
5.9 The Complainant submits that the actions of the Respondent in re-directing the Domain Name to numerous sites unconnected with the both the Complainant and the Respondent, and inclusion at one point of the words "COPYRIGHTS GARDNER" in the website to which the Domain Name resolved (an apparent cynical reference to the Managing Director of the Complainant) represent bad faith on the part of the Respondent.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy.
6.2 Domain Names identical or confusingly similar to Complainant’s Marks
As set out in paragraph 5.2, the Complainant submits that the Domain Name is confusingly similar to the Complainant’s Marks, and the Complainant’s trading name "Caledonia Motors". These two submissions will be dealt with separately.
The Complainant’s Marks are CALEDONIA and CALEDONIA MOTOR GROUP. Given that "Caledonia" appears to be in common use as a geographical descriptor, the Panel does not accept that the Domain Name is confusingly similar to the Mark CALEDONIA. The more pressing question is whether the Domain Name is confusingly similar to the Mark CALEDONIA MOTOR GROUP. With some reservations, due mainly to the generic nature of the words involved, the Panel has formed the opinion that it is. The only substantive difference between the Domain Name and this Mark is the word "Group", and the Panel does not feel that the omission of GROUP in the Domain Name, the use of the plural MOTORS, or the addition of the hyphen, is sufficient to distinguish the domain name in dispute from CALEDONIA MOTOR GROUP.
The Complainant has also submitted that its trading name is "Caledonia Motors". The question for the Panel is whether the use by the Complainant of that trading name has been sufficient to establish it as a common law trademark. This is important, as the Policy does not recognize trading names per se. As a result of the Panel’s request for further information, the Complainant provided the Panel with the following examples of the use of the trading name:
a) For the past year the domain name <www.caledonia-motors.co.uk> has appeared on the license plates of all cars that the Complainant sold.
b) As described in paragraph 4.1, the Complainant operates a website at "www.caledonia-motors.co.uk" (to which the Complainant’s other domain name, <caledoniamotors.com>, diverts) which is used to promote its goods and services. The Complainant submits that direct leads from this website have led to the sale of over 300 vehicles worth around Ј2 million.
c) The Complainant’s domain name <caledonia-motors.co.uk> has been included on the Complainant’s off-line promotional material (copies of which were annexed to the Complaint).
On the basis of the examples above, the Panel is satisfied that the Complainant’s use of the name "Caledonia Motors" has been sufficient to establish that name as a common law trademark. This finding is given support by statistics provided by the Complainant which indicate that it is common for an Internet user to search for the Complainant’s website using a search term that refers to the Complainant as "Caledonia Motors". As a result, it is clear that the Domain Name is confusingly similar to this common law mark.
The Panel has therefore concluded that the Domain Name is confusingly similar to one of the Complainant’s Marks, namely, CALEDONIA MOTOR GROUP, and also confusingly similar to the mark "Caledonia Motors" in which the Complainant has demonstrated common law rights.
6.3 The Respondent has no rights or legitimate interests in the Domain Names
The Respondent has asserted no rights or legitimate interests in the Domain Name. There is also no evidence before the Panel that any of the situations in paragraph 4(c) of the Policy apply in the case of the Respondent. The Respondent’s use of the domain name to divert initially to a pornographic website, and subsequently to other sites to which the Respondent has no identifiable connection, does not amount to a legitimate interest in the Domain Name. On the contrary, the Respondent’s behavior indicates a complete lack of any right or legitimate interest in the Domain Name. The fact that many of the websites to which the Domain Name has been diverted are associated in some way with "Caledonia" is not enough to demonstrate a right or legitimate interest in the Domain Name. This is especially the case given that the Respondent has no identifiable connection with these websites, and the word "Motors" is not relevant to the subject matter of these sites.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.4 The Domain Names have been registered and are being used in bad faith
The Complainant submits that the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. This circumstance is provided for in paragraph 4(b)(ii) of the Policy, which adds the requirement that the Respondent must have engaged in a pattern of such conduct. The Panel notes that the circumstances set out in paragraph 4(b)(ii) of the Policy, if found to exist, are stated to be evidence of registration and use of the Domain Name in bad faith. The Respondent registered the Domain Name on April 14, 2001. On the same day the Respondent registered the domain name <caledonia-motors.co.uk>. There seems little doubt, when taking into account the findings in paragraph 6.2 and 6.3 above, that the Respondent has engaged in a pattern of registering domain names to prevent the Complainant from obtaining a corresponding domain name. As a result, the Panel finds that, in accordance with paragraph 4(b)(ii) of the Policy, the Domain Name was registered and is being used in bad faith.
The Complainant has also submitted that the use of the Domain Name to divert users to a pornographic website is evidence that the Respondent registered and is using the Domain Name in bad faith. The Panel is of the opinion that such conduct of the Respondent, given that the Domain Name itself has no pornographic or erotic connotations, evinces an intention to either attract the attention of the Complainant, disrupt the Complainant’s business, or to damage the Complainant’s reputation. The Panel does not have enough evidence before it to determine which of these motivations was held by the Respondent. However, the Panel is satisfied that whatever the motivation of the Respondent, the diversion of the Domain Name to a pornographic site and the subsequent random diversions to sites unrelated to the Respondent, are certainly consistent with the finding in the previous paragraph that the Domain Name was registered and is being used in bad faith.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proved by the Complainant. Accordingly, for the purposes of paragraph 3(c) of the Policy, and pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the Domain Name <caledonia-motors.com> be transferred by Tucows to the Complainant.
Philip N. Argy
Dated: August 29, 2001