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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AutoNation Holding Corp., v. Venta
Case No. D2002-0984
1. The Parties
The Complainant is AutoNation Holding Corp., Fort Lauderdale, Florida 33301 of United States of America, represented by Akin, Gump, Strauss, Hauer & Feld of United States of America.
The Respondent is Venta, Leonard Bogucki, Krakow 30-111 of Poland.
2. The Domain Name and Registrar
The disputed domain name <wwwautonation.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2002. On October 24, 2002, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On October 28, 2002, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and that the contact details for the administrative, billing, and technical contacts are those set out above for the Respondent. The Center verified that the Complaint satisfied the formal requirements of 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2002.
The Center sent copies of the Notification of Complaint and the Complaint to the Respondent by (1) e-mailing it to the e-mail address contained in the Whois records, (2) by couriering it to the physical address given in the Whois records and (3) by faxing it to the fax number given by the Respondent in the Whois records. Despite trying on a number of occasions, the fax would not transmit. The copy of the Notification of Complaint and Complaint couriered to the Respondent at the physical address set out above was returned to the Center, unopened as undeliverable.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2002.
The Center appointed me as the sole panelist in this matter on December 3, 2002. Having submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, I find that the Panel has been properly constituted.
4. Factual Background
The Complaint asserts the following facts, which have not been disputed. Unless stated otherwise, I find them proved for the purposes of this dispute.
The Complaint has registered the following trademarks in the United States of America ("USA"):
automotive repair and maintenance services
Feb. 22, 1999
automobile dealership services
June 22, 1999
AUTONATION & Design
automobile dealership services
June 15, 2000
The Complaint also claims that the Complainant operates automotive dealerships in the United States, selling both new and used automobiles, under the "AUTONATION" trade name and trademark. The Complainant claims to be the largest automotive retailer in the United States operating 374 new vehicle franchises in 17 states. Each dealership also provides automobile financing and insurance services, automobile repair service and ancillary services, all in connection with the "AUTONATION" trademark. The Complainant claims to have sold $3.9 Billion worth of used vehicles in 2001, more than any other single retailer in the United States. It also operates dealerships and franchises under several local brands, such as "John Elway", "Maroone" or "AutoWay". However, each AutoNation franchise uses the "AUTONATION" logo and mark in their company names, advertising and signage.
In addition to the retail dealerships, the Complainant operates the Autonation.com website, an on-line automotive dealer. The "Autonation.com" website provides consumers with the opportunity to purchase vehicles, both new and used, from a database of automobiles available from AutoNation dealers and also makes financing and automobile repair services available. Print-outs of pages from the Autonation.com website were included in the Complaint.
From the Whois records, it would appear that the Respondent first registered the disputed domain name on July 12, 2001. The Complainant states that this was done without the knowledge or consent of the Complainant.
The Complainant discovered the registration of the disputed domain name in or about September 2002. Printouts submitted with the Complaint show that, if the disputed domain name was entered into a browser at that time, it resolved to the websites for "car-prices-usa.com" and "invoicedealers.com". Both appear to be channels for a web-based service for car buyers, particularly car buyers in the USA.
In addition to sending a letter of demand to the Respondent, the Complainant also sent letters of demand dated September 10, 2002, to the owners of the domain name registrations for "car-prices-usa.com" and "invoicedealers.com". These responded the same day stating that the domain name no longer resolved to their websites and claiming that an "internet traffic provider" had re-directed traffic for the disputed domain name to their websites without their knowledge.
Since that date, the domain name resolves variously to "www.gotoo.com/treasure/search.html", "www.digforgold.com/index.htm" and "www.ownbox.com/treasure/index.html". These sites may best be described as indexes or catalogues or online shopping malls for a variety of goods, services and information including sex, gambling, financial and consumer goods websites.
5. Discussion and Findings
There has been no Response. As noted above, the Center’s attempt to provide the Respondent with a copy of the Complaint by fax and courier have been unsuccessful. The address details used by the Center, however, have been confirmed as correct by eNom, Inc. By clause 7, the Enom, Inc. Registration Agreement, by which the Respondent registered the disputed name, obliges the Respondent to keep "current, complete and accurate" the registrant’s name, postal address, e-mail address, voice telephone number and, where available, fax number. Consequently, as I noted above, I am satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.
Rules 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple "rubber stamping", however, as rule 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
I deal with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it.
At the least, the Complainant has demonstrated ownership of the three registered trademarks set out in section 4 above.
The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).
Here, the disputed domain name is identical to the Complainant’s registration of AUTONATION.COM save for the addition to the domain name of "www" as a prefix. Similarly, the disputed domain name is identical to the Complainant’s registration for AUTONATION save for the addition of the "www" prefix and the ".com" suffix.
Both "www" and ".com" are recognized labels identified with particular internet functionality. It has been well established that such generic terms should be disregarded for the purposes of the comparison. See for example Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini, WIPO Case No. D2002-0582 for the inclusion of a gTLD. The same reasoning should apply to "www". Consequently, I find that the disputed domain name is at least confusingly similar to the Complainant’s registered trademark rights as the only distinguishing component of it is identical to the distinctive element of the Complainant’s trademarks.
B. Rights or Legitimate Interests
As already noted, the Complainant makes it clear that the registration and use of the domain name has been without its knowledge or consent.
The Complaint asserts that the Respondent has no trademark rights in "AUTONATION". It points out that the Respondent’s only use of the domain name until the Complainant challenged the Respondent has been to misdirect visitors to the websites at "car-prices-usa.com" and "invoicedealers.com" which offer cars and related services for sale. These are the very services covered by the Complainant’s trademark registrations. Further, the websites are clearly directed at the public in the USA, the territory covered by the Complainant’s registered trademarks.
The Respondent has not offered any information in rebuttal of these allegations. As with the other requirements, however, the Complainant bears the onus of proving that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
As Panels have noted on many occasions, it is notoriously difficult to disprove a negative. In addition, there is a relationship between this requirement and the third requirement of bad faith in that, if the Complainant can show a prima facie case of bad faith, it seems to me that an evidential onus will fall on the Respondent to rebut that and provide evidence of some superior or exculpatory right of the kind of which paragraph 4(c) gives examples, all the more so as many such rights or factors are likely to be peculiarly within the Respondent’s knowledge. The Respondent’s failure to provide any claim or evidence of such exculpatory circumstances also allows me to draw the inference that exculpatory circumstances do not exist.
As I discuss below, the use of another’s trademark to misdirect the public to a competing site is an act of bad faith within the Policy. Whatever might be the case for other goods and services in other places, the use of the disputed domain name in connection with the provision of services to car buyers in the USA in competition with the Complainant is clearly not "bona fide" within the meaning of paragraph 4(c)(i) of the Policy. The disputed domain name is not obviously derived from the Respondent’s name or location. So, in the absence of any claim or evidence to the contrary, paragraph 4(c)(ii) does not apply. As the disputed domain name resolved, and continues to resolve, to commercial websites, paragraph 4(c)(iii) cannot apply.
The instances set out in paragraph 4(c) are of course examples only. However, it is not the role of the Panel to speculate on the myriad possibilities which could potentially arise if the factual record were different.
Accordingly, on the basis of the evidence presented in this dispute, I find the Complainant has proved that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
It is well settled that the Complainant must show that the domain name has been both registered and used in bad faith. The Policy sets out in paragraph 4(b) four illustrative circumstances which may satisfy that requirement. The examples, however, are expressed to be "without limitation" and, as Panels have repeatedly found, other circumstances may satisfy the third requirement of paragraph 4(a).
The Complaint raises a number of allegations under this head. For present purposes, however, it is sufficient to notice that the disputed domain name resolved to websites of the Complainant’s competitors before the Complainant challenged the Respondent’s use. That use of the domain name clearly allows an inference to be drawn about the purpose of its registration, particularly as the domain name itself is suggestive of a site providing services related to automobiles.
(In passing, I should mention that it does not appear from the record that the owners of the websites in question were directly party to this conduct. They took steps to rectify the situation promptly once the situation was drawn to their attention. In addition, they indicated that the resolution of the disputed domain name had been arranged by an "internet traffic provider".)
The registration and use of the disputed domain name to engage in activities which constitute trademark infringement, unfair competition and/or passing off constitutes bad faith under the policy.
Further, it appears that the Respondent has engaged in a pattern of such conduct: Expedia Inc v. Venta, Leonard Bogucki WIPO Case No. D2001-1222 and Vanguard Group, Inc v. Venta WIPO Case No. D2001-1335.
If it matters, I believe I could also disregard the fact that the disputed domain name now resolves to different websites which are commercial in character but which do not so obviously compete with the Complainant’s activities under its trademarks. A respondent could not avoid liability under the Policy by ceasing or trying to conceal bad faith use after receiving notice of an objection by a trademark owner. See also Ingersoll-Rand Co v. Frank Gully WIPO Case No. D2000-0021, Howard B Stevens, Inc. v. The PC Professor WIPO Case No. D2001-1282. Steps taken by a respondent after receiving notice of a trademark owner’s objection might in some circumstances clarify that a domain name has been registered and used innocently. That is not the situation here, however. In any event, the disputed domain name still resolves to commercial websites. The use of the disputed domain name in this fashion creates a likelihood of confusion with the Complainant’s trademarks, at the least by diluting the drawing power of those trademarks or suggesting that there is some connection between the Complainant and the goods and services available through those websites.
Accordingly, on this record, I find that the disputed domain name has been registered and used in bad faith by the Respondent.
The Panel decides that:
(i) the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name, and
(iii) the Domain Name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy and orders that the Domain Name <wwwautonation.com> be transferred to the Complainant, Autonation Holding Corp.
Warwick, A. Rothnie
Date: December 17, 2002