WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings, Inc. v. Alfredo Rowland
Case No. D2008-0960
1. The Parties
Complainant is TPI Holdings, Inc., of Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC, United States of America.
Respondent is Alfredo Rowland, of Norcross, Georgia, United States of America.
2. The Domain Names and Registrars
The disputed domain names are:
Each is registered with Abacus America, Inc. doing business as Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 25, 2008. On June 27, 2008, the Center transmitted by email to Abacus America a request for registrar verification in connection with each of the domain names at issue. On June 30, 2008, Abacus America transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the and domain names while Isaura Cruz de Guevara is listed as the registrant for the domain name, providing contact information, and confirming other details of the pertinent registration agreements.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on July 9, 2008 by e-mail and on July 16, 2008 in hardcopy. The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2008.
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 19, 2008. 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.
Subsequent to the Panel’s appointment, on August 19, 2008 an e-mail communication from Alfredo Rowland of TexMexTrader, Inc. advised the Center, among other things, that:
“…. Know they want to take this 3 domains that have also the word trader, I still beleave trader is a comun word and that they are wanting to own that word,Thats not right. …
Theres not much to say regarding this domains based on the fact that I have not yet created a web site, maybe in the future I will.”
4. Factual Background
Complainant owns a United States federal trademark registrations for the mark AUTO TRADER and AUTOTRADER.COM, registered, respectively, in 1983 and 2000 for, among other things, periodical publications, advertising services, and providing information, via the Internet, about vehicles that are for sale via the Internet. Currently, Complainant’s exclusive licensees use the marks: AUTO TRADER for periodicals featuring vehicle classified advertising and AUTOTRADER.COM for a website, located at “”, that provides online classified advertising services for vehicles.
Respondent registered the disputed domain names in 2007 and 2008. The domain name leads to a generic “placeholder” web page, while the other two names are not active.
5. Parties’ Contentions
A. Complainant
(1) Each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant owns the marks AUTO TRADER and AUTOTRADER.COM.
Complainant also owns more than 50 other United States federal trademark registrations for marks that include the term “trader” for a wide variety of printed and on-line publications featuring classified advertising.
Complainant believes that until recently (but including the time that Respondent registered the domain name), an entity called Automotive Lending Solutions was doing business as “ALS” for an online automobile financing company that did business online at “.”
Respondent registered the disputed domain names without Complainant’s authorization, knowledge or consent. Complainant believes that Respondent has not been authorized to use the names or marks of Automotive Lending Solutions either.
Respondent is the registrant of almost 100 domain names.
In another unrelated contact between Complainant and Respondent, Respondent was uncooperative. In connection with this proceeding, Respondent confirmed to Complainant’s counsel that he was the registrant of the domain name and made an unsolicited offer to Complainant’s counsel to sell that domain name and at least one other “trader” domain name (that is not the subject of this Complaint) to Complainant for USD50,000.00.
The domain name is confusingly similar to Complainant’s AUTO TRADER marks, merely adding the generic term “latino” to Complainant’s AUTO TRADER marks and the “” domain name.
Respondent’s registration of the disputed domain names is an obvious attempt to leverage Complainant’s goodwill in the online automotive market by attaching generic, descriptive, or geographic terms to Complainant’s famous “trader” marks, which include the AUTO TRADER marks.
Intent to trade off of the goodwill of another’s trademark is probative of and raises a presumption of likelihood of confusion.
consists of a generic or descriptive term, followed by the term “trader.” The only difference between and Complainant’s AUTO TRADER marks is the substitution of the geographically descriptive term “TexMex” for the descriptive term “auto.”
Respondent has registered in a deliberate attempt to trade off of the goodwill of Complainant’s “trader” marks as well as the goodwill associated with Automotive Lending Solutions.
(2) Respondent has no rights or legitimate interests in respect of any of the domain names
Complainant has not authorized Respondent’s use of any of its “trader” marks, creating a presumption that Respondent cannot establish that it has rights or any legitimate interest in any of the domain names.
Because Respondent has knowingly registered confusingly similar domain names, there can be no bona fide use under the Policy.
Use of a directory placeholder for the domain name and the failure to any of the domain names for an active website evidence that Respondent has no legitimate use for the disputed domain names.
Respondent is not commonly known by the , , or domain names and has not acquired trademark or service mark rights in any of the domain names. Nothing in Respondent’s WHOIS information implies that Respondent is commonly known by the disputed domain names, and Respondent has not offered any proof of any trademark rights owned by Respondent for any of the domain names.
(3) Each of the disputed domain names was registered and is being used in bad faith.
Because of the fame of Complainant’s AUTO TRADER and other “trader” marks, Respondent must have chose and registered the disputed domain names with actual knowledge of Complainant and the “” website. Respondent’s only possible purpose in registering and using the disputed domain names would be to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement.
Upon being contacted by Complainant regarding the disputed domain names, Respondent made an unsolicited offer to sell the domain name and at least one other domain name unrelated to this proceeding for USD50,000.00. This unsolicited offer indicates that Respondent registered the domain name for the primary purpose of selling it for “valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.”
Complainant’s headquarters are located in Atlanta, Georgia, and Respondent is located in the greater Atlanta metropolitan area. It follows that Respondent knew or should have known of Complainant’s famous marks and services. Registration in the face of such knowledge is further evidence of bad faith.
The only possible reason that Respondent would have to register or use the disputed domain names would be to increase traffic to Respondent’s websites by creating confusion with Complainant’s famous marks.
Respondent’s failure to make use of the Domain Names is also evidence of bad faith.
Respondent’s hoarding of multiple domain names is evidence of bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions (but did communicate with the Center, as noted above).
6. Discussion and Findings
A. Procedural Matters
The Complaint seeks relief as to three domain names. The Rules provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” See Rule 3(c). Here, the domain names at issue appear to be registered in the name of two separate individuals, and are registered to Alfredo Rowland, while is registered to Isaura Cruz de Guevara.
However, the email addresses provided in the registration for all three domain names are the same and the Complaint alleges that Respondent Alfredo Rowland confirmed in a telephone conversation with Complainant’s counsel that he is the registrant of the domain name. Further, Rowland has communicated with the Center regarding all three of the domain names at issue in this proceeding. In light of the foregoing, but without suggesting that the same result would obtain under other circumstances, the Panel concludes that Alfredo Rowland is responsible for, and is apparently the beneficial holder of, each of the registrations in issue. Therefore, although the Complaint relates to more than one domain name, the domain names are held, in effect, by the same domain name holder.
B. Substantive Matters
In order to prevail, Complainant must prove, as to each of the disputed domain names, that:
(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.
(iii) The disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing each of the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
(1) Identical or Confusingly Similar
Complainant has established its rights in the mark AUTO TRADER and AUTOTRADER.COM by virtue of the evidence of its United States federal registrations for those marks.
Complainant does not argue that any of the disputed domain names are identical to any mark in which it has rights. Thus, Complainant must establish that each of the disputed domain names is confusingly similar to a mark in which it has rights.
The Panel is of the view that the test for confusing similarity is determined by the degree of resemblance between the mark at issue and the alphanumeric string making up the disputed domain name as to appearance, sound, and meaning. Thus, other factors, such as respondent’s intent, distinctiveness of complainant’s mark, how well-known the mark is, and how long the mark has been used, which are relevant in a traditional trademark infringement action, are not part of this analysis.
A domain name is likely to be deemed confusingly similar to a mark if it incorporates a mark or a variation of a mark. Thus, with respect to , the Panel finds that the disputed domain name is confusingly similar to Complainant’s AUTO TRADER and AUTOTRADER.COM marks. The disputed domain name includes each of those marks in their entirety1 followed by the term “latino.” Here, the Panel finds that the addition of that generic term after Complainant’s AUTO TRADER mark (or at the end of the AUTOTRADER.COM mark) simply reinforces the trademark function of Complainant’s mark.
With respect to and , however, the Panel finds that the disputed domain names are not confusingly similar to Complainant’s AUTO TRADER and AUTOTRADER.COM marks.2 In those cases, the disputed domain name does not incorporate Complainant’s entire mark. Instead, the similarity is limited to only a single component of Complainant’s marks – the term “trader” – at the end of the domain name. Otherwise, the appearance, sound, and meaning of the disputed domain names is quite dissimilar. In each case, the terms “texmex” and “als” (which could be as easily understood as a reference to the possessive “Al’s” as easily as to the acronym “ALS”) appear to be the more dominant (albeit only modestly so) portions of the domain names.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s marks and that the disputed domain names and are not identical or confusingly similar to Complainant’s marks.
(2) Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(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 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.
The Panel need not decide whether the Complainant established a prima facie case in relation to these elements as to the and domain names, in light of its determination, set out above, that those domain names are neither identical nor confusingly similar to Complainant’s marks.
As for the domain name, the Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c)(i)-(iii) of the Policy.
The “www.” website is not active and there is no evidence that Respondent engaged in – or could under the circumstances have engaged in – preparations to make a legitimate use of that domain name. Likewise, there is no reason to believe, from the WHOIS record or otherwise, that Respondent is or could be known by the domain name.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
(3) Registered and Used in Bad Faith
Complainant must establish that each of the disputed domain names was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
For the reasons noted above, the Panel need not assess this element as to the and domain names.
As for the domain name, Complainant argues that Respondent’s conduct falls within paragraph 4(b)(i) because he proposed to sell the domain name, along with at least one other unrelated domain name for USD50,000. Complainant provides no documentary evidence regarding this offer and scant detail3, making it difficult to assess the offer under paragraph 4(b)(i) of the Policy.
While additional detail regarding the offer to sell the disputed domain name would have been helpful, it is not necessary. Complainant’s rights in its AUTO TRADER and AUTOTRADER.COM marks clearly predate Respondent’s registration and use of the domain name. Complainant’s rights in those marks appear to be well-established and well-known. It is not unreasonable to impute to Respondent knowledge of Complainant’s rights in registering the domain name. Further, the Panel has already concluded that Respondent has no right or legitimate interest in the domain name and that Respondent’s site does not make a bona fide offering of goods or services.
Under these circumstances, along with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the domain named in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant and that the Complaint be denied as to the and domain names.
Debra J. Stanek
Sole Panelist
Dated: September 1, 2008
1 The presence or absence of either a space between “auto” and “trader” or a top-level domain is irrelevant for these purposes.
2 The Panel also compared these disputed domain names to those included in Complainant’s list of its other “trader” marks and finds that they are not similar in appearance, sound, or meaning to those marks.
3 The Complaint does not identify the other domain name or indicate whether or not it resolved to an active site. Further, elsewhere the Complaint suggests that the offer may have included multiple domain names: “[Respondent] made an unsolicited offer to Complainant’s counsel to sell the domain name and at least one other ‘TRADER’ domain name.” (emphasis added).
Full & Egal Universal Law Academy