WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TPI Holdings, Inc. v. Elaine Noe Case No. D2009-0568 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 Elaine Noe of Virginia, United States of America 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2009. On May 4, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Domain Name. On May 6, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that 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 May 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 2, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 10, 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 owns United States federal trademark registrations for the marks AUTO TRADER and AUTOTRADER.COM (the “AUTO TRADER Marks”), registered, respectively, in 1983 and 2000 for, among other things, periodical publications, advertising services, and providing information via the Internet about buying and selling vehicles. Complainant also owns other marks including the term “Trader” used in connection with a wide variety of print and on-line publications featuring classified and/or display advertising. Under the AUTOTRADER.COM mark, Complainant's exclusive sub-licensee, AutoT, Inc., operates a well-known website for automotive sales and related information and services located at “www.autot”. In March 2009, the website logged a record number of more than 16 million unique users. Complainant, its licensees and sublicencees have spent millions of dollars advertising and promoting their business under the AUTO TRADER Marks and the other “Trader” marks.
Respondent named in this administrative proceeding, Elaine Noe, is listed as the registrant of the domain name . However, Annex B to the Complaint is a sworn statement made by Ms. Noe on February 18, 2009 in which she 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 was contacted by AutoT's attorney.”
The Domain Name was registered on October 7, 2005. It is uncontested that Respondent is not a licensee of Complainant, nor is she authorized to use any of Complainant's AUTO TRADER Marks, any other of the other “Trader” family of marks or any marks confusingly similar to any of those marks. Nor is it contested that the Domain Name was registered without the authorization, knowledge or consent of Complainant.
The website associated with the Domain Name is a “placeholder” and shows no active content for the website now nor did it in the past.
As of October 15, 2008, the contact information for the Domain Name registrant was shielded by a privacy feature provided by the registrar Melbourne IT Ltd. Complainant sent a letter by certified mail and e-mail to the privacy protection mail services and e-mail addresses provided by the registrar's WhoIs. The correspondence demanded Respondent to cease and desist using the Domain Name and to transfer the registration to Complainant. After sending the demand letter by e-mail, Complainant received a response from the registrar directing it to an online e-mail that permitted Complainant to e-mail the registrant directly. Complainant submitted a copy of the cease and desist letter directly to the registrant but received no response. In February 2009 Complainant discovered that the WhoIs information for the Domain Name was updated and the privacy shield removed. The registrant was identified as Ms. Noe, the individual who Complainant has named as Respondent. Complainant contacted Ms. Noe by telephone who stated that she had no knowledge of the Domain Name and expressed concerns about the possibility of fraud and identity theft. 5. Parties' Contentions A. Complainant
The Complainant claims that:
It has rights in the AUTO TRADER Marks that predate registration of the Domain Name. The term “support” is merely a generic term that describes customer support services associated with the transactions proposed or offered in Complainant's print and on-line publications, including the AUTOTRADER.COM online services and the AUTO TRADER magazines.
Complainant has not authorized Respondent to use the Marks or any mark confusingly similar thereto as a mark or as part of a domain name.
Respondent has registered and is using the Domain Name in bad faith because it: (1) attempted to conceal its identity and then provided false contact information (use of Ms. Noe's personal information instead of its own); (2) has failed to use the Domain Name; (3) had knowledge of the Marks before registering the Domain Name but chose to register the Domain Name using the Marks; and (4) failed to respond to the cease and desist letters.
Complainant seeks to transfer the Domain Name to Complainant. B. Respondent
Complainant named as Respondent the only registrant identified by the WhoIs information associated with the Domain Name - Elaine Noe of Virginia. Ms. Noe has signed a sworn affidavit indicating, among other things, that she has no knowledge of the Domain Name and that she did not register the Domain Name or ask anyone else to do so. Complainant states that it has no reason to doubt Ms. Noe's version of the events and the Panel accepts Ms. Noe's affidavit to be the truth.
As a result, it appears that the true registrant is a third party who has failed to respond to the Complaint. All references to Respondent herein are meant for the actual registrant who apparently fraudulently registered the Domain Name using Ms. Noe's identity and other personal information. 6. Discussion and Findings
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. A. Identical or Confusingly Similar
Complainant has demonstrated that it owns the AUTO TRADER Marks 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 Marks have existed for many years before Respondent registered the Domain Name.
The Domain Name incorporates Complainant's AUTO TRADER Marks in their entirety, adding only the generic term “support”. Including that term does not negate the confusing similarity of the Domain Name with regard to Complainant's AUTO TRADER Marks. On the contrary, adding the generic word “support” to Complainant's AUTO TRADER Marks in the domain name increases the confusing similarity because the term “support” describes the customer support services associated with the transactions proposed or offered in Complainant's print and on-line publications, including the Autot online services and the Auto Trader magazines. Other panels have held that adding descriptive or generic wording to a mark in a domain name 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 vs. 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.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the AUTO TRADER Marks, e.g., in a domain name. Insofar as Complainant has made a prima facie showing, Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Respondent has failed to respond to the Complaint. Thus, Complainant's facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants' favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied 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.
The Panel concludes, on the basis of a prima facie showing by Complainant, that Respondent has registered the Domain Name in bad faith. Respondent has registered a domain name that is confusingly similar to the AUTO TRADER Marks (which have been in use and registered with the United States Patent and Trademark Office well before Respondent registered the Domain Name). When Respondent registered the Domain Name, and at all times thereafter, Complainant's AUTO TRADER Marks were well-known, as Complainant established by its evidence of website use figures and advertising and promotional expenditures. In the Panel's view it is therefore highly unlikely that Respondent was not aware of Complainant's marks at all relevant times. Furthermore, it is difficult to conceive of any good faith reason for Respondent to register a domain name that incorporates Complainant's well-known mark in its entirety and to tack on a descriptive word that, if anything, could further any confusion.
Furthermore, the Panel accepts the evidence of identity theft in connection with Respondent's registration of the Domain Name as Ms. Noe set forth in her affidavit. This evidence of the actual registrant's fraudulent registration of the Domain Name under a false name and with false contact information provides additional grounds for the Panel to conclude that Respondent registered the Domain Name in bad faith. See Ticketmaster Corporation v. Dmitri Prem,WIPO Case No. D2000-1550 (providing false information on applying for registration may be taken as bad faith); Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138.
The Panel also finds Respondent used the Domain Name in bad faith despite the fact that the Domain Name does not resolve to an active website and there is no evidence of any use of the Domain Name by Respondent or the actual registrant.
The circumstances in this case are akin to those in Telestra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in which the Panel found that the respondent in that case had used the domain name in bad faith. The evidence here shows that Complainant has numerous trademarks and a “strong reputation” in its AUTO TRADER Marks when Respondent registered the Domain Name. There is no evidence Respondent actually used or contemplated a good faith use of the Domain Name. Furthermore, 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 is sufficient for a finding of bad faith use of the Domain Name within the meaning of the Policy. See also Salomon Smith Barney Inc., supra (bad faith use found where Respondent concealed its true identity, provided false contact details to the registrar and passively used the domain name); Forte Communications, Inc. v. Service for Life,WIPO Case No. D2004-0613.
The fact that Respondent failed to acknowledge or respond to the cease and desist letter Complainant sent is further evidence of bad faith.
The Panel wants to make clear that insofar as 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.
The Panel therefore holds that Complainant has satisfied paragraph 4(a) (iii)of the Policy. 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.
Harrie R. Samaras
Sole Panelist
Dated: June 24, 2009
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