WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TPI Holdings Inc. v. Michael Jay Case No. D2009-0441 1. The Parties
The Complainant is TPI Holdings Inc. of Georgia, United States of America, represented by Dow Lohnes PLLC of United States.
The Respondent is Michael Jay of Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Ceri Walters, Owen White & Catlin of United Kingdom. 2. The Domain Name and Registrar
The disputed 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”) by email on April 2, 2009 and by hardcopy on April 6, 2009. The Complaint named “Michael Jay” as Respondent.
On April 3, 2009, the Center transmitted by email a request for Registrar verification in connection with the domain name at issue to the Registrar. The email noted that the Complainant named “Michael Jay” as the Respondent.
On April 6, 2009, the Registrar transmitted to the Center by email its verification response confirming that “Michael Jay” 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” 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 the Respondent of the Complaint, and the proceedings commenced on April 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2009.
The Respondent, Michael Jay, did not submit any response. Accordingly, the Center notified the Respondent of its default on May 7, 2009.
The Center appointed Thomas H. Webster as the sole panelist in this matter on May 13, 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 Article 7 of the Rules.
On May 13, 2009, the Panel received the file from the Center. 4. Factual Background
The Complainant (or its predecessors in interest) has been in the business of selling and distributing print “periodicals featuring vehicle classified and display advertising” since January 1, 1974 (Complaint, paragraph 16) and online since August 1998 (Complaint, paragraph 17).
Complainant is the owner of six federal registrations for trademarks as follows:
MARK REG. NO INT'L CLASS GOODS AND/OR SERVISES
AUTO TRADER
1,247,037
16
Periodic Magazine
AUTO TRADER
2,390,815
35
42
Advertising services, namely preparing and disseminating advertising for others via an online electronic communications network
Computer services, namely providing multiple user access to computer networks for the transfer and dissemination of a wide range of information; providing a wide range of information via an online electronic communications network
AUTOTRADER.COM
2,381,590
35
Providing automotive information via a global computer network relating to vehicles for sale, valuation of vehicles, availability of vehicle parts and accessories, dealers, manufacturers, automotive services and service providers, as well as trade information about general industry news
AUTOTRADER and DESIGN
3,449,402
35
Providing automotive information via a global computer network relating to vehicles for sale, valuation of vehicles, availability of vehicle parts and accessories, dealers, manufacturers, automotive services and services providers, as well as trade information about general industry
AUTOTRADER
3,512,396
16
35
Periodic magazine featuring classified and display advertising.
Promoting the goods of others by preparing, placing and disseminating advertising in periodic publications, namely, magazines.
AUTOTRADER and DESIGN
3,512,454
16
35
Periodic magazine featuring classified and display advertising.
Promoting the goods of others by preparing, placing and disseminating advertising in periodic publications, namely, magazines.
(Complaint, paragraph 18)
The Respondent named in this administrative proceeding, Michael Jay, is listed as the Registrant of the domain name . However, Annex B to the Complaint is a sworn statement made by Michael Jay on December 15, 2008 (Annex B “Affidavit of Michael Jay”) in which he states:
“I did not register the domain name, I did not authorize anyone to register the domain name on my behalf, and I had no knowledge whatsoever of the domain name until I received the letter from AutoT's attorneys.” (Complaint, Annex B, paragraph 2).
The domain name was registered on September 11, 2007 (Complaint, paragraph 22). It is uncontested that the Respondent is not “a licensee of Complainant, nor is he authorized to use any of Complainant's AUTO TRADER marks, any other of the TRADER Family of marks” (Complaint, paragraph 23). Nor is it contested that the domain name was registered “without the authorization, knowledge or consent of Complainant” (Complaint, paragraph 24).
The website associated with the domain name is a “placeholder” and showed no active content (Complaint, paragraph 25). Claimant contacted the Registrant with cease and desist letters that went unanswered (Complaint, paragraph 51). 5. Parties' Contentions A. Complainant
The Complainant claims that:
With respect to the domain name being identical or confusingly similar to a trademark or service mark to which the Complainant has rights, the Complainant claims that:
“The term payments is merely a generic term that denotes an important component of the business transactions conducted in connection with Complainant's numerous print and online TRADER publications, including the AUTOTRADER.COM® online service and the print AUTO TRADER® magazines” (Complaint, paragraph 31).
With respect to the absence of rights or legitimate interest of the Registrant in respect of the domain name, the Complainant claims that:
i. “Respondent has never been authorized by Complainant to use any of the TRADER Family of Marks (including the AUTO TRADER Marks) or any mark confusingly similar thereto as a mark or as part of a domain name.” (Complaint paragraph 35). Further, The Respondent has “knowingly registered a domain name that is confusingly similar to the complainant's mark” (Complaint, paragraph 36) and that “Respondent's domain is parked and it's only content is advertising for Yahoo! hosting services.” (Complaint paragraph 37).
ii. “Nothing in Respondent's WHOIS information or in any other information known about Respondent implies that Respondent is commonly known by the disputed Domain Name, and Respondent has not offered any proof of any trademark rights owned by Respondent for the Domain Name.” (Complaint, paragraph 39)
iii. “Respondent is not making and has never made legitimate noncommercial or fair use of the Domain Name.” (Complaint paragraph 41).
With respect to registration and use, Complainant claims that the registration and use of the domain name was done in bad faith. In support of this claim, the Complainant makes the following arguments:
i “Respondent provided false contact information when registering the Domain Name in violation of Melbourne IT's Domain Name Registration Agreement.” (Complaint paragraph 45).
ii “Given the renown of Respondent's marks, particularly AUTOTRADER.COM, Respondent's failure to make use of the Domain Name is also evidence of bad faith.” (Complaint paragraph 46).
iii “Respondent's attempt to conceal its identity and Respondent's use of Michael Jay's personal information instead of its own to register the Domain Name demonstrate obvious bad faith in that Respondent was clearly seeking to avoid any accountability for its actions associated with the Domain Name. That Respondent used the contact information of a real, but unrelated, third party without that person's knowledge is further evidence of bad faith in contravention of Paragraph 4(b)(iv) of the Policy.” (Complaint paragraph 47).
iv That “in light of Complainant's well-established rights in its marks, including AUTOTRADER.COM®, and the coupling of that mark with the generic term for a common element of the business facilitated by Complainant's websites and in its publications, there is no conceivable way in which Respondent could use the domain name in good faith.” (Complaint paragraph 50).
v. “Respondent's failure to acknowledge or respond to the cease and desist letter sent by Complainant's counsel is further evidence of use in bad faith.” (Complaint paragraph 51).
The Complainant seeks the transfer of the domain name to the Complainant. B. Respondent
The Respondent is listed in the WhoIs information as Mr. Michael Jay of United Kingdom. This information was provided according to the registration agreement with respect to the domain name. Section 2 of the relevant rules provide that the details provided in the registration agreement are “complete and accurate”.
There would appear to be a Michael Jay at the above address. However, in an affidavit obtained by the Complainant, Mr. Jay states that: “this domain name was falsely registered in [his] name…” (Complaint Annex B, paragraph 4). The Panel accepts this affidavit to be the truth, absent any showing to the contrary.
As a result, it appears that the registrant is a third person who moreover has not filed an answer in these proceedings. 6. Discussion and Findings A. Identification of the Parties
As set out in section 3 above (“Procedural History”), the Complainant is TPI Holdings Inc.
The threshold issue is the identity of the Respondent. The named Respondent is Michael Jay, Middlesex, United Kingdom. In its Complaint of April 2, 2009, Complainant named Michael Jay as Respondent. (Complaint paragraph 7). That is of course in accordance with the WhoIs records. However, it is contradicted by the affidavit of Mr. Jay.
For the Panelist, the Complainant is entitled to proceed based on the registrant identified in the WhoIs records, as those records should reflect the registration agreement (although there is apparently a third party who registered the domain name). As a result, references in the Complaint to “Respondent” are directed by Complainant to be understood as references to the actual Registrant of the domain name (Complaint, paragraph 7) and the Panel has adopted the same approach. B. Issues for Consideration
Paragraph 4 of the Policy requires the Complainant to prove that each of the following elements is present:
(i) the domain name is 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 respect of the domain names; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant is required to prove that all of the above three elements are present. The Panel sets out below its findings with respect to the three elements. C. Consequences of Respondent's Default
The Panel is guided with respect to the consequences of Respondent's default by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” and the Policy itself. The WIPO Overview at 4.6 states that:
“Respondent's default does not automatically result in a decision in favor of the complainant. the complainant must establish each of the three elements required by Paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the respondent's default, Paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
WIPO UDRP cases support this consensus view. (See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, Transfer; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, Transfer; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, Denied).
In light of the above, the Panel reaches the following conclusions. (i) Identical or Confusingly Similar
This element of the Policy requires the Complainant to demonstrate that it has rights in the mark and that the domain name is identical or confusingly similar to the Complainant's trademark.
As set out above (section 4, “Factual Background”), the Panel notes that the Complainant has six registered marks, of which AUTO TRADER and AUTOTRADER have been used since as early as 1974. Annex E of the Complaint demonstrates that the trademark AUTO TRADER was registered in 1983 with the U-S-. Patent and Trademark Office. Similarly, Annex F demonstrates that AUTOTRADER.COM was registered to Complainant on August 29, 2000.
Accordingly, the Panel is satisfied that the Complainant does have rights in the AUTO TRADER family of marks presented in its Complaint.
The second issue is whether the addition of the term “payments” is sufficient to avoid a finding that the domain name is confusingly similar.
It is well established that the addition of a generic term is insufficient to defeat the finding that a domain name is confusingly similar.
The WIPO “Overview [b/c cited above]” states that:
“[i]f a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant's rights in that word, then it has a legitimate interest.” (See also Porto Chico Stores, Inc. v. Otavio Zambon,WIPO Case No. D2000-1270; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,WIPO Case No. D2000-1005; and Gorstew Limited v W,WIPO Case No. D2002-0744). See also (Telemundo Network Group LLC v. LaPorte Holdings,WIPO Case No. D2005-0966 (October 31, 2005); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696 (Oct. 28, 2003).
With respect to whether the mark is identical or confusingly similar to the domain name in dispute, the Panel considers that the term “payments” is a generic term insufficient to distinguish the domain name from the family of marks registered by Complainant. Further, the Panel considers that the term “payments” denotes an important component of trading or “trade” which increases the chances that the domain name is confusingly similar to the Complainant's marks. In turn, this is evidence of bad faith on the part of the Registrant. Therefore, the Complainant has successfully demonstrated that the domain name is confusingly similar under the Policy. (ii) Rights or Legitimate Interests
This element requires the Complainant to prove that the Respondent has no rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive three-part guide as to how this issue can be determined. The Complainant has addressed each in turn. Paragraph 4(c)(i) provides that the Respondent may demonstrate rights or legitimate interests in a domain name by showing that “before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [was made] in connection with a bona fide offering of goods or services”.
Respondent has provided no evidence in this respect. Complainant has argued that no bona fide or good faith interest exists in the domain name. This claim is supported by the very fact that the Registrant registered a confusingly similar domain name. In U-Haul International, Inc. v. Affordable Web Productions,WIPO Case No. D2003-0511 (August 18, 2003), the Respondent registered a domain name with generic additions to the mark of the Complainant. In that case, as here, the addition of generic words that form an important component of the service offered by the Complainant resulted in a confusingly similar domain name. The Panel considers that such a registration in these circumstances is evidence that the domain name does not have a bona fide use. In addition, the panel considers that where the only activity of the domain name is to be “parked” and only serves to refer to hosting services that trade on the Complainant's marks, use of the domain is not bona fide.
The Respondent has therefore failed to demonstrate any rights or legitimate interests pursuant to this element of the Policy.
Paragraph 4(c)(ii) requires proof that Respondent is “commonly known by the domain name”. Again, Respondent has provided no evidence in this respect. The Panel considers it dispositive that not only is the Respondent not known by this domain name, the Registrant is seemingly not known at all.
The Respondent has therefore failed to demonstrate any rights or legitimate interests pursuant to this element of the Policy.
Paragraph 4(c)(iii) requires Respondent to prove that the domain name has a “legitimate noncommercial or fair use”. In the VeriSign, Inc. v. Michael Brook,WIPO Case No. D2000-1139 (March 7, 2001), the Panel concluded that:
“The holding of a domain name as a mere placeholder has been held to show that the holder has no right or legitimate interest in respect of the domain name. Moreover, inaction itself, in terms of registering a domain name and failing to construct a website to which the domain name resolves, has been held to constitute bad faith use. Policy, 4(a)(ii). CBS Broadcasting Inc. v. Bert Grovers,WIPO Case No. D2000-0254; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; August Storck KG v. Mohamed,WIPO Case No. D2000-0196.”
Respondent has provided no evidence that the domain name is more than a mere “placeholder” nor is there evidence of construction of content. As a result, the domain name cannot be seen as legitimate. The reference to payments in the domain tends to suggest that even if it were legitimate, it would not be noncommercial. Respondent has therefore failed to demonstrate any rights or legitimate interests pursuant to this element of the Policy. (iii) Registered and Used in Bad Faith
The first requirement under this heading is that the domain name has been registered in bad faith. The Respondent appears to have no connection with autos, trading or payments of any kind. Further, as a result of the Affidavit of Michael Jay contained in Annex B of the Complaint, it is not clear to the Panel who registered the domain name. Paragraph 4(b) of the Policy provides illustrations as to use in bad faith. Although these are not directly applicable in this case, deliberately concealing one's identity as a registrant may in some circumstances, as are present here, be is compelling evidence of bad faith. (See Salomon Smith Barney Inc. v. Salomon Internet Services,WIPO Case No. D2000-0668 (September 4, 2000); Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068 (December 21, 2005); Bank for International Settlements v. G.I Joe,WIPO Case No. D2004-0570 (September 27, 2005); Forte Communications, Inc. v. Service for Life,WIPO Case No. D2004-0613 (September 22, 2004); Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886 (March 10, 2008)).
Thus, while the Registrant's exact intent is not clear, it is clear to the Panel that the Registrant did provide false and misleading information. Under these circumstances, and given the lack of rights or legitimate interests as noted above, it follows that the registration and use were done in bad faith. The Panel is therefore satisfied with the Complainant's position as to registration and use in bad faith.
Therefore, the Panel finds that the Complainant has succeeded in meeting the requisite standard under the Policy for proving registration and use in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Thomas H. Webster
Sole Panelist
Dated: May 25, 2009
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