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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carfax, Inc. d/b/a Carfax v. Tony Falco
Case No. D2001-0833
1. The Parties
The Complainant is Carfax, Inc. d/b/a Carfax, a corporation organized and existing under the laws of the State of Pennsylvania, with its principal place of business located at 10304 Eaton Place, Fairfax, Virginia 22030, USA.
The Respondent is Tony Falco, with located at 8410 Ramsgate Road, Pensacola, Florida 32514, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name ("Disputed Domain Name"):
The Registrar with which this domain name is registered is All West Communications, Inc. d/b/a AWRegistry, P.O. Box 588, 50 West 100 North, Kamas, Utah 84036, USA.
3. Procedural History
On June 27, 2001, and June 29, 2001, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") received a Complaint by e-mail and in hard copy for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
On June 28, 2001, the WIPO Center acknowledged receipt of the said Complaint. On June 28, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar. On June 28, 2001, the Registrar, AWRegistry, confirmed to the WIPO Center that it was the Registrar of the Disputed Domain Name and also that the current registrant of the said Domain Name was the Respondent.
On July 2, 2001, having found that the Complaint had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the "Notification") by post/courier and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as July 2, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. July 21, 2001. On August 1, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the "Panel"). On August 7, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him. The same day, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
A. Carfax and its Trademark
This Complaint is based on the following grounds:
This action arises out of the Respondent’s registration and use of the Complainant’s well-known LEMON CHECK trademark (the "Mark"), which is protected by state and federal law in the United States. Through the Complainant’s extensive use in commerce, the Mark also acquired distinctiveness in the minds of the consuming public. The Complainant alleges that in knowing disregard of the Complainant’s rights, the Respondent registered the Disputed Domain Name in violation of his registration agreement with the Registrar, United States trademark law, and other federal and state laws.
The Complainant has used the Mark since at least as early as June 1, 1998.
The Complainant is a leading and well-known provider of automobile information. Over the last seventeen years, the Complainant has provided vehicle information to automobile buyers and sellers, and developed an outstanding reputation in the industry. Since June 1, 1998, the Complainant has marketed, promoted, and used, the LEMON CHECK mark in connection with providing information services relating to motor vehicle records. In particular, the Complainant uses the Mark in connection with providing information on an automobile’s past history, including whether the automobile was repurchased by the manufacturer and reported to a state. The Complainant is the owner of U.S. Registration No. 2,409,610 for LEMON CHECK. The Complainant offers its services over the Internet and directly to automobile dealers and consumers. The LEMON CHECK mark, and the goodwill associated therewith, is of substantial value to the Complainant.
As part of its marketing and commercial activities, the Complainant has developed and extensively uses the Mark in connection with its Websites at 'www.lemoncheck.com' and 'www.carfax.com'. The Complainant has spent considerable amounts of money, time, and effort in securing, developing and making popular these Websites. The Complainant has also spent substantial amounts of time and money advertising the LEMON CHECK mark. As a result of the Complainant’s extensive advertising and promotion of the LEMON CHECK services, the public associates the Mark with the reputable and valuable services provided by the Complainant. The Complainant’s registration of the domain name <lemoncheck..com> is with Network Solutions, Inc.
The Complainant has actively protected its rights in the LEMON CHECK mark. The Complainant routinely monitors the Internet for impermissible uses of its Mark; drafts cease and desist letters to companies and individuals, like the Respondent, who are wrongfully using the Mark; and will actively enforce its rights against those who continue to infringe the Complainant’s rights. Additionally, the Complainant closely monitors its licensees’ uses of the LEMON CHECK mark to ensure that the Mark is properly used.
The Respondent registered the Disputed Domain Name <lemonchecker.com> on June 3, 2000.
The Respondent originally registered the Disputed Domain Name on June 3, 2000, without the Complainant’s permission, license, or consent. The Respondent has never attempted to gain the Complainant’s permission, license, or consent.
There is no contractual relationship between the Complainant and the Respondent, and the Respondent is not participating and has never participated in the Complainant’s Affiliate Program.
The Respondent does not use and has not made demonstrable preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, the Respondent redirects Internet users attempting to access the URL address 'www.lemonchecker.com' to 'www.greatdomains.com' where the Disputed Domain Name is offered for sale. Moreover, the destination Web-page states: "This temporary Free Parking Page provided by GreatDomains.com." The Respondent’s description of the Disputed Domain Name in his offer to sell also demonstrates his lack of actual use, intention to use, or preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services. This description states: "Great place for consumers to check on the history of a used auto, truck, or any motor vehicle. The name says it all." The Complainant alleges that the Respondent prepared and authorized the display of this description in the 'GreatDomains.com' Website.
The Complainant’s counsel sent the Respondent a cease and desist letter, via regular certified mail and e-mail, on April 24, 2001, requesting that Respondent cease from all use of the Mark and the Disputed Domain Name; contact AWRegistry and instruct them to transfer ownership of the Disputed Domain Name to the Complainant; and remove his offer to sell the infringing Disputed Domain Name from the 'GreatDomains.com' Website. The Complainant’s counsel further advised the Respondent that the Respondent’s offer to sell the Disputed Domain Name would serve as evidence of bad-faith registration. At that time, the Respondent listed the domain name <lemonchecker.com> for sale at US$45,000.00.
On May 4, 2001, the Respondent left the Complainant’s counsel a voice-mail message and stated, in relevant part, the following: "Just so you know in case you’ve gone back out to great domains, I did go ahead and raised the asking price to $100,000. Now the reason I did that was kind of for my protection as well as yours, in case somebody wanted to come along and purchase it at $45,000, I’m just making sure that only serious offers are coming and not going to cause anybody any problems. I would not, I’m not trying to raise the price on either, on your client Carfax. I note where you spoke of some type of good will in your email to me. I would be willing to express that same goodwill. I did have an original asking price of $45,000. I would think possibly $40,000 would be an equitable price to ask for this site. So again, even though it’s reflecting $100,000 at the moment, that is not what I would be expecting from Carfax necessarily. I would be open to an offer of $40,000."
The Complainant’s counsel then sent another cease and desist letter to the Respondent on May 11, 2001, demanding that the Respondent cease and desist his infringement of the Mark. The Complainant’s counsel also stated that "your repeated offers to sell the domain name ‘lemonchecker.com’ will serve as evidence of your bad faith in both U.S. federal court, and in front of an international tribunal of arbitrators who resolve domain name disputes."
On May 11, 2001, the Respondent wrote: "This is in reply to your email dated May 11, 2001. It would appear that an amicable, (and fair) resolution is unlikely at this point. I would only say that I will be speaking with my attorney early next week." The Respondent’s counsel did in fact contact the Complainant’s counsel. On May 17, 2001, the Respondent’s attorney stated that the Respondent had removed the <lemonchecker.com> domain name from the AWRegistry database; that the Respondent had ceased use of the Disputed Domain Name in commerce; and that the Respondent wished to transfer the Dispute Domain Name to the Complainant. The Respondent then requested that the Complainant reimburse him for his attorney’s fees, among other things.
Contrary to his May 17, 2001, letter, the Respondent has not "removed" the Disputed Domain Name from the AWRegistry database. Additionally, the Respondent is continuing to use the Disputed Domain Name in commerce. In fact, the Respondent is still soliciting offers for sale of the Disputed Domain Name. On May 23, 2001, the Complainant’s counsel wrote the following to the Respondent’s attorney: "Carfax is willing to reimburse Mr. Falco only for the cost of transferring the domain name to it. This includes fees charged by the Domain Name Registrar. Carfax will not reimburse Mr. Falco for any attorneys fees or any other incidental costs related to this matter." On June 19, 2001, the Respondent’s attorney sent a letter to the Complainant’s attorney asking the Complainant to pay it $5,800 for the Disputed Domain Name.
This evidence establishes that the Respondent registered the Disputed Domain Name for the sole purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the owner of the LEMON CHECK trademark, namely the Complainant, for valuable consideration in excess of any out-of-pocket costs directly related to the Disputed Domain Name. Furthermore, the Respondent has continued to intentionally disregard the Complainant’s trademark rights by making continued offers to sell the Disputed Domain Name and by not complying with the terms of the numerous cease and desist letters that the Respondent received. The Respondent has not, at any time, stated any legitimate reason for his registration and use of the Disputed Domain Name other than to commercially benefit from the Complainant’s established and valuable trademark rights.
5. Parties’ Contentions
Essentially, the contentions of the Complainant are as follows:
The Disputed Domain Name wholly incorporates the Complainant’s LEMON CHECK mark, and is confusingly similar to that mark,
the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
the Respondent has registered and is using the Disputed Domain Name in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondent's Default
By Paragraph 5(b)(i) of the Rules, it is expected of a Respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
In the event of a default, under Paragraph (14)(b) of the Rules: "…the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000):
"Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, Paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondents' Domain Name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii) the Respondents have no rights or legitimate interests in respect of the Domain Name(s); and
ii) the Respondents' Domain Name(s) has(have) been registered and is(are) being used in bad faith.
The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"…the complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the LEMON CHECK mark. Ownership of this mark is clearly documented in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the mark, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainant’s LEMON CHECK mark and finds that the second level domain thereof is dominated by the Complainant’s mark. The Panel finds that there is such similarity in sound, appearance, and connotation between the LEMON CHECK mark and the said Disputed Domain Name as to render said Disputed Domain Name confusingly similar to the Complainant’s LEMON CHECK mark.
6.4 Respondent's Rights or Legitimate Interests in the Disputed Domain Name
Under Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Name or a name corresponding to the said Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) it (as individuals, a business, or other organization) has been commonly known by the said Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
iii) it is making a legitimate noncommercial or fair use of the said Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by the Respondent in demonstrating any of the foregoing factors because the Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name by the Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from the Complainant to use its LEMON CHECK name and mark or to apply for or use any domain name incorporating that Mark, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000).
6.5 Registration and Use in Bad Faith
As stated by the Panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish ‘bad faith’ on the part of the Respondent.
The Respondent’s bad faith in registering and using the domain name <lemonchecker.com> is evident in a number of ways. First, as discussed above, the Respondent owns no trademark registrations that include the mark LEMON CHECK, nor has it done business under a name that incorporates the LEMON CHECK mark prior to the Complainant's establishment of rights in the mark.
The evidence in this case is clear. The Respondent has registered and used the Disputed Domain Name in bad faith as defined in Paragraph 4(b)(i) of the policy.
For the above reasons, there is no doubt that the domain name <lemonchecker.com> was registered and is being used in bad faith by the Respondent in violation of Paragraph 4(a) of the Policy.
For all the foregoing reasons and pursuant to the ICANN Rules, Paragraph 15, the Panel finds that the Complainant has proved each of the three elements of Paragraph 4(a) of the Policy. The Panel requires that the Disputed Domain Name <lemonchecker.com> be transferred to the Complainant pursuant to Paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: September 5, 2001