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WIPO Arbitration and Mediation Center

1. Parties

The complainant is eAuto, L.L.C., a Texas corporation, having its principal place of business at Dallas, Texas, United States. The respondent is Net Me Up, a company based in Rancho Cordova, California, United States and licensed to do business in Sacramento, California, United States.

2. Domain Name and Registrar

The domain name at issue is eautomotive.com. This domain name is registered with Network Solutions, Inc.

3. Procedural History

Complainant initiated this proceeding by filing a complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 25, 2000. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center notified Respondent of the commencement of this proceeding on March 3, 2000. Federal Express has confirmed that the Complaint was delivered to a person at the address provided in Respondent’s domain name registration.

On March 21, 2000, Respondent’s representative requested an extension of time from the Center to respond to the Complaint on account of its principal’s travel schedule. On March 22, 2000, the Center granted Respondent an extension until March 29, 2000 to submit a Response. On March 28, 2000, Respondent submitted its Response to the Complaint. On March 31, 2000, the Center appointed David H. Bernstein as the sole panelist in this matter. No further communications have been received from the parties.

4. Factual Background

According to the Complaint, Complainant is in the business of offering a full range of automotive information to companies and individuals through its Internet site at www.eauto.com. Since January 15, 1996, Complainant’s Internet site has provided information and links to the Internet sites of manufacturers, distributors, and retailers of auto parts and auto accessories, auto makers, auto dealers, automotive services, automotive news and events, automotive news groups and automotive e-mail lists. The domain name eauto.com was registered to the founder of Complainant on July 15, 1995, and was assigned to Complainant on August 29, 1997. Complainant also owns the domain name eauto.net, which it registered on January 31, 2000.

Complainant owns a United States trademark registration for the mark EAUTO (the "Mark"), Reg. No. 2,035,083, for "providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information." This mark was registered to the founder of Complainant on February 4, 1997, and was assigned to Complainant on August 29, 1997.

Complainant alleges that the Mark has acquired and enjoys substantial goodwill and a valuable reputation. Complainant also alleges that it has expended and continues to expend a significant amount of time and money to advertise, promote, and offer for sale its services under the Mark.

In its Response, Respondent states that it has been in the business of providing Internet hosting and design services to small businesses, including automotive-related businesses, since 1997. In connection with this business, it has registered many domain names. On April 19, 1997, Respondent registered the domain name eautomotive.com for the purpose of providing a recognizable second-level domain name to the automotive-related businesses it hosts and assigns to sub-directories of the eautomotive.com site. At present, customers of the eautomotive.com site include Limousine Club, a limousine car service in California, (www.eautomotive.com/ limoclub.html) and Dent Technologies, an auto body repair shop in California (www. eautomotive.com/denttech.html).

On October 1, 1997, Complainant’s attorney sent Respondent a cease and desist letter objecting to Respondent’s use of the domain name eautomotive.com. On October 8, 1997, Respondent replied by denying that its domain name infringed any of Complainant’s intellectual property rights, but also offered to sell its domain name to Complainant for $15,000. Complainant wrote back on November 11, 1997, rejecting Respondent’s offer to sell its domain name and challenging Respondent’s claim that its domain name was not likely to cause confusion with the Mark and the domain name eauto.com.

Respondent since has stated that it offered to sell the domain name eautomotive.com before its Internet hosting business was fully developed and that it now considers this offer to sell withdrawn. Respondent further states that it regularly receives offers to buy its second-level domain names, and that, since at least December 1998, it has turned down all such offers. To substantiate this assertion, Respondent submitted copies of more than three dozen emails in which it rejected offers to purchase such domain names as e-tv.com, ewomen.com, ecount.com, e-ads.com, evoting.com, edining.com, efilms.com, ebookings.com, epages.com, edirectory.com, ebuilders.com, ejournal.com, emedical.com, enetwork.com, eideas.com, erealty.net and eplanet.net.

5. Parties’ Allegations

Complainant alleges that Respondent’s registration and use of the domain name eautomotive.com violates its rights in its trademark EAUTO and its domain name eauto.com. Specifically, Complainant alleges that the domain name eautomotive.com is confusingly similar to the Mark and the domain name eauto.com, and therefore Respondent’s use of the domain name eautomotive.com is likely to cause consumer confusion. Complainant further alleges that Respondent has no legitimate interest in the domain name eautomotive.com because (i) Respondent registered the domain name fifteen months after Complainant’s first use of the Mark, two months after Complainant’s federal registration of the Mark, and twenty-one months after Complainant registered its domain name, and (ii) Respondent’s domain name does not reflect the name of its corporate identity. Finally, Complainant alleges that Respondent acted in bad faith in registering and using the domain name eautomotive.com, as proven by (i) Respondent’s use of the domain name in connection with a site that, on its home page, shows no automotive-related goods or services, (ii) its registration of dozens of other domain names, many of which combine the prefix "e" with the generic name of a good or service, (iii) its decision to register the domain name eautomotive.com notwithstanding its likely knowledge of Complainant’s own registration and use of the EAUTO trademark and the domain name eauto.com, (iv) its continued use of the domain name eautomotive.com after receiving notice from Complainant of its rights in the Mark and in the domain name eauto.com, and (v) its offer to sell the domain name eautomotive.com to Complainant for an amount in excess of its registration costs.

In its defense, Respondent alleges that its registration and use of the domain name eauotomotive.com is not confusingly similar to the mark EAUTO or the domain name eauto.com. Specifically, Respondent states that (i) Complainant’s U.S. registration of the Mark should not give it preclusive rights against the domain name eautomotive.com because Complainant registered the Mark in 1997 for a broader scope of services than now is permitted under U.S. Patent and Trademark Office rules, and (ii) in the two years that it has used the domain name eautomotive.com, it is aware of no instances of actual confusion between this domain name and either the Mark or the domain name eauto.com. Respondent also argues that it has a legitimate interest in this domain name because it uses the name in connection with its business of hosting and designing automotive-related Internet sites. Lastly, Respondent states that it registered the domain name eautomotive.com and the other domain names Complainant has identified in good faith in connection with the Internet identity services it provides its clients, and that it had no knowledge of Complainant’s eauto.com Internet site at the time it registered this domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the Respondent has registered and has been using the domain name in bad faith.

For reasons identical to those set forth in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a King Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000), and EAuto, L.L.C. v. EAuto Parts, Case No. D2000 - 0096 (WIPO Apr. 9, 2000), the Panel concludes that the domain name eautomotive.com is confusingly similar to the trademark EAUTO. That is because, like eautolamps.com and eautoparts.com, eautomotive.com incorporates in its entirety a mark that has been registered by the U.S. Patent and Trademark Office, and which thus is entitled to a rebuttable presumption of distinctiveness. However, the Panel notes that EAUTO is on the weaker side of the range of distinctive marks.

The Panel expressly rejects Respondent’s claim that its domain name is not confusingly similar to the mark EAUTO and the domain name eauto.com because Complainant’s U.S. trademark registration for the Mark is overbroad, and therefore invalid. Even if the trademark registration were subject to attack (an issue this Panel need not reach), it would be sufficient for Complainant to rely on its common law rights in the eauto.com mark. Ownership of a registration is not a prerequisite to filing an action for abusive domain name registration.

The Panel also rejects Respondent’s alternative argument that the absence of actual confusion to date proves that its domain name is not confusingly similar to the mark. The test under this first factor is not whether there has been confusion, but rather, whether the domain name and the trademark are sufficiently similar that confusion could occur. Although evidence of actual confusion would be persuasive evidence of that the name and mark are confusingly similar, the absence of actual confusion does not preclude such a finding.

Respondent’s arguments are more persuasive with respect to the second prong of the domain name transfer analysis: Whether it has any rights or legitimate interests in respect of the domain name. For reasons similar to those set forth in EAuto, L.L.C. v. EAuto Parts, the domain name eautomotive.com is descriptive of a business that offers, through the Internet, information or sales related to automotive goods and services. Given that this is precisely what Respondent does -- it uses the eautomotive.com domain name to offer subdirectory web hosting services to automotive-industry businesses -- it appears that Respondent has a legitimate interest in this domain name. Documentary proof that this is Respondent’s legitimate business was submitted with the Response.

In light of this finding, the Panel need not consider Complainant’s assertions of bad faith. Nevertheless, the Panel does expressly reject Complainant’s contention that Respondent’s registration of dozens of other e-something domain names is evidence of its bad faith. To the contrary, Respondent’s registration of these other domain names, all of which use a generic word, provides strong evidence that Registrant registered and used the domain name eautomotive.com in connection with its overall Internet hosting operations, and not to target, harass, or profit at the expense of Complainant. This is further evidence of Respondent’s legitimate interest in this domain name.

7. Decision

The Panel finds that Respondent has registered a domain name (eautomotive.com) that is identical or confusingly similar to Complainant’s trademark (EAUTO). Respondent, however, has demonstrated that it has a legitimate interest in respect of that domain name. Accordingly, the Panel concludes that the domain name eautomotive.com should not be transferred to Complainant eAuto, L.L.C.

David H. Bernstein
Presiding Panelist

Dated: April 13, 2000