WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TPI Holdings, Inc. v. Roxane Gwyn Case No. D2009-0824 1. The Parties
Complainant is TPI Holdings, Inc., Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC, United States of America.
Respondent is Roxane Gwyn, Chapel Hill, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed 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 June 19, 2009. On June 22, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On June 22, 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 June 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 20, 2009.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 7, 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 several United States trademark registrations for the AUTO TRADER, AUTOTRADER and AUTOTRADER.COM marks, dating back as far as 1983, including for example United States Registration No. 1,247,037 in International Class 16. The AUTO TRADER marks are used by Complainant and its licensees in connection with publications and websites advertising automotive sales and related services.
The disputed domain name was registered on May 30, 2007. The website to which the disputed domain name routes displays sponsored links which advertise automotive sales and related services by commercial companies other than Complainant. 5. Parties' Contentions A. Complainant
Making reference to the factual circumstances and citing many decisions under the Policy, Complainant contends that the disputed domain name is confusingly similar to the AUTO TRADER mark in which Complainant has rights; that Respondent has no rights or legitimate interests with respect to the disputed domain name; and that the domain name was registered and is being used in bad faith. Complainant underscores its position by alleging that Complainant's trademarks are well-known, and that the website to which the disputed domain name routes promotes products and services in competition with Complainant.
Complainant also states: “Upon information and belief, Roxane Gwyn is likely not the actual registrant of the Domain Name.” Complainant avers that its representatives contacted Respondent through information listed in the WhoIs database before filing the present proceeding. According to Complainant, the listed registrant, Roxane Gwyn, stated that she had no knowledge of the domain name and was not involved in its registration.
Complainant requests transfer. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition, in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier two notifications of these proceedings. The Center used two different addresses listed in the WhoIs record for the domain name; the first address was in effect at the time the Complaint was filed, and the second address appeared in the WhoIs record as of June 26, 2009. The courier package to the new address for Respondent was undeliverable; the notification to the old address was delivered to an individual at the listed address.1 The Center also notified Respondent by using an email address provided by the registrar in its verification response to the Center, but the electronic notifications were returned as rejected.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the whoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Identity of Respondent
Like Complainant, the Panel has no reason to doubt Ms. Gwyn's alleged statements that she had no knowledge of, or relation to, the registration of the disputed domain name.
Complainant has experienced other instances in which its AUTO TRADER marks were used in domain name registrations by apparently unknown third parties. Complainant calls the Panel's attention to two recent cases involving its marks. In those cases, the panels accepted that the listed registrants were also victims of identity theft. The panels in those cases determined that their findings should be understood to refer to any underlying, actual registrant. TPI Holdings Inc. v. Michael Jay,WIPO Case No. D2009-0441; TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361.
Unlike the cited cases, there is no direct representation or affidavit by the named Respondent and there is no direct claim by Respondent that the registrations in the present case were fraudulently made. Nonetheless the Panel agrees with the rulings by the panels in the cited cases, with the effect that the relevant findings and conclusions by the Panel in the present case bind the underlying (actual) registrant as if the actual registrant were a named party to this proceeding.2 C. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that Respondent's domain name is confusingly similar to Complainant's marks.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The disputed domain name, , includes one of Complainant's widely known trademarks. The addition of the descriptive term “transaction” does not negate the confusion created by Respondent's complete inclusion of the AUTO TRADER trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
In fact, given that Complainant's mark is broadly associated with advertising for the purchase and sale of used automobiles and automotive products, the Panel finds that the addition of the term “transaction” to Complainant's mark may increase the confusion that Internet users would experience. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark….”).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Respondent's website presently offers sponsored link advertising. By diverting traffic to third parties using paid link advertisements, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
The Panel also finds that the fact that some of the links on Respondent's webpage directs users to competitors of Complainant eliminates the possibility of bona fide offerings or fair use. See, e.g., Hoffmann-La Roche Inc. v. O,WIPO Case No. D2007-1806 (citing, inter alia, Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374, and Hoffmann-La Roche Inc. v. AZ Marketing Inc., Thomas Brennan,WIPO Case No. D2007-1843 (discussing Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903)).
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the “AUTO TRADER” mark in its domain name and that Respondent is not commonly known by the disputed domain name. The Panel infers that Respondent is seeking to attract Internet users through Complainant's widely known marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra. The Panel also finds that there is no bona fide offering of goods or services by Respondent and therefore that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, concealment of identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
Given the widespread use in the United States of Complainant's AUTO TRADER trademarks, the Panel infers that the registrant had actual knowledge of Complainant's trademarks; those trademarks had been registered and widely used for many years before the disputed domain name was registered. The Panel also infers that registrant did so intending to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's marks.
Moreover, the Panel infers that the registrant has acted to conceal its real identify and contact details, which, under the policy and many prior decisions, constitutes evidence of bad faith.3 See, e.g., 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. Under the circumstances, therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances show bad faith use of the domain name by Respondent, as elaborated below.
The website to which the disputed domain name routes shows that the disputed domain name is used to promote the commercial offerings of Complainant's competitors. The Panel concludes that this activity demonstrates bad faith use.4 mVisible Technologies, Inc. v. Navigation Catalyst Sys., Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
With the addition of the word “transaction” to Complainant's AUTO TRADER trademark, the Panel finds that there is no conceivable good faith use in the present record for the domain name by Respondent.
Having found that the circumstances establish bad-faith registration and use, the Panel concludes that the requirements of Policy paragraph 4(a)(iii) are fulfilled. 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.
Jeffrey D. Steinhardt
Sole Panelist
Dated: August 20, 2009
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