WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interstate National Dealer Services, Inc. v. Selwyn Colley
Case No. D2004-0934
1. The Parties
The Complainant is Interstate National Dealer Services, Inc., New York, New York, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Selwyn Colley, Lake Barrington, Illinois, United States of America.
2. The Domain Names and Registrars
The disputed domain names and are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2003. On November 25, 2003, the Center transmitted by e-mail to Network Solutions, LLC, a request for registrar verification in connection with the domain names at issue. On December 3, 2003, Network Solutions, LLC, transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 16, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of the Respondent�s default on January 29, 2004.
Although Respondent did not submit a response, on November 27, 2003, Respondent sent an e-mail message to the Center asking that the dispute be directed to "Extended Auto Warranty Corp/Warranty Administrators" asserting the reason that "[t]hey have taken over the business and we have notified Network Solutions of this and are awaiting transfer. They took over the domain name as of May 1st. We have not conducted any business since."
On February 10, 2004, "The Ultimate Warranty Corporation" submitted a response to Complainant�s Complaint, asserting that The Ultimate Warranty Corporation owned the disputed domain names.
The Center appointed Bradley A. Slutsky as the Sole Panelist in this matter on February 11, 2004. 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.
On February 5, 2004, Complainant sent an e-mail message to the Center moving to strike the response of The Ultimate Warranty Corporation or, in the alternative, for leave to file a reply.
On February 25, 2004, the Panel issued Administrative Order No. 1, denying Complainant�s motion to strike the response of The Ultimate Warranty Corporation, granting Complainant�s motion for leave to file a reply, and notifying the parties that, based on the evidence submitted through February 25, 2004, the Panel believed Selwyn Colley was the proper Respondent.
Complainant then submitted a reply memorandum dated March 4, 2004, and The Ultimate Warranty Corporation submitted an Affidavit of James Clark also dated March 4, 2004.
4. Factual Background
Complainant owns the incontestable registered trademark WARRANTY DIRECT for "providing service contracts and extended warranty contracts" for various types of vehicles, appliances, and equipment, including "new and used motor vehicles." The registration issued on May 6, 1997, and claims a date of first use of September 1, 1995.
Respondent registered the disputed domain names and on August 4, 2000, and used them on a website that offered, among other things, extended auto warranties.
On November 21, 2002, Complainant wrote to Respondent and requested that Respondent cease and desist from any further use of the disputed domain names. On December 6, 2002, Respondent responded to this letter stating, among other things, that "[w]e did not know that there was any copyright on the name Warranty Direct or Warranties Direct." On January 24, 2003, Complainant�s counsel wrote to Respondent, provided a copy of Complainant�s certificate of trademark registration, and again demanded that Respondent cease and desist using the disputed domain names. On March 28, 2003, Respondent�s counsel wrote to Complainant�s counsel, alleged that there is no likelihood of confusion between the disputed domain names and Complainant�s mark, and proposed that Complainant offer to pay Respondent "the costs of changing its name and the amounts spent on advertising." On May 19, 2003, Respondent wrote to Complainant�s attorney and stated that "the business of [Car Warranties Direct LLC] as well as the website has been taken over by Warranty Administrators � as of the May 1, 2003." The Ultimate Warranty Corporation attached to its response a document dated May 15, 2003, and entitled "Sale Of Business Assets" which transfers to The Ultimate Warranty Corporation "[a]ll right title, and interest in and to [Car Warranties Direct, LLC�s] website located at �� subject however to the terms of Paragraph 6(c)." Paragraph 6(c) provides that The Ultimate Warranty Corporation "shall � [c]hange the domain name of the website currently operated and owned by [Car Warranties Direct, LLC]." On May 20, 2003, Complainant sent a cease and desist letter to Warranty Administrators. Through a conversation with counsel for The Ultimate Warranty Corporation as well as through the investigation of Marksmen®, Complainant understood that The Ultimate Warranty Corporation would be changing the name of the Car Warranties Direct business. On October 3, 2003, however, counsel for The Ultimate Warranty Corporation wrote to counsel for Complainant and stated that The Ultimate Warranty Corporation "has expended significant funds toward the updating of its website and the registration of the URL in connection with internet search engines and does not wish to change the domain name at this time." Complainant then brought this proceeding.
5. Parties� Contentions
A. Complainant
Complainant asserts that it has prior rights in an incontestable trademark, and that Respondent seeks to capitalize on Complainant�s goodwill by adding the generic word "car" to Complainant�s trademark and making Complainant�s trademark plural. Complainant asserts that the disputed domain names thus are confusingly similar to Complainant�s mark. Complainant asserts that Respondent has no legitimate interests in the disputed domain names because Complainant has priority of use and because The Ultimate Warranty Corporation allegedly had written notice of Complainant�s rights prior to allegedly purchasing the disputed domain names (although in its reply Complainant argues that The Ultimate Warranty Corporation does not own the disputed domain names). Complainant alleges that Respondent and The Ultimate Warranty Corporation provide identical and competitive extended car warranty services to those of Complainant, and that the use of the disputed domain names diverts consumers from Complainant�s website. Complainant points to decisions holding that "an infringing use is not a bona fide offering of goods or services under the policy," and argues that Respondent�s use falls within this precept. Complainant further argues that Respondent�s adoption of domain names confusingly similar to incontestable registered trademarks, and use of the domain names to offer the same types of services, shows a clear intent to create a likelihood of confusion, dilute and tarnish Complainant�s mark, and attract, for commercial gain, Internet users to Respondent�s website by creating initial interest confusion. Complainant points to e-mail correspondence allegedly demonstrating a single instance of actual confusion, and points to Google™ search results for "car warranties direct" and "car warranty direct" which list Respondent�s site first, arguing that this is further evidence of likelihood of confusion.
B. Respondent
The Respondent did not reply to the Complainant�s contentions. However, The Ultimate Warranty Corporation�s response argues that "Ultimate�s use of its domain name is fair, not misleading, and is not intended to either divert consumers or to tarnish the trademark or service mark of any competitor." The Ultimate Warranty Corporation argues in essence that its use of the disputed domain names is intended to convey, in a generic sense, the fact that consumers can obtain car warranties direct from The Ultimate Warranty Corporation. The Ultimate Warranty Corporation points to case law outlining the factors for determining whether there is a likelihood of confusion (e.g., strength of mark, relatedness of goods/services, similarity of marks, evidence of actual confusion, marketing channels, likely degree of purchaser care, defendant�s intent in selecting their mark, and likelihood of expansion of product lines), and argues that there is little evidence demonstrating that any "relevant consumer" has been misled or confused. The Ultimate Warranty Corporation also argues that Complainant�s mark is not distinctive, is at best descriptive, and is generic. Finally, The Ultimate Warranty Corporation argues that there is no evidence The Ultimate Warranty Corporation registered or used the disputed domain names in bad faith, and that the parties� websites are dissimilar.
6. Discussion and Findings
Pursuant to paragraph 15 of the Rules, panelists in domain name disputes "shall 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 [they] deem[] applicable."
Under paragraph 4(a) of the Policy, the Complainant must prove the following:
(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.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy the Complainant must show that the domain names at issue are "identical or confusingly similar to a trademark or service mark in which the complainant has rights." Numerous Panels have held that the addition of a generic word to a trademark and/or the use of a plural form of a trademark do not adequately distinguish a domain name from an otherwise identical or confusingly similar trademark. See, e.g., Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802 (September 9, 2000) ("Neither the generic prefix �I� (for �internet�) nor the suffix �.com� nor (in the case of the domain name ) the plural suffix �s� detract from the overall impression of the dominant part of the name in each case, namely the well known trademark TOYOTA, instantly recognizable around the world as denoting the goods of the complainant."). On the facts of this case, the Panel finds that the disputed domain names are confusingly similar to Complainant�s mark.
Any argument that Complainant�s trademark is generic is rejected. Complainant�s trademark is incontestable and the registration for the mark, which is attached to Complainant�s Complaint, "shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant�s ownership of the mark, and of the registrant�s exclusive right to use the registered mark in commerce � on or in connection with the goods or services specified in the" Section 15 affidavit. See 15 U.S.C. � 1115(b).
B. Rights or Legitimate Interests
The Complainant also must demonstrate that the Respondent has "no rights or legitimate interests in respect of the domain name." Paragraph 4(a)(ii) of the Policy.
Complainant has shown that the parties are in the same line of business and that, according to Respondent�s website, Respondent has "over 20 years of experience in the AUTO industry." Complainant also has shown that it has an incontestable registered trademark, with a date of first use approximately five years prior to Respondent�s registration of the disputed domain names.
Under 15 U.S.C. � 1072, Complainant�s "[r]egistration of [the] mark on the principal register � shall be constructive notice of the registrant�s claim of ownership thereof." See also Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 (April 11, 2000). A corollary of this rule, adopted by some Panels, is that under certain circumstances the Respondent has a duty to conduct a search to be sure the trade name it is adopting does not infringe a registered mark. See, e.g., Marketing Mix, Inc. v. Mix, WIPO Case No. D2000-0352 (July 3, 2000); Inter-IKEA Systems B.V. v. McLaughlin Mobility, WIPO Case No. D2000-0499 (August 1, 2000). In this case, for example, Respondent agreed and warranted in Respondent�s Service Agreement with its registrar that "neither [Respondent�s] registration nor use of any of the VeriSign services nor the manner in which [Respondent] intend[ed] to use such VeriSign services will directly or indirectly infringe the legal rights of a third party." In the words of one Panel, "[i]f the warranty to the Registrar is to be regarded as anything other than reckless (i.e. made without caring whether it be true or false) then a registrant should take some reasonable steps to satisfy him/herself that the warranty is true. For example, an on-line search of the U.S. Patent Register might not be an unreasonable precaution for a US registrant to take before attempting a .BIZ registration." MGM Mirage & the Primadonna Company, LLC v. Young Joon Choi, Case No. DBIZ2001-00036 (February 14, 2002).
However, "[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent�s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)":
(i) before any notice to [Respondent] of the dispute, [Respondent�s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [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.
Paragraph 4(c) of the Policy.
The evidence in this regard consists of a letter from Respondent to Complainant, dated December 6, 2002, stating that "[w]e adopted Car Warranties Direct to identify our business because we wanted our prospective customers and customers to know what was our product from our name. We did not know that there was any copyright on the name Warranty Direct or Warranties Direct." Further, a simple search of the U.S. Patent and Trademark Office�s Trademark Electronic Search System does not reveal Complainant�s trademark when searching for "car warranties direct," "car warranty direct," "car warranties," "car warranty," or several other variations (though a search for "warranty direct" or "warranties direct" would uncover Complainant�s trademark as, presumably, would a search from a search firm such as Thomson & Thomson).
When Respondent is engaged in the commercial sale of competitive products, Respondent cannot take advantage of the rights or legitimate interests defenses of paragraph 4(c)(i) or (iii) of the Policy by relying on uses that are infringing, because such uses are not considered "bona fide" or "legitimate" or "fair use." CEC Entertainment, Inc. v. Momm Amed Ia, NAF Case No. FA0009000095740 (October 30, 2000); AltaVista Company v. James A. Maggs, NAF Case No. FA0008000095545 (October 24, 2000); Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000).
In order to determine whether Respondent�s subsequent use of a confusingly similar trademark is infringing, the Panel must examine the likelihood of confusion factors such as those cited in the Response (i.e., strength of mark, relatedness of goods/services, similarity of marks, evidence of actual confusion, marketing channels, likely degree of purchaser care, defendant�s intent in selecting their mark, and likelihood of expansion of product lines). See, e.g., Interactive Products Corp. v. A2Z Mobile Office Solutions, Inc., 326 F.3d 687, 694 (6th Cir. 2003). On the evidence presented in this proceeding: the strength of the mark factor favors Respondent, as the mark does not appear to be strong; the relatedness of goods/services factor favors Complainant; the similarity factor favors Complainant; the actual confusion factor favors Respondent, as one instance of actual confusion is not sufficiently probative; the marketing channels favors Complainant; Complainant has offered no evidence concerning likely degree of purchaser care; the intent factor favors Respondent as there is little evidence of intent; and the likelihood of expansion factor is not relevant because the parties already are in the same business.
Thus, if this were an infringement case in federal court, the question of infringement based on this record would be close - too close to say that the Complainant has met its burden in this administrative proceeding.
The "Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy" notes three "fundamental observations" in connection with the approval of the Uniform Domain Name Dispute Resolution Policy implementation documents. One such observation relates to the "minimalist" nature of proceedings under the Policy, and states as follows:
"In contrast to the policy currently followed by NSI, the policy adopted by the Board in Santiago, as set forth in the final WIPO report and recommended by the DNSO and registrar group, calls for administrative resolution for only a small, special class of disputes. Except in cases involving �abusive registrations� made with bad-faith intent to profit commercially from others� trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of �abusive registrations.� Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all �legitimate� disputes - such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name - to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure."
See "" (emphasis added).
In light of the evidence presented in this proceeding, the Panel finds that the Complainant has not met its burden of demonstrating "no rights or legitimate interests."
C. Registered and Used in Bad Faith
The Complainant also bears the burden of establishing that the "domain name has been registered and is being used in bad faith." Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name 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; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent�s] website 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] website or location or of a product or service on [Respondent�s] website or location.
The March 28, 2003 letter from Respondent�s counsel to Complainant�s counsel indicates that Respondent�s counsel "would be willing to recommend to [Respondent] that they accept a financially acceptable offer" "if [Complainant] were to offer to pay [Respondent] for the costs of changing its name and the amounts spent on advertising." This constitutes some evidence of an intent to sell the disputed domains for valuable consideration in excess of Respondent�s documented out-of-pocket costs directly related to the domain name. Cf. The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770 (October 16, 2002) ("Such an offer for sale constitutes bad faith use according to Paragraph 4(b)(i) of the Policy. Certainly, expenses and/or losses derived from contracts with third parties, web-hosting services or banner agreements do not fall within the scope of �documented out-of-pocket costs directly related to the domain name.�"). However, the disputed domain names had been registered for more than two years before this letter was sent, and were in use for a commercial business prior to the time this letter was sent. As a result, the evidence does not support a finding of bad faith based on registration primarily for the purpose of selling the domain names for an amount exceeding out-of-pocket costs.
The only evidence of a pattern in this case is the fact that two domain names were registered. While the registration of two domain names has, in some cases, been held to have evidenced a pattern, see, e.g., Caterpillar, Inc. v. I, Inc., NAF Case No. FA010600009739 (July 18, 2001); Yahoo! Inc. v. Syrynx, Inc. and Hugh Hamilton, WIPO Case No. D2000-1675 (January 30, 2001); Nokia Corporation v. N a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000), such a finding does not seem appropriate on the facts of this case.
This leaves the factors of disrupting the business of a competitor and attracting Internet users, for commercial gain, by creating a likelihood of confusion. Actual knowledge of the mark is not necessary for these factors to be satisfied. Constructive knowledge is sufficient. See, e.g., Menard Inc. dba Menards v. ZeBo Limited, NAF Case No. FA0112000102973 (February 5, 2002); Sony Corporation v. Times Vision, Ltd., NAF Case No. FA0009000095686 (March 9, 2001); cf. Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 (July 20, 2000).
Complainant�s evidence of an intent to disrupt the business of a competitor is rebutted by Respondent�s evidence that Respondent was unaware of Complainant�s mark and adopted the disputed domain name to describe Respondent�s business. If Complainant�s trademark were arbitrary or famous, or if Respondent had actual knowledge of Complainant�s trademark, this factor might bear reexamination. Cf. Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (January 4, 2001). In the absence of such facts, the Panel does not find bad faith based on this factor.
With regard to the final factor, Complainant has demonstrated that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent�s website or other on-line location. However, in light of the infringement analysis set forth above, Complainant has not adequately (for purposes of this proceeding) established that Respondent is creating a likelihood of confusion with Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of Respondent�s website or location or of a product or service on Respondent�s website or location.
Accordingly, Complainant has not met its burden of demonstrating bad faith.
D. The Proper Respondent
The pleadings submitted by The Ultimate Warranty Corporation assert that The Ultimate Warranty Corporation owns the disputed domain names and suggest that The Ultimate Warranty Corporation is the proper Respondent. The Rules define the Respondent as "the holder of a domain-name registration against which a complaint is initiated." The disputed domain names are registered to Selwyn Colley.
The Ultimate Warranty Corporation has submitted an e-mail message from Mr. Colley, an affidavit from Mr. Clark (a Vice-President of Warranty Administers Inc., a division of The Ultimate Warranty Corporation), and a contract with Car Warranties Direct LLC, each of which it argues support the conclusion that The Ultimate Warranty Corporation owns the disputed domain names. Mr. Clark�s affidavit states that "Car Warranties Direct LLC, was the owner of the domain name , as registered with Network Solutions, LLC," that "[s]ince the purchase of the assets of Car Warranties Direct LLC" Mr. Clark has spoken with representatives of Network Solutions, LLC "for the purpose of revising and/or updating Network Solutions� records relating to the ownership of the domain name," and that Mr. Clark obtained Mr. Colley�s permission to do so. The e-mail message from Mr. Colley states that Extended Auto Warranty Corp / Warranty Administrators "took over the domain name as of May 1st." The contract, which is dated May 15, 2003, and which is between Car Warranties Direct LLC and The Ultimate Warranty Corporation, transfers from Car Warranties Direct LLC to The Ultimate Warranty Corporation "[a]ll right, title, and interest in and to [Car Warranties Direct LLC�s] website located at subject however to the terms of Paragraph 6(c)." Paragraph 6(c) states that The Ultimate Warranty Corporation "shall � [c]hange the domain name of the website currently operated and owned by [Car Warranties Direct LLC]."
To say the least, there is some confusion as to the ownership of at least one of the disputed domain names. Neither the contract nor Mr. Clark�s affidavit appears to address the disputed domain name . Mr. Colley�s e-mail indicates that Extended Auto Warranty Corp / Warranty Administrators (not The Ultimate Warranty Corporation) took over the domain name as of May 1, 2003, but the contract is dated two weeks later. Mr. Clark�s affidavit identifies the company as Warranty Administers Inc. (not Warranty Administrators). The contract is between Car Warranties Direct LLC and The Ultimate Warranty Corporation, yet the disputed domain names are registered to Selwyn Colley. The contract purports to transfer to The Ultimate Warranty Corporation all right, title, and interest in Car Warranties Direct LLC�s "website located at �,�" but requires The Ultimate Warranty Corporation to "[c]hange the domain name of the website," which has not been done.
In light of the difficulties, discussed above, with the proof submitted by The Ultimate Warranty Corporation, the Panel finds that The Ultimate Warranty Corporation has not made a sufficient showing to prove it is the proper Respondent.
Thus, the decision in this proceeding addresses the facts relating to Selwyn Colley�s registration and use of the disputed domain names. As noted above, the affidavit submitted on behalf of The Ultimate Warranty Corporation indicates that The Ultimate Warranty Corporation has attempted to update the "ownership" record for the domain name. Because the record is not fully developed with respect to the presence or absence of rights or legitimate interests, or bad faith, on the part of The Ultimate Warranty Corporation and its divisions, subsidiaries, and affiliates, and because The Ultimate Warranty Corporation is not "the holder of a domain-name registration against which a complaint is initiated," this decision does not address the potential future transfer of the disputed domain names.
7. Decision
For all the foregoing reasons, the Complainant is denied.
Bradley A. Slutsky
Sole Panelist
Dated: April 5, 2004
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