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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TPI Holdings Inc. v. Patrick Desper

Case No. D2007-1302

1. The Parties

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

The Respondent is Patrick Desper, Domain For Sale, San Diego, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <autotradertv.com> (the “Disputed Domain Name”) is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2007. On September 5, 2007, the Center transmitted by e-mail to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On September 5, 2007, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details. 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 Respondent of the Complaint, and the proceedings commenced on September 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2007. In response to this notification, the Center received an e-mail from Respondent on October 4, 2007, the details of which are set forth below.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 12, 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 states that, through its licensees, it is the publisher of a wide variety of printed and online publications featuring classified advertising, branded under trademarks that contain the word “TRADER”. Among other things, Complainant states that, through its exclusive licensee or its predecessor in interest, it has sold and distributed periodicals featuring vehicle classified advertising under the AUTO TRADER trademark since at least January 1, 1974; and that its exclusive sub-licensee AutoTrader.com, Inc., has provided vehicle classified advertising services under the AUTOTRADER.COM trademark since at least August 1998.

Complainant states, and provides evidence to support, that it owns the following federal trademark registrations in the United States:

- U.S. Reg. No. 1,247,037, for AUTO TRADER, for use in connection with “periodic magazine”; first used in commerce January 1, 1974; registered August 2, 1983.

- U.S. Reg. No. 2,390,815, for AUTO TRADER, for use in connection with “services, namely preparing and disseminating advertising for others via an online electronic communications network” and “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”; first used in commerce July 1996; registered October 3, 2000.

- U.S. Reg. No. 2,381,590, for AUTOTRADER.COM, for use in connection with “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”; first used in commerce August 25, 1999; registered August 29, 2000.

Collectively, Complainant’s trademark registrations cited above are referred to hereafter as the “AUTO TRADER Trademarks.”

Complainant states that the domain name <autotrader.com> has been registered to an “affiliate of Complainant” since May 1995. A printout provided by Complainant of the home page of a website using this domain name offers services related to researching, buying and selling automobiles.

The Disputed Domain Name was created on February 9, 2004.

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complaint contends, inter alia, as follows:

- The Disputed Domain Name is identical or confusingly similar to the AUTO TRADER Trademarks because the addition of the word “tv” to the Disputed Domain Name “is insufficient to dispel confusion under the Policy.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because inter alia, “Respondent has never been authorized by Complainant to use any of the AUTO TRADER Marks, including as part of the Domain Name”; Respondent is using the Disputed Domain Name in connection with “a portal website which links to substantially identical products or services” as those offered by Complainant, which constitutes a commercial use; and “[n]othing in Respondent’s WHOIS information implies that Respondent is commonly know by the Disputed Domain Name, and Respondent has not offered any proof of any trademark rights owned by Respondent for the Domain Name.”

- The Disputed Domain Name was registered and is being used in bad faith because it is very unlikely that Respondent was unaware that registration of the Disputed Domain Name would not infringe Complainant’s rights and because Respondent is operating a portal site using the Disputed Domain Name that contains links to sites offering services that are competitive with those offered by Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions. However, on October 4, 2007, in response to the Center’s Notification of Respondent Default, the Center received an e-mail purportedly from the Respondent stating the following:

I have on numerous Occasions offered to just let this Domain “Drop” by no longer Renewing it..then the other party could Register it to their Web..I do not know what else to do..I have never Used the Address... or attempted to Use the Address..so they have Not been Damaged in any way…I would and have tried to “Transfer” the Address to them..but, They have put a Hold on the name so I cannot even Transfer it back to them…They have suffered No Damage…They do not have any Competition using the Name.I have just “Saved” it for them..at My Expense…also, I have never been Served any Notification of this Problem..Personally..I have Moved to Mexico..and do not want to have left any “Baggage” behind..such as this Matter…it seems real “Simple” to me,if they want the “Address”..then I will Gladly Give It To Them..It is of no Importance to Me..Patrick Desper.

(All punctuation sic.)

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the AUTO TRADER Trademarks.

As to whether the Disputed Domain Name is identical or confusingly similar to the AUTO TRADER Trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., <autotradertv>, as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.

The Disputed Domain Name differs substantively from the AUTO TRADER Trademarks only by the addition of the word “tv” (a shorthand for “television”) to the Disputed Domain Name. The Panel agrees with Complainant and the cases under the Policy cited by Complainant that this addition does nothing to dispel confusion. See, e.g., N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387 (“Respondent does not, by adding a generic noun or common descriptive term or adjective following a word or letter mark, create a new or different mark in which it has rights or legitimate interests, nor does it alter the underlying mark.”) (transfer of <taebotv.com> and <tae-botv.com>).

Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges, inter alia, that “Respondent has never been authorized by Complainant to use any of the AUTO TRADER Marks, including as part of the Domain Name”; Respondent is using the Disputed Domain Name in connection with “a portal website which links to substantially identical products or services” as those offered by Complainant, which constitutes a commercial use; and “[n]othing in Respondent’s WHOIS information implies that Respondent is commonly know by the Disputed Domain Name, and Respondent has not offered any proof of any trademark rights owned by Respondent for the Domain Name.”

Furthermore, Respondent’s e-mail to the Center does not assert any rights or legitimate interests in the Disputed Domain Name and, to the contrary, implies that Respondent has none.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1 (visited October 25, 2007).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant alleges with specificity that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In support thereof, Complainant cites, among other cases under the Policy, Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087, for the proposition that, in light of Complainant’s federal trademark registrations for AUTO TRADER, “it is very unlikely that when Respondent registered the domain name[], it was not aware that it was infringing on Complainant’s trademark rights”; and Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207, for the proposition that “by registering and using the Disputed Domain Name for the purpose of attracting Internet users to a portal website that directs traffic by means of sponsored links to websites offering goods similar to those for which the Complainant’s… trademarks are used worldwide, the Respondent intentionally – and without authorization – benefits from the reputation of the [Complainant’s] trademark and is likely to confuse the public.” The Panel agrees with these propositions and their applicability to the instant case.

Furthermore, Respondent’s e-mail to the Center does not contradict Complainant’s allegations of bad faith and, to the contrary, implies that Respondent may have acted in bad faith.

Therefore, the Panel is convinced that Complainant has proven the third element 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 <autotradertv.com> be transferred to Complainant.


Douglas M. Isenberg
Sole Panelist

Dated: October 25, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1302.html

 

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