WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TPI Holdings, Inc. v. Carmen Armengol Case No. D2009-0361 1. The Parties
Complainant is TPI Holdings, Inc. of Atlanta, Georgia, United States of America (“Complainant”), represented by Dow Lohnes PLLC, United States of America.
Respondent is Carmen Armengol of Boston, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2009. On March 19, 2009, the Center transmitted to the Registrar by email a request for registrar verification in connection with the Domain Name. On March 20, 2009, the Registrar transmitted by email to the Center its verification response, confirming that the named Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 20, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 21, 2009.
The Center appointed Dana Haviland as the sole panelist in this matter on May 6, 2009. 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 has produced evidence of its ownership of six United States trademark registrations for the AUTO TRADER, AUTOTRADER and AUTOTRADER.COM marks (collectively, the “AUTO TRADER Mark”), dating back as far as 1983 and evidencing use of the AUTO TRADER Mark since 1974. The AUTO TRADER Mark is used by Complainant and its licensees in connection with publications and websites advertising automotive sales and services.
The Domain Name was registered on March 6, 2007, according to the Registrar's WhoIs database. It does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to the AUTO TRADER Mark in which Complainant asserts prior rights, that Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. Complainant requests transfer of the Domain Name. B. Respondent
According to the WhoIs database, the registrant of the Domain Name is Carmen Armengol of Boston, Massachusetts, the named Respondent in this administrative proceeding. As an annex to the Complaint, Complainant has submitted an affidavit by Respondent Armengol in which she states that she did not register or know of the registration of the Domain Name, that she is concerned about identity theft as a result of the use of her name and personal information for the fraudulent registration, and that she consents to cancellation of the Domain Name.
Respondent has not submitted a reply to the Complaint. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). A. Identical or Confusingly Similar
Complainant has shown that it is the owner of the AUTO TRADER Mark used by Complainant and its licensees in connection with publications and websites advertising sales of vehicles and automotive services. Complainant's rights in its AUTO TRADER Mark existed and were used for many years prior to the registration of the Domain Name.
Respondent's Domain Name incorporates Complainant's AUTO TRADER Mark, adding only the generic term “transactions”. The inclusion of this generic term does not negate the confusing similarity of the Domain Name to Complainant's AUTO TRADER Mark. On the contrary, the addition of the word “transactions” to the Domain Name increases the confusing similarity, as Complainant's Mark is used in connection with advertising for automobile sales transactions.
Many UDRP panelists have held that the addition of descriptive or generic wording to a mark satisfies paragraph 4(a)(i) of the Policy, requiring that a disputed domain name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company,WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey,WIPO Case No. D2007-0555; Nikon Inc. and Nikon Corporation v. Photocom Korea,WIPO Case No. D2000-1338; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.
Complainant has shown that the Domain Name is confusingly similar to Complainant's mark and has thus satisfied the first element of its claim under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the 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.
Complainant alleges that it has not licensed or otherwise authorized Respondent to use its AUTO TRADER Mark in the Domain Name or any other manner, that Respondent is not using the Domain Name for any bona fide offering of goods or services or any legitimate noncommercial or fair use, and that Respondent is not commonly known by the Domain Name. For these reasons, Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name.
Respondent has not submitted any reply to the Complaint, and the affidavit by Ms. Armengol submitted by Complainant as an annex to the Complaint establishes that Respondent does not assert any rights or legitimate interests in the Domain Name.
Complainant has thus shown that Respondent has no rights or legitimate interests in the Domain Name and satisfied the second element of its claim in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
This list is not exclusive, however, and bad faith under the Policy may be predicated on other circumstances. See, e.g., Salomon Smith Barney Inc. v. Salomon Internet Services,WIPO Case No. D2000-0668.
Here, the Panel accepts the evidence of identity theft in connection with the registration of the Domain Name as set forth in the affidavit of Ms. Armengol submitted by Complainant. This evidence of the actual registrant's fraudulent registration of the Domain Name under a false name and with false contact information is sufficient to establish bad faith registration within the meaning of paragraph 4(a) of the Policy. See Ticketmaster Corporation v. Dmitri Prem,WIPO Case No. D2000-1550 (provision of false information on applying for registration may constitute bad faith); Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138 (same).
Although the identity theft in this case establishes bad faith registration of the Domain Name, does it also support a finding of bad faith use? The Domain Name does not resolve to an active website, and there is no evidence of any use of the Domain Name by the Respondent or the actual registrant.
As this Panel has previously held, “The fact that the [d]omain [n]ame does not currently resolve to an active website is not sufficient in and of itself to establish bad faith use” without more. Wildfire, Inc. v. Namebase,WIPO Case No. D2007-1611. Creation or maintenance of an active website is not a prerequisite to the initial or continued registration of a domain name, and a complainant without other evidence of a respondent's bad faith is not entitled to transfer of a domain name under the Policy merely because of the domain name registrant's failure to utilize the domain name for commercial or noncommercial use. Id.
The much-cited Telstra case does not hold otherwise. On the contrary, the Telstra opinion is clear that passive holding of a domain name without a showing of some other circumstances of bad faith at the time of registration and thereafter does not constitute bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The actual circumstances of each case must be examined to determine whether bad faith use can be inferred where the domain name is merely being held. Id.
The Telstra panel noted that the language of paragraph 4(a)(iii) of the Policy uses both the past and present tenses in requiring proof of both bad faith registration and use of the domain name and construed the provision to require that:
“in determining whether there is bad faith on the part of the [r]espondent, consideration must be given to the circumstances applying both at the time of registration and thereafter. So understood, it can be seen that the requirement in paragraph 4(a)(iii) [of the Policy] that the domain name has been registered and is being used in bad faith will be satisfied only if the [c]omplainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that [r]espondent is continuing to act in bad faith.” (emphasis in original). Id.
In Telstra, the panel found that the respondent's passive holding of the domain name in that case constituted bad faith use by the respondent because of the “particular circumstances” of that case:
“(i) the [c]omplainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the [r]espondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the [r]espondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the [r]espondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the [c]omplainant's rights under trademark law.
In light of these particular circumstances, the [Telstra panel] concludes that the [r]espondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith by [r]espondent. Id.”
In the Wildfire, Inc. case cited above, none of those particular circumstances was present, as the respondent's registration of the domain name in question had predated the complainant's acquisition of trademark rights, and the respondent in that case had not sought to conceal its identity or provided false contact information to the registrar, so this Panel held that passive holding of the domain name was not there sufficient to constitute bad faith use. Wildfire, Inc. v. Namebase, supra.
In the instant case, however, the circumstances are very similar to those found in the Telstra case. The evidence herein shows that the Complainant also had numerous trademarks and a “strong reputation” in its AUTO TRADER Mark at the time of registration of the Domain Name, and there is no evidence of any actual or contemplated good faith use of the Domain Name. Most importantly, here, as in Telstra, the actual registrant of the Domain Name has taken “active steps to conceal its true identity” and “actively provided, and failed to correct, false contact details, in breach of the registration agreement.” This continuing identity theft by the registrant of the Domain Name in failing to correct the fraudulent information provided to the Registrar nearly two years ago is sufficient for a finding of bad faith use of the Domain Name within the meaning of the Policy.
Other administrative panels have also found bad faith use under similar circumstances of passive holding of a domain name coupled with continuing false registration information. See Salomon Smith Barney Inc. supra, where the panel found that the evidence, taken as a whole, supported a determination of bad faith registration and use:
“While none of the circumstances set forth in ¶4(b) of the Policy appears applicable, it is clear that such circumstances are not the exclusive means by which a Panel may find “bad faith” use and registration.
The Panel bases its determination on the fact that [r]espondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details to [the registrar], and on [r]espondent's passive use of the domain name.”
See also Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613, finding bad faith registration and use of a domain name where the respondent had taken no action to use the domain name “to post any content on the Internet or for any other legitimate purpose” and had “taken deliberate steps to conceal its true identity” by providing false information in registering the domain name.
In conclusion, the Panel finds that Complainant has shown bad faith registration and use of the Domain Name, satisfying the third element of its claim in accordance with paragraph 4(a)(iii) of the Policy.
Since the Respondent has been the victim of identity theft, this finding of bad faith registration and use is not attributed to her personally but to the unknown actual registrant of the Domain Name whose identity has been fraudulently concealed. Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722; DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty,WIPO Case No. D2007-1431. 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 Complainant.
Dana Haviland
Sole Panelist
Dated: May 19, 2009
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