WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E, Inc. v. My Cars Space
Case No. D2006-0491
1. The Parties
The Complainant is E, Inc., Santa Monica, California, United States of America, represented by Hitchcock Evert LLP, United States of America.
The Respondent is My Cars Space, Brooklyn, New York, United States of America, represented by The Law Offices of Robert M. Cavallo P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain names and are registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2006. On April 18, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On April 20, 2006, Melbourne IT trading as Internet Names Worldwide 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, billing, 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 April 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�14,�2006. The Response was filed with the Center on May 11, 2006.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June�1,�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
Complainant is a leader in the automotive information industry and has been since 1966.
Complainant introduced its online “carspace” service at “”.
Complainant acquired its domain name on September 1,�2005, and launched the “” website in February 2006.
Complainant filed a federal trademark application for CARSPACE as a word mark and another for CARSPACE and Design on March 3, 2006.
Complainant actively marketed the advertising opportunities associated with to numerous manufacturers of automobiles and automotive suppliers from the period October 2005, through January 2006.
On February 27, 2006, was featured on a two minute television segment of the CNBC show “On the Money”.
Business Week Online published an article marking the introduction of , as well as the pent-up demand for Complainant’s on-line service.
A search of “carspace” through any major Internet search engine results in numerous responses relating to Complainant’s service.
Respondent registered the domain names at issue on January 12,�2006. The site for “www.” is due to be launched in the Fall of 2006. The site for “www.” is currently “unavailable”.
Respondent filed a trademark application on January�31,�2006 (US Trademark App. Ser. No. 78/803,067) for the mark WWW.MYCARSSPACE.COM WHERE YOUR CAR IS THE STAR!!! & Logo Design.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
With respect to paragraph 4(a)(i) of the Policy Complainant contends that:
The only differences between Complaint’s trademark and domain name and Respondent’s domain names are: (i) addition of the first person pronoun “my”; (ii) use of the word “cars” instead of “car” which indicates either a plural or a possessive form; and (iii) use of the TLD “.net” instead of “.com”.
The addition of “s” merely denotes a plural or possessive form and is even a common misspelling. Many prior WIPO decisions have recognized “that minor alterations to a well-known mark are not sufficient to set aside a finding of identicality or confusing similarity.”
GTLDs and ccTLDS shall be disregarded in the analysis as to whether a domain name and a trademark are identical or confusingly similar.
Rights or Legitimate Interests
With respect to paragraph 4(a)(ii) of the Policy Complainant contends that:
Respondent does not have any trademark or intellectual property rights or any other legitimate interest in either of the domain names at issue.
There is no evidence apparent to Complainant to suggest that Respondent ever used the domain names and/or a name closely corresponding to Complaint’s CARSPACE mark prior to Complainant’s marketing of the “CarS” online service. Additionally, there is no indication that Respondent used “My Cars Space” or any variation thereof as its legal or business name prior to Complainant’s marketing of its CarS online service.
Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. Respondent’s home page does not offer any substantive content. Respondent has attempted to maximize confusion with Complainant’s domain name by planning to offer an online service competitive with Complainant using confusingly similar domain names.
Respondent’s pending trademark application is irrelevant to whether it has legitimate rights or interests in the disputed domain names and does not support any rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
With respect to paragraph 4(a)(iii) of the Policy Complainant contends that:
Respondent has registered and used the contested domain names in bad faith because Respondent has demanded an exorbitant amount of money from Complainant for transfer of the disputed domain names. Complainant proposed a monetary settlement in the amount of US$2,500. A subsequent letter from Respondent’s counsel advised that Respondent would not transfer the domain names unless Complainant agreed to pay US$55,000.
Second, Respondent’s selection of two domain names that are virtually identical (except for addition of “my” and an extra “s”) to the trademark of Complainant indicates a bad faith intent. Respondent has characterized the future content of its web site in a manner that would be directly competitive to Complainant’s service - an automotive lifestyle social networking site intended to help automotive enthusiasts get connected.
B. Respondent
The Respondent notes that the owner of the domain name is AA My Cars S Inc. rather than My Cars Space a/k/a Danielle Safonte as is stated in the Complaint. Respondent asks that this action be dismissed due to the fact that it was commenced against an improper party.
The Panel notes that the organization name listed in the Whois data base for the domain name at issue is My Cars Space and, therefore, disagrees with the Respondent that the Complaint was filed in the name of the wrong party. The date of incorporation of AA My Cars S, Inc. was January 24, 2006, later than the date of the registration of the domain name on January 12, 2006.
Identical or Confusingly Similar
With respect to paragraph 4(a)(i) of the Policy Respondent contends that:
At the time of registration of the Domain Name on January 11, 2006, there was no trademark or service mark claim filed for any names similar to My Cars Space.
Further, Complainant did not register any trademark protection until March�3,�2006. This filing was clearly done in bad faith and knowingly conflicts with a mark already filed.
Complainant had not demonstrated that it has a legitimate trademark interest in CarSpace or CarS. Complainant presented its ideas to potential investors, but did not render services in commerce until February 2006, a date subsequent to Respondent’s trademark filing.
Respondent filed for its Trademark/Servicemark without any knowledge of Complainant’s activities, as said activities were not done publicly, and similarly no services had been rendered.
Rights or Legitimate Interests
With respect to paragraph 4(a)(ii) of the Policy Respondent contends that:
Respondent holds a legitimate business interest with respect to the domain names at issue because Respondent started searching for programmers to hire for an expected full launch of the website. The fact that the prospective programmers signed Non-Disclosure agreements shows that Respondent was attempting to protect what it believed to be an original idea.
The fact that Respondent incorporated its business on January 24, 2006, filed an application to register its trademark on January 31, 2006, and obtained a Tax ID number on February 2, 2006 shows its steps to create a legitimate business.
Respondent circulated a letter discussing its proposed website to begin in the Fall 2006 to numerous businesses starting mid-January 2006.
The foregoing activities were being conducted by Respondent prior to it being contacted by Complainant and prior to any publicity regarding its site or services.
Registered and Used in Bad Faith
With respect to paragraph 4(a)(iii) of the Policy Respondent contends that:
Complainant first used its mark in February 2006, when the Complainant’s website went public. The fact that the formal launch of Complainant’s website did not occur until February 2006, after Respondent’s trademark application filing, makes it virtually impossible to claim it was done in a “bad faith” manner.
In Response to Complainant’s statement; “Given Respondent’s unreasonable financial demand, Complainant was left with no alternative but to seek resolution through the UDRP” Respondent states that it did not ask for a payment from Complainant to transfer the domain name to the Complainant. Rather, Respondent was willing to cease all business activities, assign all interests over to Complainant and agree to not compete with Complainant.
With response to the Complainant’s allegations to the home page having 446 total visitors, Respondent stated that over 1100 users already signed up and are participating in similar activities the page will offer. Respondent states that its formal use of the disputed Domain Name began when its mys profile was created on January�16,�2006, a date prior to Complainant’s February 2006 use.
Respondent filed for a Trademark on an intent to use basis. The very purpose of this type of filing is to protect a mark prior to using it in commerce. Complainant’s assertion that Respondent’s filing does not protect its mark and give Respondent priority in the name is in direct conflict with the established Trademark law.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the Domain Names at issue are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has trademark rights in the mark CARSPACE due to the “” website which began in February 2006 and the marketing of the site from the period October 2005 through January 2006.
Second, as to identicality or confusingly similarity, the Panel finds that the addition of the term “my” does not distinguish the Domain Name at issue from Complaint’s trademark. “The addition of “my” is not sufficient to avoid confusion.” Sony Kabushiki Kaisha v. Sin, Eonmok, WIPO Case No. D2000-1007 (November 16, 2000) (transferring the domain name ).
Nor is the addition of “s” to “cars” in the Domain Names significant in distinguishing the Domain Names from Complainant’s mark. See Sally Holdings, Inc. v. Registrant, WIPO Case No. D2004-1059 (March 8, 2005) finding that “…the addition of a single “s” and the pluralizing of the name to ‘supplies’ at the end of the domain name is in no way sufficient to discharge the quite clear evidence that the domain name in dispute is objectively identical or at least confusingly similar to the Complainant’s marks…”(transferring the domain name ). Finally, gTLDs and CCTLDS shall be disregarded in the analysis as to whether a domain name and a trademark are identical or confusingly similar. Thus the “.com” and the “.net” in the Domain Names should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
B. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.
It is Complainant’s burden to prove that Respondent has no rights or legitimate interests in respect of the Domain Name. However, Respondent has rebutted Complainant’s contentions. The record contains evidence that Respondent had made demonstrable preparations to use the Domain Name in connection with a bona fide business. Specifically, Respondent incorporated its business on January 24, 2006, filed an application to register its trademark on January 31, 2006 and obtained a Tax ID number on February 2, 2006, shows its steps to create a legitimate business. Respondent circulated a letter discussing its proposed website to begin in the Fall 2006 to numerous businesses starting mid-January 2006. Respondent started searching for programmers to hire for an expected full launch of the website. Prospects signed a nondisclosure agreement.
These sorts of activities could be either preparatory to a legitimate business launch or thinly veiled attempts to paper the record to make it appear as if legitimate business were planned. However, it is not possible on the present record to reject Respondent’s claim that it was making demonstrable preparations to use the domain name in a bona fide business. While the evidence is thin, it has not been rebutted. Accordingly, the Panel finds that Respondent has made a sufficient showing that it, before notice of the dispute, had preparations to start a bona fide business. Bergen’s Greenhouse, Inc. v. Jennifer Barnes, WIPO Case No.�D2000-1503 (Transfer Denied; Demonstratable preparation where Respondent has submitted evidence of various filings to do business under the disputed domain name in the State of California, and the preparation of a comprehensive business plan). It may be that discovery in litigation could prove this preparation illusory, but the record is not clear enough now to reject Respondent’s contentions.
C. Registered and Used in Bad Faith
In view of the Panel’s ruling that Complainant has failed to satisfy Paragraph 4(a)(ii) of the Policy, there is no need to rule on paragraph 4(a)(iii). However, the Panel notes that Policy, paragraph 4c)(i) requires that the consideration demanded by the Respondent for the domain names be in excess of the Respondent’s documented out of pocket costs directly related to the domain names. It is undisputed that the Respondent requested the sum of US$55,000 for the sale of the domain name in dispute to the Complainant.
To be sure there are many cases where Respondent’s large demand for money to transfer a domain name has been considered evidence of bad faith use. See EMI Records Limited v. Complete Axxcess, WIPO Case No. D2001-1230 where the Panel found that “the consideration demanded by the Respondent was obviously more than any out-of-pocket costs that the Respondent might have incurred directly related to the domain name in dispute. Accordingly, the Panel finds that the circumstances in paragraph 4(b)(i) of the Policy have been proven by the Complainant.” However, these are generally cases where the Complainant has prevailed in proving that the Respondent has no legitimate interest in the domain name. Obviously, under these circumstances, the demand for compensation beyond expenses can reasonably be viewed as a kind of extortion. But where legitimate rights may exist, it is not per se unreasonable to make higher demands. While exorbitant demands may in many cases be sufficient to prove bad faith, this is not an absolute rule. Domain name owners acting in good faith may have exaggerated or unrealistic opinions of the worth of their domain names. This is not necessarily bad faith.
Moreover, it cannot be ignored that there is scant evidence that Respondent knew of Complaint’s rights when it registered the challenged domain name. Respondent registered its domain name before Complaint launched its website or went public with news of its intentions. Under these circumstances, the Panel is reluctant to find bad faith registration.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Dated: June 20, 2006
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