1. The Parties
The Complainant is carsales.com.au Limited of Burwood, Victoria, Australia represented by Corrs Chambers, Westgarth, Australia.
The Respondent is Alton L. Flanders of Nantucket, Massachusetts, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <carsales.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2004. On January 21, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The registrar eNom failed to submit a registrar’s verification response. Notwithstanding the above, the Center made a registrar’s "WHOIS" printout on February 4, 2004, and furthermore, this Panel confirmed through the information reflected on the registrar’s "WHOIS" website, which provides information only of the domain names that are registered by eNom, Inc., that the Respondent is listed as the registrant; that such domain name is in "registrar-lock" status; and confirmed the details for the administrative and technical contacts at which communications under this domain name dispute have been sent to. 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 February 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2004. The Response was filed with the Center on February 25, 2004.
The Center appointed Clive Duncan Thorne, Desmond J Ryan and David E. Sorkin as panelists in this matter on March 25, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
No interlocutory orders have been issued by the Panel. The language of the proceedings is English.
4. Factual Background
According to the Complainant, it is the proprietor of a number of trademarks registered in Australia and the United States. These are as follows:-
812135 CARSALES and car device
833433 CARSALES and car device
792717 CARSALES and car device
76/036501 CARSALES and car device
75/838082 CARSALES and car device
True copies of the registration certificates for these marks are exhibited as Annex C to the Complaint. The Panel is satisfied that the Complainant is the registered owner of these marks.
It should be noted that these marks feature an identical device which is set out in the copies of the registration certificate. The device prominently features the word "CARSALES" in large lower case letters.
Although the Complainant asserts that any Australian person seeing the domain name in dispute <carsales.com> would be likely to think immediately of the Complainant’s mark and the Complainant’s services offered under that mark very little evidence is adduced by the Complainant of its trading activity or use of the marks.
The Complainant asserts that its website has consistently been the first or second most popular automated related website in Australia by the ".au" domain name space for the past six years. It asserts that it has spent more than A$9 million in Australia on television, radio, billboard and Internet advertising. It also asserts that the strong reputation and "famousness" of the Complainant’s trademarks in Australia means that Australian consumers, and in particular consumers of services in respect which these trademarks are registered are likely to believe that the domain name and the content of the website using that domain name is owned or associated by the Complainant.
These facts are not disputed by the Respondent in its Response save that the Respondent points out that the Complainant’s earliest trademark application was filed in Australia on May 3, 1999, which was almost 3 years after the Respondent registered the disputed domain on October 18, 1996. That is demonstrated by the on-line trademark report for Australian registration number 7927171 which is annexed by the Respondent as Exhibit 1 and the "WHOIS" report for <carsales.com> which is annexed as Exhibit 2 by the Respondent. This should also have been clear to the Complainant because the "WHOIS" search exhibited at Annex A to the Complaint and upon which the Complainant relies also shows the date of creation of the domain name as October 18,1996.
5. Parties’ Contentions
In its Complaint the Complainant submits;
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It relies upon the trademark registrations referred to above and asserts that the domain name <carsales.com> is identical to or confusingly similar to the trademarks referred to above in which the Complainant has proprietary rights.
(ii) That the Respondent has no rights or legitimate interest in respect of the domain name. It points out that there has not and has never been any relationship between the Complainant and the Respondent which might give rise to any licence, permission or legitimate interest or other right by which the Respondent could own or use domain names. It also points out that there is no evidence that the Respondent is or has ever been commonly known by the domain name and that its name bears no resemblance to the domain name. It also submits that the Respondent has at the date of the Complaint not made any legitimate use of the domain name in connection with a bona fide offering of goods or services.
(iii) That the length of the period for which the domain name remained under construction, at least four years, and the fact that the Respondent only began to use the domain name after he was contacted by the Complainant demonstrates that the Respondent does not have a legitimate interest in making use of the domain name.
(iv) That the use of the website by the Respondent does not represent a bona fide offering of goods and services for, inter alia, the following reasons:
(a) an analysis of the website reveals the search function on the Respondent’s website simply passes such queries to a website operated by a third party;
(b) nothing on the websites listed on the Respondent’s website suggests that those websites are operated by the Respondent or any person connected with the Respondent;
(c) nothing on the website listed on the Respondent’s website indicates that the Respondent is in any business relationship with the operators of those websites;
(d) several of the websites listed on the Respondent’s website are operated by major corporations such as Kia, Priceline.com and eBay.com which would be unlikely to seek advertising from such an obscure channel as the Respondent’s website;
(e) the Respondent’s website is not promoted by the Respondent on any other website operated by him;
(f) the Respondent’s website includes no information in relation to any business being operated under the "carsales" name;
(g) the Respondent’s website does not contain any way for prospective advertisers to register for enlisting on the website’s directory or contain features which most bona fide commercial websites contain such as disclaimers or terms and conditions of use;
(h) the Respondent’s website does not appear to be professionally designed or presented as are most bona fide commercial websites;
(i) the Respondent’s website does not appear to contain any advertising or other source of revenue for the Respondent;
(j) the Complainant’s research indicates that the Respondent operates a real estate business, Pro Buyer Associates in Nantucket, Massachusetts which suggests that the Respondent’s legitimate business interests are not connected to the sale of cars in any way;
(k) the Respondent established the website located at "carsales.com" after he was contacted by the Complainant in order to give an appearance of legitimate commercial use of the domain name as an attempt to avoid the domain name being transferred;
(l) the Respondent has a history of similar conduct. The Complainant refers to a decision of the National Arbitration Forum (Case No FA0010000960098) "Islandair, Inc v. Alton Flanders a/k/a islandair.com" where the administrative panel apparently held that the Respondent established a website at islandair.com after being served with a cease and desist notice by the Complainant in that proceeding.
(m) the Respondent has not, at the date of the present Complaint, made any legitimate non-commercial fair use of the domain name;
(n) the Complainant has not and never has been connected with enom.com or enom, Inc, the proprietor of enom.com or any of the sites linked to or from <carsales.com>.
The Respondent submits:
(i) the disputed domain name is composed solely of the common descriptive term "car sales";
(ii) the Complainant’s trademark application was filed on May 3, 1999, which was three years after the Respondent registered the disputed domain name on October 18, 1996;
(iii) the Respondent registered the domain name <carsales.com> on October 18, 1996, because it incorporates the descriptive term "car sales". At the time of registration it had no knowledge of the Complainant or its trademark or had any trademark in mind;
(iv) the Respondent has not used the domain name to confuse users who are seeking to the find the Complainant’s website;
(v) the Respondent did not contact the Complainant to sell the disputed domain
name rather there was an unsolicited offer made to the Respondent indicating
the Claimant’s desire to purchase it to which the Respondent simply replied
without making a counter offer.
6. Discussion and findings
Under the terms of the Policy the Complainant has the burden of proof in showing that each of the following three elements are present:
(i) the Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Panel has already found that the Complainant has trademark rights in the mark "CARSALES". The issue, therefore, for consideration by the Panel is whether the domain name is identical or confusingly similar to these trademarks. The Complainant submits that the domain name is identical to the Australian and United States trademark registrations referred to above except for the addition of the suffix ".com" and the omission of the graphical elements of those trademarks. It submits that those differences are immaterial and that for the purposes of this dispute identical to these trademarks.
By contrast, the Respondent relies upon the fact that the Complainant’s trademark rights post date the registration date of the domain name and that the trademarks do not constitute enforceable rights. The Respondent asserts that the mark "CARSALES" is descriptive. It also points that both of the United States trademarks are design marks which expressly state that the Complainant disclaims the exclusive right to use the term "car sales" apart from the mark as registered.
The Panel does not consider that it is in a position to express a view on the effectiveness of the marks as registered. However, on the evidence, it is prepared to and does find that the domain name is confusingly similar to the trademarks of the Complainant as put in evidence.
B. Rights or Legitimate Interests
The Complainant places emphasis on the apparent fact that there has not and
has never been any relationship between the Complainant and the Respondent which
might give rise to any licence, permission or legitimate interest or other right
by which the Respondent could own or use the domain name. Moreover, it points
out that the Respondent is not and has never been commonly known by the domain
name. The Respondent has not as at the date of the Complaint made any legitimate
use of the domain name in connection with a bona fide offering of goods or services.
The Respondent also relies on the fact that "car sales" is a common descriptive term. For example, the term "car sales" appears on over 750,000 third party web pages. This gives a right to use the term "car sales" and "long before the Complainant even applied for a trade mark anywhere".
The Respondent points out that, as appears to be omitted from the Complaint, the Respondent is using the disputed domain in connection with a Find What affiliate program that pays the Respondent a share of advertising revenue generated from paid search results relating to "car sales". It submits that it is well established under the Policy that the use of a descriptive term domain name in connection with third party advertising services related to the descriptive meaning the domain name constitutes use in connection with a bona fide offering of goods or services.
In the Panel’s view, the Complainant has failed to show evidence that the Respondent has no rights or legitimate interests in respect of the domain name. In particular, the Panel has taken into account the following factors:-
(i) That there is no evidence which shows that the Respondent had no legitimate interest in the domain name between the date of registration of the domain name on October 18, 1996, and the date of filing of the Complainant’s trademark and applications. The Panel has already commented that "very little evidence" is adduced by the Complainant of its trading activity (before or after May 3, 1999) or its use of the registered mark.
(ii) The evidence of the Respondent suggests that it is a domain name reseller or "warehouse man". In the Panel’s view this is not an illegitimate use for interest under the Policy. This can be seen by, for example, the search results exhibited at Annexes D and F of the Complaint.
(iii) In the absence of evidence of the Complainant’s rights in the mark "CARSALES" before May 3, 1999, the Panel accepts that "car sales" is a common descriptive term with substantial third party use and that the Respondent is entitled to use such a descriptive term as the dominant part of its domain name.
Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Although the Panel’s finding in favour of the Respondent in respect of legitimate interest in the domain name disposes of the complaint the Respondent seeks a finding of "Reverse Domain Name Hijacking". For this reason the Panel proceeds to consider the issue of registration and use of the domain name in bad faith. The Panel notes that Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
In considering the issue of bad faith, the Panel takes account of the fact that the Complainant filed its application for and apparently began use of the mark "CARSALES" almost three years after the Respondent registered the disputed domain name. It would therefore follow as is asserted by the Respondent that the Respondent could "not possibly have registered the disputed domain with Complainant’s mark in mind". It is well established that a Complainant cannot succeed in its burden of proof of showing bad faith when registration of the domain name is antecedent to a Complainant’s trademark application or use of the mark in question.
It follows that the Complainant has failed to show that bad faith. Accordingly, the Panel finds for the Respondent in respect of this element. There remains the issue of Reverse Domain Name Hijacking.
7. Reverse Domain Name Hijacking
In the Panel’s view a finding of reverse domain name hijacking is warranted
if the Complainant knew or should have known at the time it filed the Complaint
that it could not prove one of the essential elements required by the Policy.
The Panel is supported in this view by the earlier decision of underlying this
Futureworld Consultancy (Pty) Limited v. On-line Advice, WIPO
Case No. D2003-0297. In the Panel’s view such a finding is particularly
appropriate where the Respondent’s registration of the domain name predates
the very creation of the Complainant’s trademark.
In this case, the Panel is concerned by the Complainant’s disingenuous conduct in relation to priority. The Complainant fails to disclose when it commenced business using or adopted its mark. The Complainant claim that it was unable to determine the date the Respondent’s initial registration of the domain name runs counter to its own evidence in Annex A showing a creation date of October 1996. In the Panel’s view this goes beyond the border of vigorous prosecution and falls in to the realm of abuse of the procedure by the Complainant.
In the Panel’s view the Complainant’s actions must have inevitably imposed burdens and costs upon the Respondent. The Panel is also concerned that abusive complaints risk diminishing the credibility of the entire UDRP process. The Panel finds reverse domain name hijacking.
The Panel dismisses the Complaint and declines to order a transfer of the domain name <carsales.com> as requested by the Complainant. The Panel also makes a finding of reverse domain name hijacking against the Complainant.