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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Autovillage.com Inc. v. Enthusiast World, Inc.

Case No. D2003-0738

 

1. The Parties

Complainant is Autovillage.com Inc. ("Complainant" or "Autovillage"), a corporation located in Kansas, United States of America.

Respondent is Enthusiast World, Inc. ("Respondent" or "Enthusiast World") located in San Diego, California, United States of America.

 

2. The Domain Names and Registrar

The domain names at issue are <fordtruckworld.com>, <dodgetruckworld.com>, <classictruckworld.com> and <sporttruckworld.com> (the "Domain Names"). The registrar is Dotster, Inc. (the "Registrar")

 

3. Procedural History

On September 17, 2003, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On September 22, 2003, the Center received hardcopy of the Complaint. On September 22, 2003, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On September 22, 2003, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On October 2, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On October 22, 2003, the Center received the Response of Respondent via email. On October 27, 2003, the Center received the Response of Respondent in hardcopy.

On November 13, 2003, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Autovillage is the owner of the trademarks TRUCKWORLD and TRUCKWORLD ONLINE! (the "Marks") following a merger with the original owner of the trademarks, Autoweb Worldwide Publishing Corp. This proceeding involves the Domain Names which have been registered by Enthusiast World, a competitor of Autovillage.

Autovillage's website, located at "www.truckworld.com", is an online electronic magazine that focuses on the truck marketplace. The site derives revenue from advertisement sales and the sale of truck accessories and parts, as well as the general promotion of materials and events of interest to truck enthusiasts. Autovillage has licensed the TRUCKWORLD mark in the United States in connection with retail consumer catalogs featuring automotive accessories and specialty parts and the preparation and dissemination of advertisements relating to trucks in print media, all since at least as early as February 1996. Over 6,600,000 copies of TRUCKWORLD consumer catalogs have been distributed since 1998, with revenues in the millions of dollars. Autovillage has also used the TRUCKWORLD mark in commerce in connection with t-shirts, tank tops, hats, sweatshirts, jackets, bandanas, gloves, coveralls, underwear and bathing suits since at least as early as December 1996. These goods have been sold to customers in the United States and abroad.

Autovillage's website, located at "www.truckworld.com", has been operational since February 1996, and prominently displays Autovillage's TRUCKWORLD and TRUCKWORLD ONLINE! marks. The website features a variety of information on off-road and street light-duty trucks and sport utility vehicles, including reviews, technical articles, vehicle industry news, travel information, reviews of books and videos, as well as humor pieces, cartoons and event calendars. The website also provides information on purchasing truck accessories and related products. Since going live in 1996, Autovillage's website has received over 860,000,000 hits, including over 12,000,000 unique visitors.

Autovillage's catalog and website features vehicles and products manufactured by famous auto makers such as Ford, Dodge, Chevy and Land Rover. Autovillage has also used the mark TRUCKWORLD and TRUCKWORLD ONLINE! at various international and national conferences such as the Specialty Equipment Market Association ("SEMA") trade show (Las Vegas, Nevada), the Bloomsburg Truck Jamboree (Bloomsburg, Pennsylvania), the Monster Truck Racing Association Annual Awards Banquet (St. Louis, Missouri) and the Germany International Off-Road Exhibition Show (Munich, Germany).

Autovillage owns a federal trademark registration for the TRUCKWORLD mark which issued on September 9, 1997. Autovillage's registration (No. 2,095,983) covers the following goods:

Clothing, Namely, T-Shirts, Tank Tops, Hats, Sweatshirts, Jackets, Bandanas, Gloves, Coveralls, Underwear And Bathing Suits in International Class 25.

A Declaration of Use and Incontestability under Sections 8 & 15 of the U.S. Trademark Law was filed in September 2003, for this registration. Upon the filing of this declaration, Autovillage's registration will become incontestable.

Autovillage also owns a federal trademark registration for the TRUCKWORLD mark which issued on June 18, 2002. Autovillage's registration (No. 2,582,666) covers the following services:

Preparing And Disseminating Advertisements For Others In Print Media And Via An On-Line Electronic Communications Network In International Class 35.

Autovillage owns a federal trademark registration for the TRUCKWORLD ONLINE! mark which issued on February 26, 2002. Autovillage's registration (No. 2,542,023) covers the following services:

Providing A Web Site In The Field Of Light-Duty Trucks, Namely, Reviews, Technical Pieces, Humor Pieces And Cartoons, Event Calendars, Club Listings And Information, General Information, And New Vehicle Performance Tests And Reviews Concerning Light-Duty Trucks, Including Custom Trucks, Sport Utility Vehicles, 4x4s, Street Trucks, Monster Trucks, And Passenger Vehicles, Including Exhibition Vehicles, All-Terrain Vehicles, And Recreational Vehicles, But Not Including Over-The-Road Trucks, Reviews Of Videos And Books Pertaining To Light-Duty Trucks, Including Custom Trucks, Sport Utility Vehicles, 4x4s, Street Trucks, Monster Trucks, And Passenger Vehicles, Including Exhibition Vehicles, All-Terrain Vehicles, And Recreational Vehicles, But Not Including Over-The-Road Trucks, Vehicle Industry News And Travel Information In International Class 39; And Computer Services, Namely, Providing On-Line Facilities For Real-Time Interaction With Other Computer Users Concerning Topics Of General Interest Or Chat Rooms In The Field Of Light-Duty Trucks, Namely, Reviews, Technical Pieces; Humor Pieces And Cartoons, Event Calendars, Club Listings And Information, General Information, And New Vehicle Performance Tests And Reviews Concerning Light-Duty Trucks, Including Custom Trucks, Sport Utility Vehicles, 4x4s, Street Trucks, Monster Trucks, And Passenger Vehicles, Including, Exhibition Vehicles, All-Terrain Vehicles, And Recreational Vehicles, But Not Including Over-The-Road Trucks, Reviews Of Videos And Books Pertaining To Light-Duty Trucks, Passenger Vehicles, Exhibition Vehicles, All-Terrain Vehicles, And Recreational Vehicles, But Not Including Over-The-Road Trucks, Vehicle Industry News And Travel Information In International Class 42.

Moreover, Autovillage owns a federal trademark application for the TRUCKWORLD mark filed on July 17, 2002. Autovillage's application (Serial No. 76/431,577) covers the following services:

Entertainment And Information Services, Namely, Providing A Web Site Featuring Information Regarding Light-Duty Trucks, Including Reviews, Technical Pieces, Humor Pieces And Cartoons, Event Calendars, Club Listings And Information, General Information, And New Vehicle Performance Tests And Reviews Concerning Light-Duty Trucks, Including Custom Trucks, Sport Utility Vehicles, 4x4s, Street Trucks, Monster Trucks, Passenger Vehicles, Exhibition Vehicles, All-Terrain Vehicles, And Recreation Vehicles; Reviews Of Videos And Books Pertaining To Light-Duty Trucks, Custom Trucks, Sport Utility Vehicles, 4x4s, Street Trucks, Monster Trucks, Passenger Vehicles, Exhibition Vehicles, All-Terrain Vehicles, And Recreation Vehicles; Vehicle Industry News; And Travel Information In International Class 41.

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. § 1115. Complainant further alleges that its registrations will soon become incontestable and conclusive evidence of its exclusive right to use the Marks in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

Complainant further contends that as a result of Complainant's widespread and continued use of its Marks, those marks have become highly distinctive in the United States and throughout the world and are associated by the public with a single source of origin, namely Autovillage.

ii. Complainant argues that the Domain Names are confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the trademark TRUCKWORLD with the addition of generic or descriptive terms.

Complainant argues that the Domain Names were registered by Respondent on January 24, 2000, May 7, 2002, March 7, 2002, and April 23, 2002, respectively, long after Complainant (and its predecessor-in-interest) had established trademark and service mark rights in and to its Marks. Registrant, a competitor of Autovillage, is using the Domain Names in connection with its websites which feature information on light-duty trucks, including, for example, reviews, technical articles, vehicle industry news, games, chat rooms and event calendars. Respondent is not a licensee of Complainant, and Complainant has not otherwise authorized Respondent to use its Marks.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Complainant contends that Autovillage has not licensed or otherwise permitted Respondent to use the Marks, nor has Autovillage authorized Respondent to register or use any domain name incorporating the Marks. None of the Domain Names is Respondent's business name. The fact that Respondent registered four separate names that incorporate Complainant's trademarks constitutes compelling proof that Respondent had actual knowledge of Complainant's superior rights. In any event, Respondent had at minimum constructive knowledge of Complainant's trademarks by virtue of Complainant's United States registrations and application. See 15 U.S.C. § 1072. Accordingly, Respondent cannot be deemed to be making a bona fide use of the Domain Names.

Thus Complainant concludes that Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services. Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because it is not commonly known under any of the Domain Names. Respondent cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondent has deliberately registered the Domain Names containing the Marks in an effort to attract Internet users searching for Complainant.

iv. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Complainant contends that Respondent's use of domain names containing Complainant's identical marks is inherently deceptive and is likely to confuse Internet users as to the source, sponsorship, affiliation or endorsement of Respondent's websites. In so doing, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's websites. Respondent has deliberately and misleadingly sought to divert potential users of Complainant's website to Respondent's websites, which offer similar services as Complainant. It is inconceivable that Enthusiast World, a competitor of Autovillage, was not aware of Autovillage's prior rights in the Marks. Indeed, the only conceivable explanation for why Respondent registered the Domain Names is that it wished to benefit from the public recognition and goodwill associated with Complainant for Respondent's own commercial benefit.

Finally, Complainant asserts that Respondent should also be charged with bad faith since registration of the Domain Names postdates Autovillage's registration and use of the Marks. Under U.S. trademark law, a person is charged with constructive notice of a registered mark. See 17 U.S.C. § 1072. Moreover, although Respondent was put on notice of Complainant's claim of prior rights in the Marks, and of Complainant's concern as to the harm that would be caused to it by Respondent's use of the Domain Names, Respondent has refused to cease and desist from using the Domain Names.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations covering the Marks.

ii. Respondent argues that the Domain Names are not confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy. Respondent asserts that it has registered the Domain Names as internet sites directed to topics pertaining to Ford trucks, Dodge trucks, classic trucks and sport trucks and thus the domain names are descriptive of the sites and do not serve as trademarks or brand identifiers for any specific company. The domain names were selected and used because of their descriptive character and not to usurp any goodwill of Complainant or direct traffic from Complainant. To the contrary, Respondent has used the Domain Names before any use of Complainant for internet services relating to information about Ford trucks, Dodge trucks, classic trucks and sport trucks.

Respondent further argues that Complainant’s registered trademark TRUCKWORLD is for clothing and advertising services for others and does not place Respondent on notice of any use as a domain name, magazine or internet site for information about the world of trucks. Complainant’s trademark TRUCKWORLD ONLINE! covers internet services, but is readily distinguishable from the Domain Names.

Respondent contends that it has not used the Domain Names in any way to cause confusion with the Marks and that the Marks have not been used in conjunction with internet sites directed to topics pertaining to Ford trucks, Dodge trucks, classic trucks or sport trucks. The asserted registrations of Complainant are for the single fanciful word "Truckworld." The fanciful word "Truckworld" may have acquired trademark significance (for other unrelated goods and services) separate from the ordinary meaning of the words "truck" and "world," but it is well settled that a company may use descriptive terms for its products even though similar terms may be used as trademarks by competitors. The wide use of words "truck" and "world" in connection with several internet web sites containing information about trucks indicates that the words cannot be appropriated for the use by any one. Respondent denies that it simply copied TRUCKWORLD mark.

iii. Respondent asserts that it has rights to or legitimate interests in the Domain Names because it has made good faith commercial use of the Domain Names.

Respondent contends that the Domain Names were selected and used because of their descriptive character and not to usurp any goodwill of Complainant or direct traffic from Complainant. Contrary to the unsupported allegations of Complainant, Respondent has used the Domain Names before any use of Complainant for internet services relating to information about Ford trucks, Dodge trucks, classic trucks and sport trucks.

Respondent again contends that Complainant’s trademarks TRUCKWORLD is for clothing and advertising services for others do not place Respondent on notice of any use similar to the Domain Names of Respondent. Respondent’s domain names that describe its internet sites are noticeably distinguishable from the trademark TRUCKWORLD ONLINE!

iv. Respondent denies that it registered or used the Domain Names in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies. Respondent makes the same arguments that it presented to show bona fide commercial use of the Domain Names above.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) 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; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. § 1115. Complainant further alleges that its registrations will soon become incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent does not rebut the presumption created by the registrations of the Marks. Therefore, the Sole Panelist finds that, for purposes of this proceeding, the Complainant has enforceable rights in the Marks.

Identity or Confusing Similarity

Complainant further contends that the Domain Names are identical with and confusingly similar to the Marks pursuant to the Policy paragraph 4(a)(i).

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other descriptive or nondistinctive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

Respondent argues that the TRUCKWORLD trademark is not used for Internet or online services. Only the TRUCKWORLD ONLINE! trademark covers Internet or online services. Furthermore, the Domain Names do not use the entirety of the TRUCKWORLD ONLINE! trademark and are easily distinguishable from TRUCKWORLD ONLINE! Respondent notes that "truck" and "world" are common and descriptive terms which are found on many related websites.

The Sole Panelist does not believe that the trademark rights of Complainant can be read so narrowly as to isolate goods and services offered or sold on the Internet. Complainant’s business involves trucking information, advertising and accessories and is not limited to the Internet. The allegation that Respondent is a competitor is uncontroverted. The relevant scope of inquiry for confusing similarity includes goods and services related to trucking information, advertising and accessories. Therefore, the Sole Panelist finds that the analysis of confusing similarity is sufficiently broad to encompass all of the lines of commerce indicated by the classes of Claimant’s trademark registrations.

The Domain Names each include the totality of the TRUCKWORLD mark, together with descriptive and/or nondistinctive additions. Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the Marks, pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii). Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainant contends that Autovillage has not licensed or otherwise permitted Respondent to use the Marks, nor has Autovillage authorized Respondent to register or use any domain name incorporating the Marks. This allegation is not refuted by Respondent.

Complainant further contends that Respondent is not making a bona fide use of the Domain Names, because Respondent has actual knowledge of the Marks as a competitor and constructive knowledge of Complainant's trademarks by virtue of Complainant's United States registrations and application. Respondent declares that it is making bona fide use of the Domain Names, because the Domain Names were selected and used for their descriptive character and not to usurp any goodwill of Complainant or direct traffic from Complainant and because Respondent has used the Domain Names before any use of Complainant for Internet services relating to information about Ford trucks, Dodge trucks, classic trucks and sport trucks.

Complainant further contends that none of the Domain Names is Respondent's business name. This allegation is not refuted by Respondent. The record does not reflect any noncommercial or fair use of the Domain Names.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Names:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 only real dispute is over paragraph 4(c)(i) regarding bona fide offering of goods and services. The Sole Panelist has not limited his analysis of this dispute the offering of goods or services on the Internet. Therefore, the Sole Panelist can infer that Respondent as a competitor had actual knowledge of the TRUCKWORLD trademark before registration of the Domain Names and certainly had constructive knowledge. As such Respondent did not engage in the bona fide offering of the goods and services.

Therefore, the Sole Panelist finds that Respondent has not adequately rebutted Complainant’s allegation and does not have rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product

There is no dispute in this record that the Respondent has intentionally attempted to attract Internet users to its websites. The likelihood of confusion has already been established. Therefore, the Sole Panelists finds that the evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainant’s registered Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Complainant.

 


 

Richard W. Page
Sole Panelist

Dated: November 29, 2003

 

Источник информации: https://internet-law.ru/intlaw/udrp/2003/d2003-0738.html

 

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