The Complainant is Drivetime Sales and Finance Company, LLC d/b/a DriveTime of Phoenix, Arizona, United States of America, represented by Ballard Spahr, LLP, United States.
The Respondent is Drive Time of London, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with SiberN, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2012. On February 27, 2012, the Center transmitted by email to SiberN, Inc. a request for registrar verification in connection with the disputed domain name. On February 27, 2012, SiberN, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 March 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2012.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 11, 2012. 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
The Complainant is the largest used automobile dealership in the United States of America (“USA”) with 89 locations across 17 states. The Complainant specialises in providing and financing used cars and maintains an online facility whereby potential customers may research cars, pricing and eligibility for financing in advance of visiting a physical dealership. The Complainant registered the domain name on March 7, 2000, and uses this in conjunction with its online facility.
The Complainant is the owner of two USA registered trade marks for the word mark DRIVETIME, namely No. 2,779,062 registered on November 4, 2003, in respect of automobile dealership services (class 35) and No. 2,792,416 registered on December 9, 2003, in respect of automobile financing services (class 36). Each of these trade marks claims a first use in commerce of the DRIVETIME mark in February 2000.
The disputed domain name was registered on October 14, 2010. As at the date of this Decision, the website associated with the disputed domain name was titled “Drive Time London Ontario, Used Cars and Car Loan Specialists” and the content of said website consisted of an offering to the public of used cars, car loans and vehicle history reports. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trade marks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that in addition to the DRIVETIME service marks, it owns inter alia USA trademark registrations in respect of the following word marks: (i) THE GO-TO-GUYS FOR CARS AND CREDIT, Nos. 3,228,790 and 3,228,791, both registered on April 10, 2007, (classes 35 and 36 respectively); and (ii) No. 3,698,633 registered on October 20, 2009, (class 36).
The Complainant asserts that since 1990 it has continuously expended a substantial amount of resources, money, time and effort promoting, marketing, advertising and building its registered marks which it submits now have widespread recognition in North America, including the United States and Canada. The Complainant states that its DRIVETIME marks are indications of high quality and origin, referable exclusively to the Complainant. The Complainant notes that it uses the DRIVETIME mark as the root word within various domain names together with a city name in order to affiliate particular cities with its local dealerships.
The Complainant states that the disputed domain name directs users to an active website that offers identical services to those of the Complainant and which imitates the Complainant’s website in several ways, including: (i) identical use of green and black coloured font in DRIVETIME mark; (ii) use of the same green accent color throughout the website; (iii) use of the Complainant’s THE GO-TO-GUYS FOR CARS AND CREDIT registered trademark; (iv) use of a nearly identical version of the Complainant’s APPROVED word and design trademark (the subject of a pending application for a USA registered trademark, Serial No. 77,960,688, as at the date of filing of the Complaint); and (v) use of a “vehicle search” page bearing a highly similar overall appearance to the page employed on the Complainant’s website. The Complainant provides evidence by way of a side-by-side comparison of the various elements of the Complainant’s and Respondent’s respective websites.
The Complainant submits that the disputed domain name is confusingly similar to its DRIVETIME trademarks because it incorporates the entire DRIVETIME mark and adds only the geographically descriptive term “Ontario.” The Complainant asserts that the most dominant feature of the disputed domain name is the Complainant's DRIVETIME trademark. The Complainant states that it is well settled that the addition of geographically descriptive wording to a mark owned by a third party has no significance when comparing a domain name and a complainant’s trademark. The Complainant asserts that the potential for confusion is increased by the fact that Ontario is also a well-known city located in California, proximate to Los Angeles, in addition to being a province of Canada. The Complainant notes that it maintains four physical dealerships around the Los Angeles area that are intended to serve potential customers in California and the surrounding states, including one in Montclair, California, which is a neighboring city to Ontario, California, and is little more than three miles distant.
The Complainant states that the Respondent is not a licensee of the Complainant nor has the Complainant extended any explicit or implied permission to the Respondent allowing the Respondent to use the Complainant’s DRIVETIME or other marks, particularly in light of the fact that the Respondent is providing identical, competitive services. The Complainant asserts that the Respondent’s alleged mimicking of the Complainant’s website and unauthorized use of the Complainant’s trademarks establishes both a lack of legitimate interest in the disputed domain name and bad faith registration and use.
The Complainant submits that it is likely that the Respondent registered the disputed domain name along with the corresponding country code domain name on the same date. The Complainant asserts that the Respondent was aware of the Complainant’s reputation and legal rights at the time it registered both domain names, in that the Respondent has used multiple identical marks to those of the Complainant in the disputed domain name and on the actual resulting website. The Complainant asserts that the Respondent registered the disputed domain name in bad faith for the purpose of disrupting the Complainant’s dealership and financing services and/or passing itself off as the Complainant in order to attract Internet users to its website for commercial gain. The Complainant submits that the inference of bad faith registration is strengthened by the Respondent’s use of the Complainant’s DRIVETIME trademarks, including the identical stylization, and the use of several other marks owned by the Complainant, most notably, THE GO-TO-GUYS IN CARS AND CREDIT.
The Complainant submits that the Respondent cannot reasonably contend it to be mere coincidence that the Respondent elected to use the Complainant’s identical marks with the identical stylization, and that the Respondent would cater to the same clientele, yet was unaware of the Complainant’s rights in its DRIVETIME and other trademarks. The Complainant notes that as of November 11, 2011, the disputed domain name resolved to a website that provided a commercial posted via a YouTube link displaying: (i) a building featuring a sign nearly identical to the Complainant’s signage; (ii) the Complainant’s APPROVED design mark as part of the advertisement; and (iii) showing sales representatives wearing shirts and/or hats displaying the Complainant’s DRIVETIME trademarks (evidence provided in the form of screenshots). The Complainant asserts that the Respondent is very likely to be extracting financial gain via car sales based upon the goodwill in, and popularity of, the Complainant’s DRIVETIME trademarks. The Complainant states that the totality of the circumstances supports the Complainant’s contention that the Respondent is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated to the satisfaction of the Panel that it has rights in the registered trademark DRIVETIME. The disputed domain name incorporates this term in its entirety, together with the geographic descriptor “Ontario”. The top level domain “.com” may be disregarded for the purposes of comparison, as is customary in cases under the Policy.
Numerous previous cases under the Policy have found that where a distinctive trademark is incorporated in its entirety within a domain name, the addition of a geographic indicator will generally not distinguish that domain name from the trademark (Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171). In the present case, the Panel considers that the dominant and distinctive element of the disputed domain name is the Complainant’s DRIVETIME trademark and not the word “Ontario”. The addition of the latter to the Complainant’s trademark appears to the Panel to be merely suggestive of a particular location in which the Complainant’s services may be obtained by its customers.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not a licensee of the Complainant and that the Complainant has not extended any explicit or implied permission to the Respondent allowing the Respondent to use the Complainant’s DRIVETIME or other marks. The burden of production accordingly shifts to the Respondent to bring forward evidence of its rights or legitimate interests, if any, in the disputed domain name.
While the Respondent has not responded to the Complaint, it is clear to the Panel from the evidence supplied by the Complainant that the disputed domain name has been used in association with a website which reproduces the same look and feel of the Complainant’s website along with repeated use of the Complainant’s registered trademarks including THE GO-TO-GUYS FOR CARS AND CREDIT and the use of the mark APPROVED in an identical stylized format (featuring a “rubber stamped” appearance) to the Complainant’s registered trademark. The Panel notes in passing that the latter mark was under application at the date of submission of the Complaint however it has since been granted (USA service mark No. 4,107,237 registered on March 6, 2012, (class 36)). The mark was however filed on March 17, 2010, with a claimed first use in commerce of November 2009, both pre-dating the registration of the disputed domain name. Taken together, all of the above circumstances are supportive of the Complainant’s submission that the Respondent registered the disputed domain name with a view to passing itself off as the Complainant in order to attract Internet users to its website for commercial gain and the Panel cannot conceive of any more likely alternative explanation for the Respondent’s actions. The Respondent’s use, on the website associated with the disputed domain name, of the Complainant’s multiple trademarks, DRIVETIME, APPROVED and THE GO-TO-GUYS IN CARS AND CREDIT along with identical stylization and accented colouring has the appearance of deliberate targeting and could not be described in any sense as mere coincidence. In the Panel’s opinion, such use cannot confer any rights or legitimate interests upon the Respondent.
The Respondent has chosen not to explain its conduct or to set out evidence of any rights or legitimate interests and thus has failed to rebut the prima facie case made by the Complainant. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present case, based on the contentions and evidence supplied by the Complainant, the Panel considers it more probable than not that the Respondent registered the disputed domain name with intent to target the Complainant's various trademarks and to pass itself off as being a localized service of the Complainant directed to the province of Ontario, Canada. As noted in the preceding section, the Panel is satisfied that the Respondent deliberately selected the Complainant’s multiple marks along with the identical stylization and accented colour, for use in connection with identical goods and services. In the Panel’s view the sheer volume of identical features goes well beyond any possible suggestion of mere coincidence.
In all of these circumstances, the Panel considers that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website and therefore that the disputed domain name has been registered and is being used in bad faith.
Accordingly the third element under the Policy has been established. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: April 24, 2012
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