WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings, Inc. v. AFX Communications a/k/a AFX
Case No. D2000-1472
1. The Parties
The Complainant is TPI Holdings, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Atlanta, Georgia, USA.
The Respondent is AFX Communications, also known as AFX, with address in Dawsonville, Georgia, USA.
2. The Domain Names and Registrar
The disputed domain names are , , and .
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 28, 2000, and via courier mail, received by WIPO on October 31, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 7, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar�s Response received by WIPO on November 9, 2000).
(b) Complainant was notified by WIPO of a technical deficiency in its complaint via e-mail on November 13, 2000, and Complainant filed an amended complaint via e-mail on that same date.
(c) On November 21, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(d) On November 22, 2000, Respondent transmitted via e-mail to WIPO a copy of e-mail correspondence between Respondent and Complainant in which Respondent offered to transfer the disputed names to Complainant for its costs of registration, which offer was rejected by Complainant (see Factual Background infra).
(e) On December 11, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.
(f) On January 17, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 17, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(g) On January 19, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by February 1, 2001. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
(h) On January 31, 2001, the Panel notified WIPO of an unanticipated scheduling conflict unrelated to this proceeding, and requested to render its determination on February 2, 2001. WIPO assented to this request.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the word trademark "AUTO TRADER" on the Principal Register of the United States Patent and Trademark Office ("USPTO"), Reg. No. 1,247,037, dated August 2, 1983, in International Class 16, covering periodic magazine, claiming date of first use in commerce of January 1, 1974 (and disclaiming exclusive use of "AUTO" apart from the mark as shown). Complainant has registered the word service mark "AUTOTRADER.COM" on the Principal Register of the USPTO, Reg. No. 2,381,590, dated August 29, 2000, in International Class 35, covering, inter alia, providing automotive information via a global computer network relating to vehicles for sale, claiming date of first use in commerce of August 25, 1999. Complainant has registered the word service mark "TRADER ONLINE" on the Principal Register of the USPTO, Reg. No. 2,302,312, dated December 21, 1999, in International Class 42, covering computer services, namely leasing access time to a computer database in the field of general merchandise sales and advertising, claiming date of first use in commerce of April 1996 (and disclaiming exclusive use of "ONLINE" apart from the mark as shown). (Complaint, para. 10 and Exhibit C)
Complainant has used the "AUTO TRADER" mark in commerce in the publication of a magazine since as early as 1974. Complainant has used the "AUTOTRADER.COM" mark in commerce since August 1999. Complainant registered the domain name and has used that domain name in connection with a commercial website located at Internet address . Such website provides a means to Internet users for searching a used car database. Since 1996, Complainant has used the mark "TRADER ONLINE" in commerce. It registered the domain name and has used that domain name in connection with a commercial website located at Internet address . Such website provides a means to Internet users to advertise and search for various goods, including cars and collector cars, boats, and airplanes. (Id., para. 11 and Exhibits D-F)
According to the registrar�s verification response to WIPO, dated November 9, 2000, "AFX Communications" or "AFX" is the listed registrant of the domain names , , and . The Administrative Contact for each name is listed as "Pell, David". According to WHOIS database search reports furnished by Complainant, the records of registration for the disputed domain names were created between February 12 and 24, 1999. Each of the records of registration was last updated on June 3, 1999 (Complaint, Exhibit A).
Respondent has used the , and domain names only to post blank web pages (id., para. 12 and Annex G).
Respondent has used the to host a website at Internet address that allows Internet users to search for mortgage rate quotes, and that links to websites that offer price quotes on new and used cars, travel arrangements, and a list of "�Adults Only�" websites (id., para. 12 and Annexes H-J).
Respondent has registered numerous domain names that make use of the well known trademarks of third parties, including , , , , , and ( and Network Solutions database searches, dated October 3 and September 26, 2000, id., Exhibit K).
Respondent is the subject of a U.S. federal district court order that, inter alia, enjoins it against further use of, and orders the transfer of, various domain names incorporating trademarks of the DaimlerChrysler Corporation (Civil Case No. 2.00.CV-0039-WCO, Northern Dist. Georgia, June 30, 2000, id., Exhibit J).
On November 9, 2000, Respondent sent an e-mail and fax message to Complainant�s counsel, stating:
"We are in receipt of the UDNDRP complaint filing you sent concerning the domain names on behalf of your client Trader Publishing. We will not be opposing this claim with WIPO, and presumably, once you have completed the dispute process process [sic] the names will be transferred to you. Since these names were registered before the legal environment changed to favor trademark holders, we had different plans for the names at the time of registration. We had intended to keep the names through the end of their original registration period to determine if the legal environment would change again, so that we may use the names, to somehow recoup our registration fees. As a courtesy, we would offer to transfer the four contested names directly to you if you would refund our original Network Solutions registration fees.
Alternatively, we will allow the dispute process to proceed without our protest, and you will certainly obtain the names this way.
Please let us know if we can be of additional assistance.
Thanks!
Dave Pell
AFX Communications"
(e-mail from Dave Pell to Judith Powell, WIPO File, item 8)
On November 18, 2000, Complainant (through its counsel) replied to Respondent as follows:
"Thank you for your message; however, after considering the offer, having originally offered to reimburse your registration fee and having been rejected and now having spent a significant amount of money addressing this issue, Trader wishes to complete the ICANN proceeding."
(e-mail from J. Powell to D. Pell, id.)
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states that it has registered the trademark "AUTO TRADER" and the service marks "AUTOTRADER.COM" and "TRADER ONLINE" at the USPTO and has used those marks in commerce (see Factual Background supra).
Complainant alleges that the disputed domain names are identical or confusingly similar to its marks. Complaint states, inter alia, that adding "sucks" to its "AUTO TRADER" mark is "not sufficiently distinguishing because in fact the site does not comment on Complainant or its services but rather offers competitive services to Complainant�s and is likely to divert web users seeking to access the Complainant�s web site."
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names because Complainant�s use of its marks predated Respondent�s registration of the names, Respondent had constructive and actual notice of Complainant�s rights in its marks, and Respondent has made no active use of three of the disputed domain names. Complainant indicates that Respondent has no rights in the domain name since that name has not been used for comment or reference to Complainant or its mark, but has only been used to identify a website that provides commercial services, or links to other websites providing commercial services, including services that are directly competitive with Complainant�s services. Because Respondent is using the domain name solely for the purpose of misleadingly diverting Complainant�s customers to a competitor�s website for commercial gain, Respondent is not making fair use of the domain name, and it does not have any rights or legitimate interests in the name.
Complainant alleges that Respondent has registered and is using the disputed domain names in bad faith. Respondent has registered many domain names that incorporate well-known trademarks of others, and has registered the disputed names to prevent Complainant from registering its marks in corresponding names. Respondent registered domain names similar to Complainant�s mark, but incorporating likely typographical mistakes (e.g., ), for the purpose of diverting Internet users to Respondent�s website locations. Respondent�s domain name is used to divert Internet users to Respondent�s own competitive business, and to another competitor�s business. This takes improper commercial advantage of Complainant�s mark and disrupts Complainant�s business.
Complainant requests the Panel to direct the registrar to transfer the disputed domain names to it.
B. Respondent
Respondent has not formally responded to Complainant�s complaint. It has, however, indicated that it is deliberately foregoing its right to respond and expects that the Panel will find in Complainant�s favor.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent acknowledged its receipt of the complaint, and indicated its deliberate decision not to file a response.
The Panel is in an atypical posture in this proceeding. Following receipt of the Complaint, Respondent offered to transfer the disputed domain names to Complainant in exchange for the out-of-pocket expenses it incurred for registration, and stated its expectation, based on application of the Policy�s protection of trademark holder rights, that the Panel would find in Complainant�s favor. Complainant, having already incurred the expenses of initiating the proceeding, declined Respondent�s offer. Complainant also expects that the Panel will find in its favor. The Panel essentially is asked to confirm the mutual expectation of the parties.
The Panel will not frustrate this expectation.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., paragraph 15(a)).
Complainant is the holder of registration for the trademark "AUTO TRADER" and the service marks "AUTOTRADER.COM" and "TRADER ONLINE" in the United States and is using those marks in commerce (see Factual Background, supra). Complainant�s registration of the "AUTO TRADER", "AUTOTRADER.COM" and "TRADER ONLINE" marks on the Principal Register at the USPTO establishes a presumption of their validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the marks "AUTO TRADER", "AUTOTRADER.COM" and "TRADER ONLINE".
Complainant claims dates of first use in commerce (on its USPTO registrations) of the "AUTO TRADER" and "TRADER ONLINE" marks prior to Respondent�s registration in February 1999 of the disputed domain names. Respondent has not challenged these claims. As to "AUTO TRADER" and "TRADER ONLINE", the Panel determines that Complainant�s rights in those marks arose prior to Respondent�s registration of the disputed domain names. Since Complainant�s service mark registration for "AUTOTRADER.COM" claims a date of first use in commerce of August 25, 1999, and since Respondent�s registration of the disputed domain names preceded that date, the Panel determines that Complainant did not acquire exclusive rights in the "AUTOTRADER.COM" mark prior to Respondent�s registration of the disputed domain names. The Panel notes, however, that it is not necessary for Complainant to demonstrate prior exclusive rights in the "AUTOTRADER.COM" service mark in order for the Panel to find that the disputed domain names are confusingly similar to Complainant�s "AUTO TRADER" and "TRADER ONLINE" marks.
Complainant has registered and used the domain name in connection with an active commercial website. Although the record does not make clear precisely when Complainant began using the "" domain name in connection with an active website, a Network Solutions� WHOIS database search undertaken by the Panel indicates that the record of registration for this name was created on May 15, 1995.
Complainant has registered and used the domain name in connection with an active commercial website. Although the record does not make clear precisely when Complainant began using the domain name in connection with an active website, a Network Solutions� WHOIS database search undertaken by the Panel indicates that the record of registration for this name was created on March 6, 1995.
Respondent has registered the domain names , , and .
The domain name uses Complainant�s "AUTO TRADER" and "TRADER ONLINE" marks in a variety of confusingly similar ways. It conjoins the two marks, eliminating the duplication of "TRADER". It adds the common descriptive term "ONLINE" at the end of Complainant�s "AUTO TRADER" mark (the Panel noting that Complainant has disclaimed exclusive rights in the term "ONLINE" except as used in combination with "TRADER") (see Factual Background supra). Finally, it adds the noun "AUTO" in front of Complainant�s "TRADER ONLINE" mark (the Panel noting that Complainant has disclaimed exclusive rights in the term "AUTO" except as used in combination with "TRADER").
The Panel is satisfied that an Internet user seeing the domain name would be likely to confuse it with Complainant�s "AUTO TRADER" and "TRADER ONLINE" marks. Taking the older of Complainant�s marks, "AUTO TRADER", Respondent has merely added the descriptive term "online" commonly used to designate location on an electronic network. Internet users viewing would be likely to assume that Complainant had added the term "online" to indicate the Internet location of its "AUTO TRADER" services enterprise. The Panel determines that is confusingly similar to a trademark and service mark in which Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
The disputed domain names and share the characteristic that Respondent has placed the prefix "www" before one of Complainant�s marks. Internet users typically must enter a "www" identifier preceding a domain name to locate a host web server, and it would be a common typing error for such users to omit a "dot" or period following "www". In so far as the disputed domain names merely take advantage of this common typing error and do not otherwise distinguish themselves from Complainant�s marks, the Panel finds such domain names to be confusingly similar to Complainant�s marks within the meaning of paragraph 4(a)(i) of the Policy.
The disputed domain name appends the word "sucks" to Complainant�s "AUTO TRADER" mark. In an earlier administrative proceeding, this sole panelist determined that a domain name comprised of a trademark and the pejorative term "sucks" may be confusingly similar to the subject trademark depending on the specific context in which the "sucks"-formative domain name is used (Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, decided July 20, 2000). The Panel affirms this view. (Footnote 3) When an Internet user enters a trademark into search engine and a "sucks"-formative domain name is returned as a search result, that user is likely to proceed to the site so identified because of interest or puzzlement created by association of the trademark and the pejorative term. The operator of the website identified by the "sucks"-formative domain name will have accomplished the objective of diverting the Internet user seeking the trademark holder�s website. Bad faith adoption of a trademark, including in a "sucks"-formative domain name, increases the likelihood of a finding of confusing similarity.
As discussed in this sole panelist�s earlier determination, a finding that a "sucks"-formative domain name is confusingly similar to a trademark does not automatically flow from a per se rule that "sucks"-formative domain names are confusingly similar to trademarks. The issue is context-specific. This is consistent with the holding in Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), in which the court said that a "sucks"-formative domain name "would not necessarily" constitute trademark infringement as a "matter of law" (id., at 1165). This Panel agrees. "Sucks"-formative domain names are not necessarily confusingly similar to trademarks, nor are they necessarily immunized from confusing similarity.
In the instant proceeding, the term "sucks" is appended to Complainant�s mark to form . The resulting domain name is used to divert Internet traffic to a commercial website that directly competes in Complainant�s channel of commerce. Complainant�s mark has been intentionally adopted, and the term "sucks" has been appended to cause consumer interest and confusion in an on-line location not associated with Complainant. Respondent�s objective in adopting the disputed domain name falls squarely within the list of bad faith criteria established in paragraph 4(b) of the Policy. The Panel finds that the disputed domain name is confusingly similar to Complainant�s "AUTO TRADER" mark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a trademark and service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
Respondent has not suggested that it has rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy. In the circumstances of this case, in which Respondent has acknowledged its awareness of the proceedings and has deliberately declined to assert a defense, the Panel will not speculate concerning what its legitimate interests might be.
Respondent�s only demonstrated use of the disputed domain names has involved using to direct Internet users to websites unrelated to (and in competition with) Complainant. Such use is hereinafter determined to be in bad faith. Bad faith use of a domain name does not establish rights or legitimate interests in the sense of paragraph 4(a)(ii) of the Policy.
Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent�s] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)); (3) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii)); and (4) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has used the disputed domain name to intentionally attract for commercial gain Internet users to its web site and other on-line locations by creating a likelihood of confusion with Complainant�s mark as to Complainant�s affiliation with its web site and other on-line locations. This constitutes bad faith use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent has by its registration of the disputed domain name precluded Complainant from registering its mark in that corresponding domain name. Respondent�s multiple registration of domain names incorporating the marks of others, such as , and establishes a pattern of such conduct. The Panel determines that Respondent registered the domain name "" in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Although there is no evidence that Respondent has as yet used the disputed domain names and in connection with an active website, the Panel can discern no reason for the registration of such names other than an intention to use them to divert Internet users to a website for commercial gain by creating confusion with Complainant�s mark as to Complainant�s affiliation with such website. Respondent�s actual use of another disputed domain name for such purposes supports such an inference. The Panel notes that the list of bad faith factors in paragraph 4(b) is illustrative, and not exhaustive. The Panel finds that Respondent registered the disputed domain names and in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain names , , and to the Complainant.
7. Decision
Based on its finding that the Respondent, AFX Communications, also known as AFX, has engaged in abusive registration and use of the domain names , , and within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names , , and be transferred to the Complainant, TPI Holdings, Inc.
Frederick M. Abbott
Sole Panelist
Dated: February 2, 2001
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. See in support, e.g., Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd, Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v. Purge I.T., Purge I.T. Ltd, Case No. D 2000-0583, decided August 13, 2000.
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