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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carfax, Inc. d/b/a Carfax v. Auto Check USA
Case No. D2001-0929
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 Auto Check USA, located at 1970 Deer Park Avenue, Deer Park, New York 11729, USA.
2. The Domain Name and Registrar
This dispute concerns the following domain name ("Disputed Domain Name"), <carfaxdiscount.com>
The Registrar with which this domain name is registered is Domain Bank, Inc., 23 West 4th Street, Bethlehem, Pennsylvania 18015-1603, USA.
3. Procedural History
On July 19, 2001, and July 23, 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 July 19, 2001, the WIPO Center acknowledged receipt of the said Complaint. On July 26, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar. On August 31, 2001, the Registrar, Domain Bank, Inc., 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 September 3, 2001, the WIPO Center sent a Request for Amendment to Complaint to Complainant, who complied with e-mail and hardcopy Amendments on September 6, 2001, and September 10, 2001, respectively.
On September 11, 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 , facsimile, 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 September 11, 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. October 1, 2001. On October 2, 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 October 11, 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 Respondent’s registration and use of Complainant’s well-known CARFAX and CARFAX.COM trademarks (the Marks), which are protected by United States federal and state laws. The Marks are inherently distinctive, famous, and well-known. Complainant created and adopted the Marks as unique identifiers for its goods and services. The Complainant alleges that in knowing disregard of Complainant’s rights, Respondent registered the Domain Name in violation of his or her registration agreement with the Registrar, United States trademark laws, and other federal and state laws.
The Complainant has used the CARFAX Mark since at least as early as October 10, 1984.
The Complainant has used the CARFAX.COM Mark since at least as early as July 1, 1997.
Complainant is a leading and well-known provider of automobile information. Throughout the last seventeen years, Complainant has provided vehicle information to automobile buyers and sellers, and developed an outstanding reputation in the industry. Since at least as early as October 10, 1984, Complainant has marketed, promoted, and used the CARFAX Mark in connection with providing information services relating to motor vehicle records. For example, Complainant uses the Marks in connection with providing information on an automobile’s past history.
Complainant is the owner of U.S. Registration No. 1,589,438 for CARFAX, which has attained incontestable status, and approved trademark application U.S. Serial No. 75/758,044 for CARFAX.COM. Complainant uses its Marks in connection with offering its services over the Internet and directly to automobile dealers and consumers. The CARFAX and CARFAX.COM Marks, and the goodwill associated therewith, are of substantial value to Complainant.
As part of its marketing and commercial activities, Complainant has developed and extensively uses the Marks in connection with its Web site located at <www.carfax.com>. Complainant has spent considerable amounts of money, time and effort in securing, developing and promoting its Web site. Complainant has also spent substantial amounts of time and money advertising the CARFAX and CARFAX.COM Marks. As a result of Complainant’s extensive advertising and promotion of the CARFAX and CARFAX.COM Marks, the public associates the Marks with the reputable and valuable services provided by Complainant.
Complainant has actively protected its rights in the CARFAX and CARFAX.COM Marks. Complainant routinely monitors the Internet for impermissible uses of its Marks; drafts cease and desist letters to companies and individuals, like Respondent, who are wrongfully using the Marks; and actively enforces its rights against those who continue to infringe Complainant’s rights.
The Disputed Domain Name is substantially identical and confusingly similar to Complainant’s CARFAX and CARFAX.COM Marks because, in part, the Domain Name wholly incorporates Complainant’s Marks, and differs from Complainant’s <www.carfax.com> Internet Web site address by only the addition of the generic word "discount."
The mere addition of a generic word does not reduce the likelihood of confusion between the Marks and the Domain Name. For example, a NAF Arbitrator recently found that another disputed domain also consisting of a registered trademark and a generic word was confusingly similar to Complainant’s ESPN mark under Policy Paragraph 4(a)(i). ESPN, Inc. v Internet Bigbang Co., Ltd., FA0097093 (Nat. Arb. Forum May 29, 2001) (transferring the domain name <espntoday.com> to complainant ESPN, Inc.). Especially noteworthy for purposes of the instant complaint, is the Arbitrator’s finding that: "The mere addition of the generic word ‘today’ does not avoid the likelihood of confusion under Policy Paragraph 4(a)(i)." Id.
The Respondent registered the Disputed Domain Name <carfaxdiscount.com> on November 27, 1999, 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.
Complainant’s adoption and use of its CARFAX Mark precede Respondent’s registration of the Domain Name by over fifteen years.
Complainant’s registration and use of its CARFAX.COM Mark as an Internet domain precede Respondent’s registration of the Domain Name by over two years.
Respondent is not using the Domain Name in connection with a bona fide offering of goods, or a legitimate noncommercial or fair use. Specifically, attempts to access <www.carfaxdiscount.com> result in DNS error messages stating that the Internet site cannot be accessed and that a connection to the server cannot be established. "This means that the web [site] corresponding to the domain name at issue [is] inactive for all practical purposes." Compañia de Radiocomunicaciones Móviles S.A., et al. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (basing conclusion on DNS error messages displayed for each of the three domain names at issue). The fact that the Domain Name is ". . . inactive prevents any finding of bona fide offering or fair use of the domain name." Id. Respondent has even told Complainant that he is not and has no intention of using the Domain Name in commerce.
Additionally, Respondent is not commonly known by the Domain Name or Complainant’s famous and distinctive CARFAX and CARFAX.COM Marks.
Complainant’s counsel sent Respondent via Anthony Mignano ("Mignano"), the Administrative Contact for the Domain Name, a cease and desist letter on January 10, 2000 demanding that Respondent cease from all use of the Mark and Domain Name; and transfer ownership of the Domain Name to Complainant. Complainant even offered Mignano a General Release in connection with his transfer of the Domain Name.
Mignano contacted Complainant’s counsel and twice stated that he would not transfer the Domain Name unless Complainant paid him, telling counsel that an acceptable amount would be what Complainant thought the Domain "was worth."
Complainant responded to Mignano’s demand for payment, in part, by repeatedly reminding him of Complainant’s right to the Domain Name and the use of its Marks, telling him that his demand constituted bad faith under United States law, and restating its demand that he transfer the Domain Name to Complainant.
Shortly thereafter, Mignano stopped responding to Complainant’s further voice and e-mail communication attempts, the last of which occurred in December of 2000.
On May 17, 2001, Complainant’s counsel sent Respondent a cease and desist letter via certified U.S. mail to Respondent’s 1970 Deer Park Avenue, Deer Park, New York 11729.
The U.S. Post Office subsequently returned to Complainant the May 17, 2001 letter sent to Respondent because the Deer Park, New York street address listed by Respondent in the Domain Name’s registration does not exist.
5. Parties’ Contentions
Essentially, the contentions of the Complainant are as follows:
The Disputed Domain Name wholly incorporates the Complainant’s MARKS, and is confusingly similar to those MARKS,
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 Respondent’s Domain Name(s) is(are) 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 Domain Name(s); and
ii) the Respondent’s 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 CARFAX and CARFAX.COM marks. Ownership of these marks is clearly documented in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the marks, 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 marks and finds that the second level domain thereof is dominated by the Complainant’s marks. The Panel finds that there is such similarity in sound, appearance, and connotation between the marks and the said Disputed Domain Name as to render said Disputed Domain Name confusingly similar to the Complainant’s marks. The mere addition of the generic word "discount" in the Disputed Domain Name does not avoid the likelihood of confusion under Policy Paragraph 4(a)(i).
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 CARFAX and CARFAX.COM marks or to apply for or use any domain name incorporating those Marks, 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 Disputed Domain Name is evident in a number of ways.
Respondent’s activities in connection with the Disputed Domain Name, which is confusingly similar to and wholly incorporates Complaint’s famous and registered Marks, such as demanding payment for transferring the Domain Name to Complainant, failure to respond to Complainant’s cease and desist letters, using false identification information in the Domain Name’s registry record, and not using the Domain Name in connection with a bona fide offering of goods or services or fair use, justify a finding of bad faith in registration and use of the Disputed Domain Name pursuant to the proscriptions for granting the following relief.
For the above reasons, the Panel finds that the Disputed Domain Name 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 <carfaxdiscount.com> be transferred to the Complainant pursuant to Paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: October 25, 2001