WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TPI Holdings, Inc. v. Belle Murshid (Domains by Proxy, Inc.) Case No. D2010-0114 1. The Parties
The Complainant is TPI Holdings, Inc. of Atlanta, Georgia United States of America, represented by Dow Lohnes, PLLC, United States of America.
The Respondent is Belle Murshid of Van, British Columbia, Canada (and Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2010. On January 26, 2010, the Center transmitted by email to Go D Inc., a request for registrar verification in connection with the disputed domain name. On January 27, 2010, GoD, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On February 3, 2010, the Complainant submitted via email to the Center, and to the Respondent, a “Request for Suspension”. On February 3, 2010 the Center sent to the Complainant and the Respondent a “Notification of Suspension Before Commencement” suspending the proceeding to March 2, 2010. On March 1, 2010, the Complainant submitted via email to the Center, and to the Respondent, a “Second Request for Suspension”. On March 2, 2010 the Center sent to the Complainant and the Respondent a “Notification of Extension to Suspension of Administrative Proceeding” extending suspension of the proceeding to April 2, 2010. On April 2, 2010, the Complainant filed a “Request for Reinstatement” and filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint/amended Complaint satisfied the formal requirements of the Policy, the Rules, and 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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 5, 2010.
The Center appointed Nicholas Weston as the sole panelist in this matter on May 11, 2010. 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.
In response to an email from the Respondent received by the Center, parties and this Panel on May 12, 2010 which amounted to a procedural request, this Panel issued a Panel Order on May 17, 2010. The effect of the Panel Order was to deny the Respondent's request for a Stay, and to extend to May 31, 2010, the date by which this Panel was required to forward a Decision in this case. This Panel also granted the Parties, for reasons of procedural fairness, until Friday May 21, 2010 to consider their position in light of the Panel Order denying the request for a Stay. 4. Factual Background
The Complainant is the owner of six US federal trademarks registrations as follows:
MARK
DATE REGISTERED
REG. NO
INT'L CLASS
GOODS AND/OR SERVICES
AUTO TRADER
1983-08-02
1,247,037
16
Periodic Magazine
AUTO TRADER
2000-10-03
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
2000-08-29
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
2008-06-17
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
2008-10-07
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
2008-10-07
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.
Complainant's exclusive sub-licensee, AutoT, Inc., operates a well-known website located at “www.autot” for automotive sales, services and related information.
Respondent registered the domain name (the “Disputed Domain Name”) on April 12, 2005.
The Respondent uses the Disputed Domain Name currently to point to a web page that offers automotive leasing information and contains advertisements which display links in connection with automotive sales, leasing and related information. 5. Parties' Contentions A. Complainant
The Complainant cites its registrations of the trademarks AUTOTRADER, AUTO TRADER and AUTOTRADER.COM in the USA, and related trademarks consisting of, or including these words, as prima facie evidence of ownership.
The Complainants submit that each of its trademarks is distinctive and well-known and that their rights in these marks predate the Respondent's registration of the Disputed Domain Name . They submit that the Disputed Domain Name is confusingly similar to their trademarks, because the Disputed Domain Name incorporates in its entirety the trademark AUTO TRADER (presumably alluding to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001 0903) and that the similarity is not removed by the addition of the generic term “lease guide” (citing TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant's trademarks (citing Nilfisk-Advance A/S v. Leong Tak Lang,WIPO Case No. D2000-1299). Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing Ciccone v. Parisi,WIPO Case No. D2000-0847).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that because the Disputes Domain Name wholly incorporate the Complainants registered trademarks together with a generic term, it was registered “intentionally attempt to attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with Complainant's (trademarks) as to the source, sponsorship, affiliation, or endorsement of its website in contravention of Paragraph 4(b)(iv) of the Policy”. On the issue of use, the Complainants contend that the Respondents use the Disputed Domain Name for directing traffic to a page containing sponsored links or sponsored advertisements and that such use constitutes the kind of “opportunistic bad faith” (citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028). B. Respondent
The Respondents did not substantively reply to the Complainant's contentions. However, on May 12, 2010, an email was received from with a hotmail email address being the email address of the joined Respondent Belle Murshid “We're still confused why the time and costs are being put into this process when we've already openly obliged to transfer the domain? We can save everyone's time here. We no longer use this domain and have any use for it. We're more than happy to transfer. Do let us know as the end result will be the same.”
As a result of that email, a Panel Order was issued. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate. A. Identification of Respondent
The Panel must be satisfied that any orders made will address the appropriate Respondent or Respondents.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant's original Complaint named as Respondent a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
On January 29, 2010, in response to a request, the registrar GoDaddy Inc., sent an email to the Center advising the following Registrant contact information:
Belle Murshid
Mariners Walk
Van, British Columbia V6J4X9
Canada
“Belle Murshid/Domains by Proxy Inc” was then named as co-Respondent in the Complainant's Amended Complaint. Having regard to the fact that as of April 1, 2010 the WHOIS database identified Belle Murshid, Mariner's Walk Van[couver], British Colombia, V6J4X9, Canada, with a hotmail email address, client number 6044314576 as the registrant, administrative contact, and technical contact of the domain name, and having regard to the email sent on May 12, 2010 from the same hotmail email address to the Center and parties, this Panel finds that in light of the record the named Respondent Belle Murshid is a proper Respondent and that Domains By Proxy Inc is also a proper Respondent.
As noted having regard to the Complainant's submissions and the location of the principal office of the registrar, it appears that the applicable mutual jurisdiction is state of Arizona in USA.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the joined Respondent by reasonable means. Prima facie evidence of this, apart from the usual correspondence is the joined Respondent's email of May 12, 2010 to the Center and the parties. B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks AUTOTRADER, AUTO TRADER, AUTOTRADER.COM in the USA. The Panel finds that the Complainant has rights in the marks AUTOTRADER, AUTO TRADER, AUTOTRADER.COM that date back, based on the register, at a minimum, to 1983 and, on the Complainant's submissions, as far back as 1974.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant's trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant's trademark AUTOTRADER (b) followed by the word “lease” (c) followed by the word “guide” and (d) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “autotraderleaseguide”.
It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words such as, in this case, “lease” and “guide”. (see: see e.g. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja,WIPO Case No. D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark) and Pfizer Inc v. Ian Patrick,WIPO Case No. D2005-0155 (the suffix “guide” is descriptive). Panels have also found that combining a well-known trademark with a generic suffix tends to aggravate, not dispel, likelihood of confusion (see: Nintendo of America, Inc. v. Tyasho Industries and Thomas Watson,WIPO Case No. D2001-0976).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the Panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website”. The Disputed Domain Name is therefore confusingly similar to the Complainant's trademarks .
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of Respondent's rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see: National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Decisions, paragraph § 2.2).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a page composed of advertisements and links in connection with the same industry sector as the Complainant's trademarks and thereby attempting illegitimately “to intentionally trade on the well-known marks of another to lure Internet users to the respondent's website offering services that are competitive with the trademark owner's services”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant's trademark. It refers to Ciccone v. Parisi, WIPO Case No. D2000-0847 which states that “use which intentionally trades on the fame of another can not constitute a ‘bona fide' offering of goods or services”. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a webpage for auto sales, leasing and information.
In the absence of a substantive Response, the Panel finds for the Complainant on the second element of the Policy. D. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(ii) respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or locations or of a product.”
The evidence supports the Complainant's contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else's trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L'Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc .v Rarenames, Webreg,WIPO Case No. D2006-0964; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademarks AUTO TRADER and AUTOTRADER.COM are so well known in the United States of America for automotive sector information that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating these marks without knowing of them. (See TPI Holdings, Inc. v. Roxane Gwyn,WIPO Case No. D2009-0824; TPI Holdings, Inc. v. Elaine Noe,WIPO Case No. D2009-0568; TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361; TPI Holdings, Inc. v. Alfredo Rowland,WIPO Case No. D2008-0960; TPI Holdings Inc. v. Shola Ajiboye,WIPO Case No. D2007-1019).
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent's use of a privacy shield. The Disputed Domain Name resolves to a webpage offering competitive products and services to those offered on the website operated by the Complainant's licensee rather than a website critical of, or satirising, the Complainant's business which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose for which the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Ustream.TV, Inc v. Vertical Axis, Inc.,WIPO Case No. D2008-0598, Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
Further, a gap of ten years between registration of the Complainant's trademarks and Respondent's registration of the Disputed Domain Name (containing the trademarks) can in certain circumstances be an indicator of bad faith. (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held direct USA registrations for the trademark AUTO TRADER US Registration No. 1,247,037 from 1983 (although it claims this dates back to 1974) predating its rights from the Respondent's by 22 years.
A further conclusion can therefore be drawn about Respondent from its use of the Disputed Domain Name resolving to a webpage containing links and advertisements that directly compete with the offerings to be found on the website operated by the Complainant's licensee. In this Panel's view, it is in breach of the “Universal Terms of Service for Go Daddy Software and Services” for breach of the warranty: “You warrant that each action You make is being done so in good faith and that You have no knowledge of it infringing upon or conflicting with the legal rights of a third party or a third party's trademark or trade name.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondents' consciousness of the inevitability of such a finding is set out in an email received on May 12, 2010 from a hotmail email address, being the same email address of the joined Respondent Belle Murshid, stating as follows: “We're still confused why the time and costs are being put into this process when we've already openly obliged to transfer the domain? We can save everyone's time here. We no longer use this domain and have any use for it. We're more than happy to transfer. Do let us know as the end result will be the same.” This Panel is of the view that once a Panel seized of jurisdiction over a dispute pursuant to the Policy and the Rules, and is the only forum to be invoked by the Parties, unless the parties demonstrate potential prejudice to the satisfaction of the Panel, it is not the function of a panel, once appointed, to accede to any request the parties make simply because they make such request, or to assume that agreements that parties may make will be consummated in a timely way or at all, or to draw inferences from matters on which the parties may or may not have been able to reach agreement on in relation to issues that the panel is to consider under the Policy, Rules and Supplemental Rules, or to grant an opportunity for a Respondent to avoid the possibility of a finding of ‘bad faith' pursuant to a Panel decision based on the available evidence.
This Panel finds that the Respondent has taken the Complainant's well-known trademarks AUTOTRADER and AUTO TRADER and incorporated them in the Disputed Domain Name without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a webpage hosted by GoD for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 the Complainant.
Nicholas Weston
Sole Panelist
Dated: May 31, 2010
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