WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. GBD Capital LLC
Case No. D2006-0350
1. The Parties
The Complainant is E, Inc., Santa Monica, California, United States of America, represented by Hitchcock Evert LLP, Dallas, Texas, United States of America.
The Respondent is GBD Capital LLC, Deptford, New Jersey, United States of America, represented by Matthew Doherty, Cambridge, Massachusetts, United States of America.
2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2006. On March 22, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 22, 2006, the Registrar transmitted by email 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. The Center verified that 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 March 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�19,�2006. The Response was filed with the Center on April 18, 2006.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May�15,�2006. 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.
4. Factual Background
The Complainant is a New York corporation headquartered in California. It has published automotive information, prominently car buying guides, since 1966. Beginning in 1995, the Complainant has operated an automotive information website at “www.e.” The Complainant recently launched a separate “automotive lifestyle social networking site” at “.” The Complainant registered that domain name on September 1, 2005, and in October 2005, began marketing the site concept to potential advertisers such as the manufacturers of automobiles and automotive supplies. The website was made available to the public on February�27,�2006, and announced that day in a press release. Since then, the website has attracted media attention as well as Internet visitors, and it appears in thousands of search engine responses to the query “carspace.”
On March 3, 2006, the Complainant submitted applications to the United States Patent and Trademark Office (USPTO) requesting the registration of the service mark CARSPACE, both as a standard character mark and as a design incorporating the words “carspace.” The applications for both marks indicate February 8, 2006, as the date of first use and also first use in commerce. The design appears on the website at “,” along with the “SM” symbol indicating that the Complainant asserts rights to the design as a service mark.
The Respondent is a New Jersey limited liability company founded by three individuals who “invented a novel website that allows automotive enthusiasts to connect with each other.” The Respondent developed its website in January 2006, first making it public on January 26, 2006, on a Massachusetts Institute of Technology (MIT) domain available to one of the founders, at the URL “.” The Respondent has furnished printouts of messages posted on the site beginning on that date.
On January 19, 2006, one of the Respondent’s founders, Daniel Gosser, registered the Domain Name , and on January 25, 2006, he registered the Domain Name . At some time after March 1, 2006, these registrations were changed to the Respondent’s name, using the same postal address and telephone number for the contact data.
The Respondent states that its founders read publicity about the Complainant’s website located at “” on February 28, 2006, the day after its launch. In response, they moved their own website that same day from the MIT URL to the previously registered Domain Name , where it has remained since. The other Domain Name, , redirects visitors to the site to which resolves.
The next day, March 1, 2006, counsel for the Complainant contacted Mr. Gosser by telephone, asserted the Complainant’s rights to the name CARSPACE, and asked the Respondent to cease using the Domain Names. The Respondent did not comply with this request, and three weeks later the Complainant filed this Complaint with the Center.
5. Parties’ Contentions
A. Complainant
The Complainant asserts common-law rights to the service mark CARSPACE. It argues that the Domain Names are identical or confusingly similar to this mark, and that the Respondent never used that name in commerce until the Complainant launched its website at “.” The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Names and registered and used them in bad faith, in an effort to take advantage of the Complainant’s fame and intensive marketing by confusing Internet users as to the source of the website to which the Domain Names resolve.
B. Respondent
The Respondent contends that the Complainant’s alleged mark is not distinctive. The Respondent refers to the popular MySpace social networking site, suggesting the subsequent appeal of using any common word followed by the word “space” to designate a social networking website with a particular theme. The Respondent says that its founders searched the USPTO trademark database before registering the Domain Names in January 2006 and also after being contacted by the Complainant’s counsel, finding no similar marks registered or subject to pending applications. The Respondent denies any bad-faith intent to exploit marketing surrounding the Complainant’s new “” website, noting that its founder Daniel Gosser registered the Domain Names in January 2006, several weeks before the Complainant announced and launched that website.
6. Discussion and Findings
Under Paragraph 15(a) of the Rules,
“A Panel 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 it deems applicable.”
Paragraph�4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has two recent, pending applications with the USPTO to register the CARSPACE service mark, respectively as a standard character mark and as a graphic design incorporating that name. The Domain Names, which differ from the claimed mark only by the addition of the article “the,” are nearly identical.
However, it is not clear that the Complainant has established sufficient grounds for a UDRP complaint based on a common-law mark comprised of two common English words first used as a mark on February 8, 2006, according to the Complainant’s own trademark applications. As the Panel observed in Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, citing the United States federal Seventh Circuit Court of Appeals in Mil-Mar Shoe v. Shonac, 75 F. 3d 1153, 1161 and n.15 (7th Cir. 1996):
“it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage.”
UDRP Panels faced with claims based on common-law marks have required evidence that the name has become a distinctive identifier associated with the complainant or its goods and services. Evidence of a protectible “secondary meaning” might include the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. See, e.g., Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 (insufficient evidence that “American Background” had acquired a secondary meaning). In the Panel’s view, the Complainant’s evidence of such a secondary meaning acquired over the past three months is very slender.
However, given the Panel’s conclusions below on the element of bad faith, it is not necessary for the Panel to determine whether the Domain Names are identical or confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent does not claim protected marks similar to the Domain Names, but it indisputably uses the Domain Names in commerce to identify its own social networking website for automobile enthusiasts.
The Complainant questions the legitimacy of the Respondent’s interest in the Domain Names, based on the Complainant’s inference that the names were selected in bad faith in order to attract Internet users who might confuse the Domain Names with the Complainant’s more heavily advertised website at “.” Since this allegation goes to the heart of the bad-faith argument, it is discussed below in connection with the third element of the Complaint.
C. Registered and Used in Bad Faith
The Complainant argues that the Respondent’s registration and use of the Domain Names “was part of a scheme to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion” with the Complainant’s website at “.” The Complainant has the burden of persuasion on this point, as for each of the elements of the UDRP Complaint.
There are two critical problems with the Complainant’s inference of bad faith.
First, its claimed CARSPACE service mark is not registered, long-established, or particularly distinctive. Consequently, the argument that the Respondent must have chosen the Domain Names to engender confusion is simply not as compelling as it is in some other UDRP proceedings. Contrast, for example, a proceeding cited by the Complainant, Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672. There, the registration and use of was deemed to be in bad faith since (a) the complainant had registered, advertised, and used the much more distinctive TELSTRA and TELSTRA SHOP marks for several years before the disputed domain name registration, and (b) the respondent in that case did not offer plausible evidence that it was engaged in a business relevant to its claimed reasons for selecting the domain name.
The circumstances here are quite different. The Complainant’s claimed CARSPACE service mark is new and generic (compared to the unique and established TELSTRA mark), and the Respondent is actually operating its own social networking website for which the Domain Names are manifestly relevant. It may well be that the Respondent is taking advantage of the phenomenal popularity of the “MySpace” social networking website, but that is not the Complainant’s mark. It is entirely possible, therefore, that the parties each came up with the idea of using “carspace” for a social networking site with an automotive focus, as each claims, without any conscious effort to imitate the other or engender confusion in the marketplace. Indeed, both sites are new and by all accounts appear to be attracting their own audiences – including some users who, based on copies of posted messages, appear to enjoy visiting both sites.
The second flaw in the Complainant’s theory is timing. The Complainant registered the domain name in September 2005, but did not immediately launch a website or begin using CARSPACE as a mark. The Respondent notes that it found no such mark when searching the USPTO database. It is possible that the Respondent’s founders discovered the Complainant’s domain name registration for “” when they prepared to register the Domain Names, although there is no evidence in the record for this. In any event, there was no mark to infringe at the time the Respondent’s founders registered the Domain Names and launched their website on the MIT domain, nor is there any clear evidence that the Complainant had established any goodwill in an unregistered trademark. Both Domain Names were registered weeks before the Complainant claims first use of the CARSPACE mark on February 8, 2006, and before it announced and launched its website at “” on February 27, 2006. The Respondent did not move its automotive social networking website to the Domain Name until the Complainant launched its own website, but the Respondent already had the Domain Names registered and had been operating its website for a month on an MIT domain with the words “thecarspace” in its URL.
Thus, the Panel cannot, on this record, conclude that the Respondent registered and used the Domain Names in a bad-faith attempt to create “a likelihood of confusion with the complainant’s mark” (Policy, paragraph 4(b)(iv)), since there is not even a claim that the mark existed at the time the Respondent registered the Domain Names and began using the words “thecarspace” in connection with its own social networking website.
The Complainant cites a series of online forum postings as supporting evidence of the Respondent’s bad-faith intent. On March 1, 2006, the day after the Respondent moved its website from “” to “www.,” a “jbell” (identified as John Bell, one of the Respondent’s founders) promoted the Respondent’s website on a forum at “.” Another user posted the following message:
“Surely not the same as ? I don’t think Edmunds would be happy at your choice of domain name.”
Bell responded as follows:
“the script is all custom. made from scratch. and edmunds can do what they want. ;p”
(The Complainant interprets the emoticon in Bell’s message as depicting a person winking and rudely sticking out his tongue, which the Respondent does not dispute.)
This message, on its face, does not imply a bad-faith attempt to trade on the Complainant’s mark. The Respondent had reason to believe that the Complainant’s mark was unregistered, new, and weak, and that it would not necessarily preclude the Respondent’s use of its previously registered Domain Names, especially given its priority in actually using the phrase “thecarspace” in connection with an automotive social networking website. The defiant tone of Bell’s message suggests at most that the Respondent recognized the possibility of a dispute with the Complainant, but chose to stand its ground. The thread of messages posted on the forum includes other comments making comparisons between the two websites, as well as Bell’s promises to make further improvements to the Respondent’s website. This all suggests vigorous competition more than a sly attempt to mislead Internet users as to the source of the Respondent’s website.
Overall, in fact, the record indicates competition rather than deliberate confusion. Both parties registered domain names incorporating the words “carspace” before the other party launched a website using a similar name or established a similar mark. The Respondent used “thecarspace” in its URL on an MIT domain until the Complainant publicly launched its site at “www.,” and then the Respondent hurriedly migrated its site to the previously registered Domain Name , in an apparent attempt to strengthen the association in the marketplace between the words “thecarspace” and its own website. It appears that both parties were developing similar concepts with similar names (although executed quite differently), and the parties can, of course, dispute trademark rights and priority in court or before the USPTO. But a race to the market is not tantamount to a bad-faith effort to trade on another’s established reputation.
The Panel concludes that the Complainant has not met its burden of establishing the probability of bad-faith registration and use under the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: May 26, 2006
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