The Complainant is TPI Holdings, Inc. of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Domain Admin, Privacy Protected of Prague, Czech Republic / Vimmer Dal Gol, Auto and Motorcycle Trader of New York, New York, United States of America.
The disputed domain name <autotradermotorcycles.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2016. On April 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2016, 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 the Complainant on April 20, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 22, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 April 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on May 27, 2016. 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.
The Complainant is a provider of classified advertising related to automobiles and other vehicles, including motorcycles, recreational vehicles (RV), airplanes, and boats. The Complainant is the owner of United States trademark registrations for the marks AUTO TRADER, AERO TRADER, BOAT TRADER, CYCLE TRADER, RV TRADER, and other TRADER-formative marks (collectively the “Complainant’s Marks”). The Complainant has used the AUTO TRADER mark in relation to its services since as early as 1974, and has operated a website at “www.autotrader.com” since 1995, recognized as one of the top websites for used car advertising.
The Respondent registered the disputed domain name on December 13, 2010, according to relevant WhoIs data maintained by the Registrar. The disputed domain name has been used with a parking page containing advertising links related to the sale, lease, and financing of automobiles and motorcycles.
The Complainant submits that it owns and extensively uses its well-established family of TRADER-formative marks with its classified advertising business. The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s Marks as it incorporates the AUTO TRADER mark in its entirety, and differs only by the addition of the term “motorcycle”. According to the Complainant, the inclusion of the term “motorcycle” increases the likelihood of confusion as it is a product sold on the Complainant’s website. The Complainant asserts that Internet consumers are certain to associate the disputed domain name with the Complainant’s Marks.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is not affiliated with the Complainant and has not been licensed to use the Complainant’s Marks. The Complainant notes that the Respondent first registered the disputed domain name 36 years after the Complainant’s began using the AUTO TRADER mark, and submits that the Respondent undoubtedly was aware of the Complainant’s AUTO TRADER mark when registering the disputed domain name. The Complainant maintains that the Respondent is trading on the goodwill in the Complainant’s Marks by using the disputed domain name with a parking page populated with advertising links. According to the Complainant, this does not demonstrate use or demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, nor qualify as a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent’s registration and use of the disputed domain name presents “a classic case of cybersquatting.” The Complainant maintains that the Respondent’s purposeful registration of a domain name incorporating the Complainant’s well-known AUTO TRADER mark constitutes opportunistic bad faith. The Complainant submits that the Respondent aim was to trade on and profit from the Complainant’s Marks by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant further submits that the Respondent’s passive holding of the disputed domain name in the circumstances of this case is evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774). Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting” (see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; and the Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of 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.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing that the respondent lacks such a right or interest. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s AUTO TRADER mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant’s AUTO TRADER mark for purposes of the Policy. The Complainant’s AUTO TRADER mark is distinctive and well-known, and the disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the word “motorcycle” does not serve to differentiate the disputed domain name from the Complainant’s mark. If anything, given the nature of the Complainant’s business, the addition of “motorcycle” compounds the confusing similarity with the Complainant’s mark.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s AUTO TRADER mark, and has used the disputed domain name with what appears to be a pay-per-click site with links to services related to or competitive with services offered by the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint or otherwise, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s AUTO TRADER mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s AUTO TRADER mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the record reflects that the Respondent registered and has used the disputed domain name in order to divert Internet users to a parking page providing advertising links that are related to or competitive with services provided by the Complainant. Under the attendant circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. There is no indication in the record that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the Panel considers that the Respondent was aware of the Complainant and had the Complainant’s AUTO TRADER mark in mind when registering the disputed domain name. Absent any reply by the Respondent, the record reflects that the Respondent’s motive in relation to the registration and use of the disputed domain name most likely was to capitalize on or otherwise take advantage of the Complainant’s trademark rights for commercial gain, by intentionally creating a likelihood of confusion with the Complainant’s mark as to sponsorship, endorsement or affiliation with the Respondent’s website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <autotradermotorcycles.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: June 8, 2016