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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TPI Holdings Inc. v. Shola Ajiboye

Case No. D2007-1019

 

1. The Parties

The Complainant is TPI Holdings Inc., of Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC, United States of America.

The Respondent is Shola Ajiboye, Kephas Solutions Ltd., of Lagos, Nigeria , represented by A.M. Bankole & Co., Nigeria.

2. The Domain Name and Registrar

The disputed domain name <autotraderng.com> is registered with Direct Internet Solutions d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 17, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On July 19, 2007 Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 20, 2007. The Center verified that the Complaint together with the amendment to 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 July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Response was filed with the Center on August 11, 2007.

The Center appointed Ross Carson as the sole panelist in this matter on August 23, 2007. The Panel finds that it was properly constituted. 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.

 

4. Factual Background

Complainant is the owner of several United States trademark registrations for or including AUTO TRADER which have been extensively used throughout the United States of America by Complainant’s predecessors in title, licensees and sublicensees since 1974 in association with providing advertising space for those wishing to offer vehicles for sale.

Complainant is the registered owner of United States Trademark Registration Number 1247037 for the trademark AUTO TRADER registered on August 2, 1983 for the goods periodic magazines. The date of first use in commerce of the trademark was January 1, 1974. Complainant is also the registered owner of United States Trademark Registration Number 2390815 for the trademark AUTO TRADER registered on October 3, 2000 in relation to advertising services, namely preparing and disseminating advertising for others via an online electronic communications network and in relation to computer services, namely providing multiple user access to computer networks for the transfer and dissemination of a wide range of information; providing a wide range of information via an online electronic communications network. The date of first use in commerce was July, 1996. Complainant is also the registered owner of United States Trademark Registration Number 2381590 for the trademark AUTOTRADER.COM registered on August 29, 2000 in relation to providing automotive information via a global computer network relating to vehicles for sale, valuation of vehicles, availability of vehicle parts and accessories, dealers, manufacturers, automotive services and service providers, as well as trade information about general industry news. The date of first use in commerce was August 25, 1990.

Complainants sublicensee operates one of the world’s leading websites in the field of automotive sales and related information located at <autotrader.com>. More than three million vehicles listed by dealers and private sellers are available at the site. The AUTO TRADER websites log approximately thirteen million unique users per month.

According to the WHOIS database, Respondent registered the domain name in dispute on July 13, 2006.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant states that it is the owner of trademark registrations for or including AUTO TRADER registered on the principal register in the United States of America described in paragraph 4 immediately above. The trademarks have been widely used in advertising vehicles for sale. The trademark AUTOTRADER.COM is accessed by Internet visitors throughout the world.

Complainant further submits that the domain name in dispute is comprised of Complainants trademark AUTO TRADER in combination with the country name abbreviation (“NG”) of Nigeria, the country in which Respondent is located. Complainant further submits that it is well accepted that the addition of a country name, or abbreviation thereof, to a trademark is insufficient to dispel confusion under the Policy. See, e.g., Cable News Network, LLP v. Khouri, Claim No. FA0208000117876 (NAF December 16, 2002) (ordering the transfer of second level domain names consisting of “CNN” followed by a country abbreviation because “mere inclusion of a country name or a corresponding well-known abbreviation therefore (such as “au” for Australia, “de” for Germany, or “uk” for the United Kingdom) is clearly insufficient, in general and particularly here, to dispel user confusion from occurring”).

Complainant also submits that the addition of the generic top-level domain (gTLD) name “.com” is without legal significance as the distinctive portion of the domain name in dispute is confusingly similar to Complainant’s registered trademarks for or including AUTO TRADER. See Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429, (noting that “the specific top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”).

A.2 No Right or Legitimate Interests in respect of the Domain Name

Complainant states that Respondent has not been licensed or authorized by Complainant to use its registered trademarks for or including AUTO TRADER as trademarks, part of a domain name or otherwise.

Complainant further submits it is clear that Respondent’s registration and use of the domain name in dispute was intentionally designed to trade off of the Complaint’s fame and good will. The domain name in dispute resolves to a website showing logos, graphics and other content copied directly from Complainant’s website associated with its domain name <autotrader.com>. Respondents knowing adoption and use of the of the confusingly similar domain name in dispute and other indicia from Complainant’s website is not a bona fide use of the domain name. In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.Com”; WIPO Case No. D2000-0847, the panel observed that, “use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Complainant states that Respondent therefore cannot establish rights in the domain name in dispute under paragraph 4(c)(i) of the Policy because he cannot show that he used or demonstrably prepared to use the domain name in dispute in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent’s use of the confusingly similar domain name in dispute to resolve to a website offering for sale substantially identical products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy.

Complainant further states that Respondent cannot establish rights in the domain name in dispute under paragraph 4(c)(ii) of the Policy because Respondent is not commonly known by the domain name in dispute and has not acquired trademark or service mark rights therein. Nothing in Respondent’s WHOIS information implies that Respondent is commonly known by the domain name in dispute.

Complainant submits that Respondent also cannot establish rights in the domain name in dispute under paragraph 4(c)(iii) of the Policy because Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent to misleadingly divert consumers for commercial gain. To the contrary, Respondent is using the domain name to resolve to a commercial website. Respondent’s use of the domain name to misdirect potential visitors to Complainant’s commercial website is not a bona fide use of the domain name in dispute, and does not constitute a legitimate, non-commercial use of the domain name under the Policy. See Lockheed Martin Corporation v. NBPro Hosting, WIPO Case No. D2003-0859, (“It is well-settled that the use of another’s trademark to sell competitive goods and services is an act of trademark infringement, and cannot under any circumstances be considered to be a bona fide offering of goods and services.”).

A.3 Registered and Used in Bad Faith

Complainant states that it is the owner of trademark registrations in the United States of America for and including the trademark AUTO TRADER.

Complainant further submits that respondent registered the domain name in dispute with knowledge of Complainant’s trademarks as the domain name in dispute initially resolved to a website showing logos, graphics and other content copied directly from Complainant’s website associated with its <autotrader.com> domain name.

Complainant states that Respondent created a website homepage that is substantially similar to Complainants which constitutes bad faith under paragraph 4(b)(iv) of the Policy because Respondent uses the domain name in dispute to intentionally attempt to attract, for commercial gain, Internet users to Complainant’s <autotraderng.com> website by creating a likelihood of confusion with Complainant’s trademarks for or including AUTO TRADER as to the source, sponsorship, affiliation, or endorsement of its website in contravention of paragraph 4(b)(iv) of the Policy.

B. Respondent

B.1 Identical or Confusingly Similar

Respondent submits that the domain name in dispute is not confusingly similar to Complainant’s AUTO TRADER trademarks. Respondent states the AUTO TRADER trademarks to which the Complainant has rights were registered only in the United States for operation of a website in the field of automotive sales and related information. Respondent submits that although Complainant claims long existence of the AUTO TRADER trademarks, Complainant had not at any time demonstrated evidence and/or interest of using its AUTO TRADER trademarks to register a domain name that will direct visitors to a web site for vehicles targeted at Nigerian residents or other geographic regions. In fact, evidence submitted with the Complaint, either by way of the United States registrations or activities, clearly domiciled the AUTO TRADER trademarks and resulting website/domain name to the United States.

Respondent states that insofar as Complainant clearly recognizes that the disputed domain name targets residents of Nigeria only, the fact that Complainants AUTO TRADER trademarks and resulting web site are directed to activities in the United States alone remains undisputable on the record; argument of confusing similarity is meritless for the purpose of paragraph 4(a)(i) of the Policy.

Respondent submitted that in the case of Cable News Network, LLP v. Khouri, Claim No. FA0208000117876 (NAF December 16, 2002) cited by the Complainant, the panel before holding that mere inclusion of a country name or a well-known abbreviation such “au” for Australia, “de” for Germany, or “uk” for the United Kingdom is clearly insufficient to dispel user confusion from occurring reasoned that the complainant in the case had registered its Mark in virtually every country of the world including the United States and Lebanon where the respondent resides. In addition, the panel reasoned that the complainant had also used its mark in conjunction with numerous international web sites and broadcast networks dedicated to bringing targeted news and information to various geographic regions of the world, including several international web sites offered in native language of each of such region. Respondent submits that the Panels reasons are not applicable to the facts in this case where there is no evidence of Complainant having registered or used its AUTO TRADER trademarks in Nigeria

Respondent further states that other evidence in the matter includes registration of the autotraderng Mark and logo with the Nigerian Copyright Commission, and that the resulting domain name is used by Respondent to direct visitors/traffic to a web site for vehicles targeted to residents of Nigeria only. Taking the evidences of different geographic region activities together, the dissimilarity in the AUTO TRADER Marks and the disputed domain cannot be clearer.

B.2. Rights or Legitimate Interests in respect of the Domain Name

Respondent submits that in order for Complainant to prove that Respondent has no rights or legitimate interests in the domain name in dispute under paragraph 4(a)(ii) of the Policy Complainant must first establish exclusive worldwide rights to a Mark or Marks. See, e.g. Cable News Network, LLP v. Khouri, Claim No. FA0208000117876 (NAF December 16, 2002). Consequently, the question posed in this case is not whether the Respondent has a legitimate rights or interest in the disputed domain name but whether the Complainant has, indeed, established right to an exclusive worldwide trademark violation given the fact of limited geographic coverage of the AUTO TRADER trademarks to which it has rights to the United States of America .

Respondent further submits that before any notice to Respondent of the dispute, Respondent had commenced use of the domain name in dispute in connection with a bona fide offering of services. The disputed domain name was registered on July 13, 2006, and the cease and desist letter from the solicitors for Complainant was received on April 19, 2007. While Complainant agreed that Respondent had been using the disputed domain name for offering of goods and services prior to the notice of dispute, it argued that because of confusing similarity, the offering is not bona-fide within the meaning of paragraph 4(c). Respondent submits that its earlier use of the domain name in dispute was bona fide as the domain name including the letters “NG” was directed to Internet users in Nigeria . Respondent submitted that Complainant did not file any evidence of Internet or trademark use of its AUTO TRADER trademarks in Nigeria. To infer otherwise would require the AUTO TRADER Marks to demonstrate evidence of goodwill among residents of Nigeria targeted by the disputed domain name.

The Respondent asserts that for reasons of dissimilarity and a showing of bona fide offering of goods and services, it has rights or legitimate interest in respect of the domain name <autotraderng.com>.

B.3 Registered and Used In Bad Faith

The Respondent submits that the Complainant argued that the Respondent’s conduct constitutes bad faith because the Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain internet users to the <autotraderng.com> web site by creating a likelihood of confusion with Complainant’s AUTO TRADER Marks as the source, sponsorship, affiliation or endorsement. The Respondent agrees with Complainant that the disputed domain name is used to attract, for commercial gain internet users. But to the extent the Complainant argued that it is by creating a likelihood of confusion, the Respondent disagrees.

The Complainant appeared to agree that there exist no fact to support the circumstances listed in paragraph 4(b)(i)-(iii) of the Policy. Respondent states that there exist no facts to support any of the listed circumstance in paragraph 4.(b) of the Policy. The disputed domain name, being a web site that directs visitors to vehicles targeted at Nigerian residents only, was named with a geographic identifier. Thus, there is no way the Respondent could have acquired the domain name for the purpose of selling, renting or otherwise transferring to the Complainant when the automotive sales and related information services offered by the Complainant in association with its trademarks target cities within the United States alone. In addition, there is nothing on the record to suggest that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name because the Complainant, in its long existence, had not at any time demonstrated evidence and/or intention of a corresponding domain name In fact, the Complainant has a conduct and/or pattern of limited use for its AUTOTRADER trademarks to cities within the United States alone. Lastly, evidence of disrupting the business of Complainant is non-existent because the domain name in dispute targets a completely different geographic region.

Respondent submits that as far as paragraph 4(b)(iv) goes in the case, evidence of a worldwide influence of the Complainant’s marks must exist in order to establish likelihood of confusion under paragraph 4(b)(iv) of the Policy. But as here, the AUTO TRADER trademarks have no worldwide influence. Respondent submits that Complainant’s evidence clearly limit the fame and popularity of its AUTO TRADER trademarks to cities within the United States alone. Consequently, Respondent could not have expected the circumstance dictated in paragraph 4(b)(iv) among its targeted visitors who know nothing about the Complainant’s AUTO TRADER trademarks.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) 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

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly prove that the domain name in dispute is confusingly similar to the trademarks in which Complainants have rights.

Complainant is the owner of numerous registrations in the United States of America for or including the trademark AUTO TRADER registered in connection with a periodic magazine and for advertising services, namely preparing and disseminating advertising for others via an online electronic communications network and related computer services. One of Complainant’s registered trademarks is AUTOTRADER.COM. Complainant’s trademarks for or including AUTO TRADER have been in use in the United States of America since 1974. The domain name in dispute incorporates the whole of Complainant’s registered AUTO TRADER trademarks. Numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., Am. Online, Inc., v. aolgirlsgonewild.com, NAF Case No. FA0207000117319, (noting that “aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”).

The addition of a generic top-level domain name such as “.org,” “.net,” or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Case No. FA165119 (August 1, 2003).

The domain name in dispute adds the two letter abbreviation (“NG”) an accepted abbreviation for the name of the country of Nigeria to Complainant’s registered AUTO TRADER trademark.

Complainant submitted that previous UDRP panels have held that the act of adding a country name, or abbreviation thereof, to a trademark is insufficient to dispel confusion under the Policy. One of the cases relied on by Complainant is Cable News Network, LLP v. Khouri, Claim No. FA0208000117876 (NAF December 16, 2002) (ordering the transfer of second level domain names consisting of “CNN” followed by a country abbreviation because “mere inclusion of a country name or a corresponding well-known abbreviation therefore (such as “au” for Australia, “de” for Germany, or “uk” for the United Kingdom) is clearly insufficient, in general and particularly here, to dispel user confusion from occurring”). Respondent distinguishes this case on the grounds that in the Cable News Network case the complainant had trademark rights throughout the world including Lebanon where respondent was located. Respondent submits that the Cable News Network case is not an authority in the facts of the present case because the trademark registrations relied on by Complainant in this case are in the United States of America and not worldwide or in Nigeria. The Panel accepts respondents distinction of the Cable News Networks case on the fact differences but rejects Respondents interpretation of the Cable News Network case as holding that a complainant must have trademark rights around the world or in the country of the respondent to prove that a domain name in dispute is confusingly similar to a complainant’s trademark.

The issue of confusing similarity between a complainant’s trademark rights and the domain name in dispute under paragraph 4(a) (i) of the Policy has been decided by many UDRP panels on the comparison of the “essential” or “virtual” identity of complainant’s trademark and the domain name in dispute independent of the location of the trademark rights or the nature of the goods or services. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Discussion, 1. First UDRP Element, paragraph (1.1).

Based on the broad principles summarized in the cases referred to in the WIPO Overview the panel finds that Complaint has proven that the domain name in dispute is confusingly similar to Complainant’s trademarks for or including AUTO TRADER.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.

On the material before the Panel, Respondent has not used trademarks for or including AUTO TRADER or any variation thereof in association with any bona fide goods or services offered by Respondent.

The Respondent apparently is not affiliated with Complainant and has not been authorized by Complainant to use Complainant’s trademarks for or including AUTOTRADER or any trademarks confusingly similar thereto.

In its Response, Respondent relies on paragraph 4(c)(i) of the Policy and alleges that it made a bona fide use of the domain name in dispute in association a website offering advertising services to sellers of vehicles in Nigeria and access to purchasers of vehicles in Nigeria prior to receipt of notification of the dispute in Complainant’s cease and desist letter of received on April 19, 2007.

Secondly, Respondent submits that that Respondents use of the domain name in dispute in Nigeria is bona fides as Complainant has no trademark rights in Nigeria as Complainant does not offer advertising services to vehicle vendors in Nigeria to advertise vehicles for sale or offer vehicle purchasers in Nigeria access to vehicles for sale in Nigeria.

The domain name in dispute as used by Respondent resolves to a website advertising new and used vehicles listed for sale in Nigeria and related information on loans, insurance,and used parts to assist vehicle sellers and vehicle purchasers. The material before the Panel indicates that Respondent’s original website associated with the domain name in dispute used logos, graphics and content so closely resembling the the logos, graphics and content of the website associated with Complainant’s AUTOTRADER.COM website that the Panel concludes that the logos, graphics and content were substantially copied from Complainant’s website. Following receipt of a cease and desist letter from Complainant dated April 19, 2007, Respondent apaprently redesigned the content of its website associated with the domain name in dispute to remove much of the copied material while denying Complainant’s rights in the copied material. Respondent’s redesigned webpage still include a number of locations incorporating content from Complainant’s <autotrader.com> website, particularly the content of Complainant’s website relating to Fraud Awareness Tips.

Respondent registered the domain name in dispute on July 13, 2006. Complainants <autotrader.com> trademark was registered in the United States of America on August 29, 2000. In choosing the domain name <autotraderng.com> Respondent must have been aware of the AUTO TRADER trademarks. The domain name in dispute is comprised of the AUTO TRADER trademark and the letters NG, the accepted abbreviation for Nigeria. Respondent’s website associated with the domain name in dispute was substantially copied from Complainant’s website associated with Complainant’s <autotrader.com> domain name. The Panel finds that there is no evidence that the domain name in dispute was used in good faith by the Respondent at any time.

The Panel finds that that Respondent registered and used the domain name in dispute to mislead Internet users in Nigeria and elsewere to believe that the services offered at its website were operated, sponsored, affiliated or endorsed by Complainant the owner of the trademarks for or including AUTO TRADER. The Panel infers from the fact that Respondent registered a domain name substantially incorporating Complainant’s trademarks AUTOTRADING and AUTOTRADING.COM and the fact that Respondent copied the logos, graphics and content from Complainant’s <autotrader.com> website that Complainant did have goodwill in its trademarks for or including AUTO TRADER in Nigeria and Respondent intended to benefit from Complainant’s goodwill.

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4 (a) (iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

Respondent in all likelihood registered the domain name in dispute with knowledge of Complainant’s trademarks which were widely used in the United States of America for many years. The domain name in dispute is comprised of Complainant’s AUTO TRADER trademark and the letters NG, the accepted abbreviation for Nigeria. Respondent’s website associated with the domain name in dispute was substantially copied from Complainant’s website associated with Complainant’s <autotrader.com> domain name. The panel finds that registration of the domain name in dispute was in bad faith.

For the reasons expressed in paragraph 6.B immediately above the Panel finds that Complainant has proven that Respondent has registered and used in bad faith, and in particular that Respondent has used the domain name in dispute in bad faith as set out in paragraph 4.(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <autotraderng.com> be transferred to the Complainant.


Ross Carson
Sole Panelist

Date: September 5, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1019.html

 

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