The Complainant is Autobiz of Suresnes, France, represented by Cabinet Beau de Loménie, France.
The Respondent is Naveen Sharma of Bangalore, India. 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 December 6, 2016. On December 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center received email communications from the Respondent on December 9, 2016, December 12, 2016 and December 13, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2016. On December 20, 2016, in response to an email from the Respondent dated December 17, 2016, the Center noted that a UDRP proceeding may be suspended to implement a settlement agreement between the Parties. The Center subsequently received no request for a suspension and the proceedings continued. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on January 5, 2017. The Center received a further communication from the Respondent on January 6, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on January 12, 2017. 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’s business concerns (according to the Complaint) the sale of “decision-making management tools for the automotive sector”, intended to determine the replacement value of motor vehicles. The Complainant says that it is a world-wide leader in this field and provides more than 35 million monthly price statements in more than 30 countries. The Complainant’s “AutobizExpert platform is aimed at automotive experts and insurers”.
The Complainant owns multiple registrations for the trademark AUTOBIZ in a number of jurisdictions, including in India where the Respondent appears to have its address, and International mark number 1008662, registered on October 28, 2008. In India, the Complainant’s mark has been registered since July 10, 2015. In France, the Complainant’s mark was first registered on June 18, 2004.
The Complainant also has a number of domain name registrations that incorporated its mark, including , and .
The disputed domain name was registered by the Respondent on September 7, 2015 (for this purpose, the Panel has assumed that the Respondent’s registration coincides with the “creation date” identified by the Registrar’s confirmation of the WhoIs details). The annexes to the Complaint include a screenshot of the Respondent’s website as at December 6, 2016. That website includes various graphics and a statement “We Build Innovative Technology for Automotive Retail”.
On December 20, 2016, the Center received an email from the courier company indicating that the Respondent’s address for delivery of written notice of the proceeding was incomplete or wrong (that address being based on the WhoIs details for the disputed domain name). 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is confusingly similar to its trademark, since the distinctive and dominant “autobiz” part of the disputed domain name coincides with the Complaint’s mark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s mark has no meaning other than in connection with the Complainant. As such, in the absence of evidence to the contrary, it is not possible for any other entity, including the Respondent, to have rights or legitimate interests in the Complainant’s mark. The Complainant further states that it has never granted any licence or permission to the Respondent to use its trademark or register any domain name containing the mark.
The Complainant, thirdly, says that the Respondent has registered and used the disputed domain name in bad faith. The Complainant’s mark was used and registered before the registration of the disputed domain name. The Complainant has a presence on the Internet and is well-known globally in the field of car evaluation. The sign AUTOBIZ does not have any ordinary meaning in the English language. Thus, it is improbable that the Respondent was not aware of the Complainant’s trademark rights when it registered the disputed domain name.
Moreover, the Respondent is using the disputed domain name for offering services in respect of automotive dealer analytics, sales, services, parts, finance, insurance, etc. Thus it is obvious that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
While the Respondent did not submit a formal reply, the Respondent made a number of communications with the Center. On December 9, 2016, the Respondent sent a brief email to the Center stating “Please make me understand what this dispute is about. There is no common aspect in both the organization; ‘AutoBiz Intelligence’ & AUTOBIZ, FRANCE other than the work ‘AutoBiz’[.] Business model, logos, product offerings for both the organizations are different. So what is this dispute for?”
The Respondent sent a somewhat similar email to the Center on December 12, 2016, also pointing to “at least 10 other websites with the word ‘AutoBiz’ that may not belong to the complainant.”
The Respondent sent another email to the Registrar on December 13, 2016, asking to unblock its website.
On December 17, 2016, the Respondent sent an email to the Center stating that “We are not pursuing this case to the claim the website – … It would have been helpful, if an email notice was sent by AutoBiz before registering the dispute at WIPO … This led to business and financial loss for my organization …”.
On January 6, 2017, the Respondent sent an email to the Center referring back to its email of December 17, 2016, and restating that “We are not interested in pursuing this case to claim the website – . Subsequent to this mail, ‘A’ and the word ‘AutoBiz’ has been dropped from our website and social media platforms. We are working on rebranding the organization.” 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
The Panel also notes the Respondent’s somewhat vague statement that it is “not interested in pursuing this case”. That statement might be taken to mean that the Respondent does not contest the case against it. But the statement is not that clear. It could just indicate that the Respondent does not think a formal Response is worth its while. Despite the Center’s email pointing to the capacity of the Parties to request a suspension, no such request was made. As such, the Panel has proceeded to a decision on the merits, but has taken the Respondent’s emails into account, so far as they are relevant to the three elements as follows. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, for the following reasons.
The disputed domain name wholly incorporates the Complainant’s mark. It is well established that this can form a basis for confusing similarity. See, e.g., AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102.
The majority of UDRP panels have traditionally ignored the generic Top Level Domain (“gTLD”) for the purpose of comparison under paragraph 4(a)(i) of the Policy.
In this case, the Panel does not consider that the addition of the word “intelligence” affects the confusing similarity with the Complainant’s mark. The addition of this term is one that an Internet user might readily associate with the Complainant’s business. As such, the addition of that term is unlikely to distinguish the Complainant’s mark or avoid the potential for confusing similarity.
For these reasons, the Panel considers that the Complainant has established that the disputed domain name is confusingly similar to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second thing which the Complainant must establish to succeed is that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition(“WIPO Overview 2.0”), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests. Although here the Complaint is brief, it is sufficient to establish a prima facie case against the Respondent.
Although the Respondent did not submit a formal Response to the case against it, the Respondent’s various emails, in effect, appear to claim that there is nothing distinctive about the Complainant’s mark. In this connection, the Respondent points to ten other domain names that contain the element “autobiz” that are not apparently connected with the Complainant. The Respondent appears to be suggesting that it has a legitimate interest in the term “autobiz” because it has some generic connotation, unconnected with the Complainant.
There are four problems with this argument.
Firstly, the Panel in the context of the present proceeding cannot make a ruling on whether the Complainant may also have a claim against third parties.
Secondly, the Complainant has trademark rights in AUTOBIZ. The Complainant is thus entitled to rely on those registered rights.
Thirdly, the context of the Respondent’s use of the disputed domain name does not appear to the Panel to be comparable to the websites at the domain names that the Respondent refers to. All of the associated sites appear to relate to the sale of cars, servicing, spare parts and the like. On the other hand, the Complainant provides software for the car dealership and insurance industries. The Respondent’s website appears to offer a similar type of product – that is, business software for the automotive industry. Beyond this, the particular nature of the Respondent’s offered products were somewhat unclear to the Panel. The Respondent’s website refers to “Data Intelligence and Customer Connect Solutions”.
Fourthly, the Respondent itself has not submitted a formal reply to the Complaint or provided evidence to rebut the prima face case against it. Rather, the Respondent has stated that it is not interested in pursuing this case. If the Respondent considered it had a good case against the Complainant, the Panel would have expected the Respondent to file substantive arguments and evidence in reply. The Panel can only be left with the impression that the Respondent does not have a good case in reply nor evidence that would displace the claims made by the Complainant.
For all of these reasons, the Panel does not accept the Respondent’s suggestion that it has some rights or legitimate interests in the term “autobiz” because of its generic connotations. There is no other evidence in the case file that suggests that the Respondent may have some other rights or legitimate interests, including of the kind described in paragraph 4(c) of the Policy.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name was registered and is being used in bad faith. Bad faith may be found where the Respondent registered and used the disputed domain name to take unfair advantage of the Complainant’s rights in some way. See, e.g., Your Golf Travel Limited v. Hardelot Holidays Limited,WIPO Case No. D2007-1058.
In the circumstances of this case, and on balance, the Panel finds that the disputed domain name was registered and has been used in bad faith. The Respondent has registered a domain name that is confusingly similar to the Complainant’s mark and the graphics on the Respondent’s website seem (to this Panel) to be not unlike those on parts of the Complainant’s website. The Respondent has chosen to provide no evidence of its rights or legitimate interests in the disputed domain name. The Respondent appears also to have provided some false contact details in the WhoIs record, as evidenced by the inability of the courier company to deliver written notice of the proceeding at the address listed in the WhoIs, which may be one indicator of bad faith; see Chanel v. 1,WIPO Case No. D2003-0218.
The Respondent appears to operate in a similar line of business to the Complainant. The Respondent registered the disputed domain name a little over a year before the Complaint was filed, and more than ten years after the Complainant’s first mark was registered.
In these circumstances, the Panel finds that it was more likely than not that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name, and by using the disputed domain name the Respondent intended to obtain some financial advantage of the Complainant’s goodwill.
For these reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith. 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.
James A. Barker
Sole Panelist
Date: January 28, 2017
Full & Egal Universal Law Academy