WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.
Case No. D2000-0047
1. The Parties
The complainant is eAuto, L.L.C., a limited liability company organized and existing under the laws of the State of Texas, having its principal place of business at Dallas, Texas, United States. The respondent is Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. of Los Angeles, California, United States.
2. The Domain Name and Registrar
The domain name at issue is . This domain name is registered with Network Solutions, Inc.
3. Factual Background
The Panel has reviewed the Complainant�s Complaint and Respondent�s Response. The following facts appear to be undisputed:
Complainant is in the business of offering a full range of automotive information to companies and individuals through its Internet web site at . Since January 1996, Complainant�s web site has provided information and links to the web sites of distributors, retailers, and manufacturers of auto parts and auto accessories, automakers, auto dealers, automotive news and events, automotive services, automotive news groups and automotive email lists.
Complainant owns a United States trademark registration for the mark EAUTO, Reg. No. 2,035,083 for "providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information." This trademark was issued to the founder of Complainant, and the registration for the EAUTO trademark was assigned to Complainant on August 29, 1997.
Complainant alleges that its mark has acquired and enjoys substantial goodwill and a valuable reputation. Complainant also alleges that it has expended and continues to expend a significant amount of time and money to advertise, offer for sale, and promote its services through the EAUTO trademark.
Respondent has been in the automotive lamp business for over ten years. In March 1999, Respondent registered the domain name in order to offer e-commerce enabled shopping technology for consumers to purchase auto lamps. (Respondent also appears to have registered , which, apparently, has not been challenged by the Complainant.) The website at www. offers consumers a full range of automobile lamps for purchase.
On December 29, 1999, Complainant�s attorney sent Respondent a cease and desist letter regarding Respondent�s use of the domain name . Respondent refused to accept delivery of the cease and desist letter. Thereafter, Complainant invoked the Policy and filed its Complaint with the WIPO Arbitration and Mediation Center.
4. Parties� Allegations
Complainant alleges that Respondent�s registration and use of the domain violates its rights in its trademark EAUTO. Specifically, Complainant alleges that the domain name is confusingly similar to its EAUTO trademark and, given that both parties are in the automotive business, Respondent�s use of the domain name is likely to cause consumer confusion. Complainant further argues that the Respondent has no legitimate interest in the domain name because it was registered three years after Complainant�s first use of the mark EAUTO. In support of this argument, Complainant alleges that, because Respondent�s domain name does not reflect the name of its corporate identity, it is evidence of its lack of legitimate interest in the domain name. Finally, Complainant alleges that Respondent acted in bad faith in registering and using the domain name . Complainant argues that Respondent�s bad faith is proven by its decision to register with the likely knowledge of Complainant�s own registration and use of and its refusal to attempt to settle this dispute amicably.
Respondent alleges that its domain name, is not identical or confusingly similar to because refers specifically to lamps rather than general auto information and/or services. In support of its argument that is not confusingly similar to , Respondent identifies approximately fifty other domain names that have been registered which incorporate the term "eauto." Respondent further alleges that its registration and use of the domain name is legitimate because the domain name describes the business of Respondent. Finally, Respondent alleges that proof that the domain name was not registered in bad faith is the fact that Respondent is using the domain name for a business it has been conducting for ten years and because the business of Respondent does not overlap with the business of Complainant.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) the domain name has been registered and used in bad faith.
Complainant cannot meet its burden of proof under the Policy.
1. Similarity of the Mark and Domain Names
The domain name is not identical to Complainant�s Mark, EAUTO. Whether it is confusingly similar presents a closer question.
Although incorporates, in its entirety, the EAUTO trademark, that mark appears to be descriptive for information about automobiles disseminated via the Internet. That is because "auto" is generic for information on and sales of automobiles and related products and services, and the letter "e" preceding it has come to be understood as an electronic, Internet-based form of the same (e.g., e-commerce, email, e-retailing).
The U.S. Patent and Trademark office, though, registered the EAUTO mark without requiring a showing of acquired distinctiveness under � 2(f) of the Lanham Act, 15 U.S.C. � 1052(f) (because the parties are both U.S. residents, it is appropriate to consider and apply U.S. law). This registration is prima facie evidence of the validity of Complainant�s registration, and creates a rebuttable presumption that the EAUTO mark is inherently distinctive. Respondent has not submitted any evidence that would refute this assumption. Accordingly, the Panel finds that EAUTO is a distinctive mark, albeit one at the weaker end of the spectrum.
When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar. Accordingly, the Panel holds that Complainant has satisfied the first prong of the ICANN test.
2. Legitimacy of Respondent�s Interest.
For ten years, Respondent has operated a business of selling automobile lamps. When Respondent elected to expand its business to offer e-commerce capabilities, it selected the descriptive domain name . That, coupled with the undisputed fact that Respondent had been using the domain name in the bona fide offering of goods for sale over the Internet before Respondent received notice from Complainant, is persuasive evidence of a Respondent�s legitimate interest in the domain name pursuant to the Policy, Paragraph 4(c)(i).
Complainant argues, though, that Respondent should be deemed to have no legitimate interests in the domain name because its corporate name is not "EAutoLamps." That Respondent does not use "EAutoLamps" in its corporate name is immaterial. A person or entity may legitimately register and use many domain names that are different from its corporate name. Thus, while the registration of a domain name that mimics one's corporate name may provide proof of legitimacy, Policy Section 4(c)(ii), the inverse is not also true: the absence of a corporate name from which a domain name was derived does not render the registration and use illegitimate.
Accordingly, the Panel concludes that Respondent has a legitimate interest in the selling of automobile lamps on the Internet using the domain name .
3. Absence of Bad Faith.
There is no evidence in the record that would enable the Panel to conclude that the domain name has been registered and is being used in bad faith. That Complainant registered the mark EAUTO and the domain name prior to Respondent�s registration of cannot establish bad faith given Respondent�s justifiable belief that it had a legitimate interest in, and thus the right to register, the domain name . Similarly unpersuasive is Complainant�s speculative allegation that Respondent probably was aware of its registration of at the time it registered its domain name.
Complainant�s final allegation of bad faith � that Respondent refused "Complainant�s attempts to amicably settle this dispute and refus[ed] receipt of Complainant�s cease and desist letter" � is no evidence at all of bad faith. A domain name registrant has no obligation to respond to or even receive demand letters. To the contrary, an offer to sell a domain name has frequently been cited as a factor showing bad faith; Respondent�s refusal to engage in such discussions shows that it had no bad intent to profit by selling the domain name to the trademark owner. Thus, the Panel finds that Respondent did not act in bad faith in registering and using its domain name.
In reaching this finding, the Panel is cognizant of the fact that, by its nature, the ICANN Rules do not provide for discovery or, absent extraordinary circumstances, live testimony at which credibility determinations can be made. Although the paper record lacks any showing of bad faith, it is possible that a nefarious motive could be proven through discovery, where the opportunity to review documents and cross examine witnesses provides greater opportunities for a searing search for the truth. The Panel does not mean to imply that it suspects the presence or absence of any such hidden bad faith in this case, but rather, notes that, where bad faith cannot be shown on demonstrable facts in the records, complainants should consider whether a court, with the prospect of discovery, would be a more appropriate forum for cybersquatting claims.
6. Decision
For all of the foregoing reasons, the Panel concludes that the domain name , registered by Respondent, should not be transferred to Complainant.
David H. Bernstein
Presiding Panelist
Dated: March 24, 2000
Full & Egal Universal Law Academy