Entrepreneur Daryl Wizinsky had a fun idea: Create a web site that combines his love for reconditioned Humvee army cars and real estate.
Using the domain name HumveeGuy.com, he set forth to present his venture, “Cars, Real Estate & Fun Meet” in 2022.
Unfortunately, AM General LLC, owners of the HUMVEE mark, were not that thrilled; they filed a UDRP.
In his response, the Respondent contended that their use of the domain constitutes a “fair use” of the HUMVEE term and does not infer a relationship with Complainant.
The Forum (NAF) panelist disagreed:
Respondent has not used the Disputed Domain in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Disputed Domain resolves to a website for Respondent’s purported businesses, which appears to relate to real estate, investor, and coaching services that are not related to or authorized by Complainant in any way. Such uses do not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Final decision: Transfer the domain HumveeGuy.com to the Complainant. Check out Mr. Wizinsky’s other project, DivorceRealEstate.com that contains no infringing keywords. 🙂
AM General LLC v. Daryl Wizinsky
Claim Number: FA2308002055833
PARTIESComplainant is AM General LLC (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Indiana, USA. Respondent is Daryl Wizinsky (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is humveeguy.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 2, 2023; Forum received payment on August 2, 2023.
On August 23, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the humveeguy.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2023, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@humveeguy.com. Also on August 23, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 30, 2023.
An Additional Submission was received on September 1, 2023, and was found to comply with Supplemental Rule 7, and thus has been considered.
On September 5, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed David S. Safran as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complaint owns four registrations for the trademark HUMVEE in four different classes of goods. The Complainant contends that since the domain in dispute includes the entire mark it is confusingly similar to Complainant’s trademark. Respondent (1) has never been known or referred to as the HUMVEE Marks or any variation thereof, (2) is not affiliated with, licensed or otherwise authorized by Complainant to use the HUMVEE Marks, and (3) has not used the disputed domain in connection with a bona fide offering of goods or services so that Respondent has no rights or legitimate interests in the disputed domain. Respondent is using the disputed domain in bad faith because (1) the Disputed Domain is identical and/or confusingly similar to Complainant’s
well-known HUMVEE Marks; (2) Respondent had constructive and actual notice of Complainant’s rights to the HUMVEE Marks; and (3) Respondent is using Complainant’s HUMVEE mark in the Disputed Domain in an attempt to attract Internet users to Respondent’s Website for its own financial gain.
B. Respondent
Respondent contends that its use of the domain constitutes a “fair use” of the HUMVEE term and does not infer a relationship with Complainant.
C. Additional Submissions
Complainant contends that Respondent’s Website is clearly commercial in nature and used for Respondent’s own financial gain. Respondent’s use of the domain serves to create the mistaken impression that Respondent’s business is somehow affiliated with or sponsored by Complainant when that is not the case.
FINDINGS
Complainant owns registered trademarks for HUMVEE. The domain humveeguy.com is confusingly similar to Complainant’s trademark. Respondent has no rights or legitimate interests in the humveeguy.com domain, and it has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
A domain name is confusingly similar to a complainant’s trademark pursuant to UDRP Policy ¶ 4(a)(i), the complainant’s mark is included in the disputed domain name. Yahoo! Inc. v. James Fato d/b/a 458 Online, FA 286410 (Forum Jul. 26, 2004). Avaya Inc. v. Jomar Technologies / Jomar Technologies, Inc., FA 1554827 (Forum May 15, 2014) (ending the Identical and/or Confusingly Similar analysis after finding that the domain included Complainant’s identical mark). Here, the Disputed Domain incorporates Complainant’s HUMVEE mark in its entirety. The only differences between the Disputed Domain and Complainant’s HUMVEE mark are the addition of the generic word “guy” and the generic top level domain (gTLD) “.com.” These differences do nothing to distinguish the Disputed Domain from Complainant’s HUMVEE Marks. See Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the fg24.biz domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the pandora1.com domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”). Accordingly, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark.
Rights or Legitimate Interests
That there is no indication that Respondent or any business or other organization owned or controlled by Respondent has ever been commonly known by or referred to as Humvee Guy evidences a lack of rights and legitimate interest in the Disputed Domain. See Radio Flyer Inc. v Stefan Hansmann / Invertising, FA 1610574 (Forum, May 12, 2015) (finding respondent had no rights or legitimate interests where respondent was not commonly known as the disputed domain); Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent
was authorized to use a UDRP Complainant’s mark in any manner).
In addition, Respondent has not used the Disputed Domain in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Disputed Domain resolves to a website for Respondent’s purported businesses, which appears to relate to real estate, investor, and coaching services that are not related to or authorized by Complainant in any way. Such uses do not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain.
Registration and Use in Bad Faith
When Respondent registered the Disputed Domain in 2022, Complainant had already been using its HUMVEE Marks for more than 30 years and owned several United States federal registrations for the Marks. Additionally, as a result of Complainant’s extensive use of and investment in the HUMVEE Marks, widespread publicity and recognition of the Marks, and sales of its products under the Marks, the Marks had become well-known well before Respondent’s registration and use of the Disputed Domain. This evidence strongly indicates Respondent had constructive, if not actual, notice of Complainant’s rights to the HUMVEE Marks prior to registering the Disputed Domain. Respondent’s registration and use of the Disputed Domain with actual and/or constructive knowledge of Complainant’s rights in the HUMVEE Marks is evidence that Respondent registered and is using the Disputed Domain in bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark); Michelin North America, Inc. v. Ed Brewmaker, FA 1212001475767 (Forum January 30, 2013) (as result of Complainant’s widespread use of and registrations for the MICHELIN mark, respondent had actual knowledge of the mark and thus registered the michelintiresreviews.com).
Thus, the Panel finds that disputed domain was registered and is used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the humveeguy.com domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: September 18, 2023
