Complainant is Manheim, Inc. of Atlanta, Georgia, United States of America (“US”), represented by Kilpatrick Stockton LLP, US.
Respondent is Domains By Proxy, LLC / Jovon Ponce, both of Scottsdale, Arizona, US. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2014, the Registrar 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 Complainant on October 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on October 27, 2014.
The Center verified that the amended 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 proceeding commenced on October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 27, 2014. 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 is the owner of registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) of the word service mark MANHEIM, various MANHEIM-formative word service marks, and various MANHEIM word and design service marks. These include MANHEIM AUCTIONS, registration number 1,699,332, registration dated July 7, 1992, in international class (IC) 35, covering “automobile auction services”, and; MANHEIM, registration number 4,490,473, registration dated March 4, 2014 in ICs 35, 36, 37, 39, and 42, covering various aspects of automobile auction services, including providing services on the Internet. Complainant has presented evidence of a substantial number of additional service mark registrations for MANHEIM word, MANHEIM-formative word and MANHEIM word and design service marks in the United States and other countries.
Complainant has used the MANHEIM mark since as early as 1969 in connection with wholesale automobile auction services, and today provide such services widely throughout the United States and in numerous countries outside the United States. Complainant indicates that it registers nearly 7 million used vehicles for sale annually, conducts more than 700 auctions per week, and has facilitated almost USD 46 billion in vehicle sales value, serving tens of thousands of automotive dealers throughout the world. Complainant provides services to automobile dealers ancillary to its auction services, such as vehicle transportation and storage. Complainant offers a wide variety of services online, including vehicle auctions via the Internet, at a commercial website with address at “”. According to Complainant, its website posts approximately 150,000 listings at any given time, and receives an average of 5 million visits per month. Complainant indicates that it has spent millions of dollars in advertising and promoting the MANHEIM marks.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the disputed domain name was June 29, 2013.
At the address identified by the disputed domain name, Respondent operates a website headed “Manheim Access”, in large letters, followed by “Get Access To The Dealer Auctions And Buy Like The Dealers Do!”. The home page states, inter alia, “We provide you with access to Manheim, the largest Auto Auction company in the world.” The service provided by Respondent is stated to start at USD 795 per month. In addition to offering access to Complainant’s vehicle dealer auctions, Respondent’s website offers access to a competitor of Complainant, “Adesa”, and to click through advertisements such as “Avis Rental Car Sales”.
Complainant indicates that on October 14, 2014, it attempted to contact Respondent by telephone, and left a message referring to Complainant’s trademark rights and demanding transfer of the disputed domain name. According to Complainant, Respondent did not return its call.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the trademark MANHEIM and various MANHEIM-formative marks, and that the disputed domain name is confusingly similar to the most salient portion of Complainant’s marks, i.e. MANHEIM.
Complainant argues that Respondent lacks rights or legitimate interest in the disputed domain name because: (1) Complainant’s acquisition of trademark rights substantially preceded Respondent’s registration of the disputed domain name; (2) Respondent was clearly aware of Complainant’s trademark rights when it registered the disputed domain name; (3) Respondent has no intellectual property rights or legitimate interests in the disputed domain name, and; (4) Respondent has used the disputed domain name for commercial purposes and financial gain, and not for any “fair use”.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is operating a business under the name and mark MANHEIM ACCESS which is prominently displayed on its website homepage; (2) Respondent does not otherwise identify its business on its website, and it is thereby misleading Internet users who reach Respondent’s website believing it may be associated with Complainant; (3) Respondent is offering services competitive to those offered by Complainant; (4) Respondent has attempted to conceal its true identity, and failed to respond to Complainant’s demand; (5) Respondent intends to profit by trading on the goodwill of Complainant’s trademark by charging fees and earning advertising revenues from third parties posting advertisements on its website; (6) Respondent has not been authorized to use Complainant’s trademark, and; (7) by registering and using the disputed domain name in the above-describe manner, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s MANHEIM mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Respondent did not reply to email notification. The express courier delivery service engaged by the Center reported that the Written Notice of the commencement of the proceeding was successfully delivered (including signed acknowledgment of delivery). The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the word service mark MANHEIM and various MANHEIM-formative service marks on the Principal Register of the USPTO (see Factual Background, supra). Registration on the Principal Register establishes a presumption of ownership and validity of service mark rights (hereinafter more generally “trademark” rights), and Respondent has not challenged Complainant’s ownership of trademark rights. Complainant has demonstrated that its rights in the trademark MANHEIM arose prior to registration of the disputed domain name. The Panel determines that Complainant owns rights in the trademark MANHEIM.
The disputed domain name combines Complainant’s MANHEIM trademark with a common noun “access” that refers to a means to approach a person or thing.1 The disputed domain name, directly incorporating Complainant’s distinctive trademark, is visually similar to Complainant’s trademark. The addition of a common term suggesting a way to approach Complainant’s services strongly suggests an association between Complainant and its services and the disputed domain name. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant owns rights in the trademark MANHEIM, and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has failed to reply to Complainant’s prima facie showing. Respondent is using the disputed domain name in connection with offering a commercial service that takes advantage of Complainant’s trademark and its services, as well as referring to a third-party competitor of Complainant, “Adesa”, and providing advertising links, such as to “Avis Rental Car Sales” as described in section 4. Respondent has not presented an argument to suggest that such use constitutes fair use of Complainant’s trademark, and the Panel fails to find fair use apparent on its face.
Respondent’s use of the disputed domain name does not otherwise on its face manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “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.” Among those circumstances are: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered the disputed domain name with apparent knowledge of Complainant’s rights in its trademark as evidenced by the way Respondent has prominently used Complainant’s trademark on its website. The disputed domain name is confusingly similar to Complainant’s trademark, and an Internet user viewing the disputed domain name would be likely to assume that Complainant is the source, sponsor, affiliate or endorser of Respondent’s website. Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant acting as the source, sponsor, affiliate or endorser of Respondent’s website. Such registration and use constitutes bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
The Panel determines that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant. 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 Complainant.
Frederick M. Abbott
Sole Panelist
Date: December 9, 2014
1 See, e.g., “/dictionary/access”, inter alia, “a way of getting near, at, or to something or someone”.
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