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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TPI Holdings, Inc. v. Alfredo Rowland

Case No. D2008-0428

1. The Parties

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

The Respondent is Alfredo Rowland, Norcross, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <latinotrader.com> is registered with Abacus America Inc. dba Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2008. On March 20, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 21, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on March 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2008. Following a telephone conversation with the Respondent’s representative, the Center sent an email communication to the Respondent providing information on filing a response under the UDRP procedure. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default April 18, 2008.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 9, 2008. 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

The Complainant is a Delaware corporation with its principal place of business in Atlanta, Georgia. Since January 1974, licensees of the Complainant and its predecessor in interest have published periodicals featuring vehicle classified advertisements under the mark AUTO TRADER. An exclusive sub-licensee, AutoTrader.com, Inc., has provided online vehicle classified advertising since August 1998 under the mark AUTOTRADER.COM, with a principal website at “www.autotrader.com” (“the Complainant’s website”).

The Complainant’s website advertises more than three million vehicles listed by dealers and private sellers and includes articles on vehicle pricing and safety, car reviews, and other related information. The Complainant reports that its website logs approximately thirteen million unique visitors monthly.

The Complainant owns the following trademark registrations in the United States of America:

Trademark	U.S. Reg. No.	Reg. Date	First Use in Commerce
AUTO TRADER (periodical magazine)	1247037	Aug. 2, 1983	Jan. 1, 1974
AUTO TRADER (advertising and computer services)	2390815	Oct. 3, 2000	July 1996
AUTOTRADER.COM (online vehicle sales)	2381590	Aug. 29, 2000	Aug. 25, 1999

The Complainant also claims an apparently unregistered trademark in the design logo that has appeared on its website since August 1998.

Since the 1970s, the Complainant or its predecessor in interest has published an expanding number of other specialized classified advertising periodicals using the word “trader” in their names. The Complainant currently owns registered trademarks in the United States of America associated with at least fifteen of these publications that are similarly concerned with vehicles and related goods and services:

Trademark	U.S. Reg. No.	Reg. Date	First Use in Commerce
AUTO & TRUCK TRADER	2816698	Feb 24, 2004	Oct. 22, 2002
AUTO TRADER BIG TRUCK BOOK	1460841	Oct. 13, 1987	Sep. 17, 1986
BIG TRUCK & EQUIPMENT TRADER	1641262	Apr. 16, 1991	Sep. 21, 1989
BIG TRUCK TRADER	2829945	April 6, 2004	Oct. 13, 1995
COLLECTOR CAR TRADERONLINE.COM	2873929	Aug. 17, 2004	Jan. 31, 2001
CUSTOM, ANTIQUE & SPORTSCAR TRADER	1872467	Jan. 10, 1995	July 20, 1988
LUXURY CAR TRADER	2700080	Mar. 25, 2003	Apr. l 4, 2002
OLD CAR TRADER	1911290	Aug. 15, 1995	Nov. 28, 1992
OLD CAR TRADER	2348530	May 9, 2000	Apr. 22, 1999
PICK-UP TRADER	1644398	May 14, 1991	Feb. 9, 1990
PICK UP TRADER	2295507	Nov. 30, 1999	Nov. 1997
TRADER ONLINE	2302312	Dec. 21, 1999	Apr. 1996
TRADER TIMES	1718017	Sept. 22, 1992	Apr. 10, 1991
TRUCK TRADER	2817176	Feb, 24, 2004	Sep. 1977
TRUCK TRADERONLINE.COM	2871209	Aug. 10, 2004	Jan. 31, 2001

The Respondent registered the Domain Name on February 24, 2004. Until recently, the Domain Name redirected Internet users to a website at “www.detodousa.net” that was headed “LATINOTRADER.com”. The website advertised the print publications De Todo Autos Magazine (signifying in Spanish a magazine “of all cars”) and Trocas Magazine (“trucks” magazine). The website also featured online automobile classified advertising targeting the Latino community in the United States of America; users could select Spanish- or English-language versions of the website pages. The home page welcomed visitors to “the #1 site for the Hispanic car buyer and seller” in the “fastest growing market in the U.S.A.” According to the website, its “sponsors” included Toyota, a Chevrolet car dealership, the Hooters restaurant chain, and a Hispanic radio station.

According to the online database operated by the Georgia Secretary of State, Latino Trader, Inc. was incorporated in June 2004. The Respondent is listed as its registered agent. The online database of the United States Patent and Trademark Office (USPTO) shows that on July 29, 2004, Latino Trader, Inc. applied for registration of the mark LATINO TRADER associated with magazines featuring classified and display advertising and with websites promoting the goods and services of others. The Complainant filed a Notice of Opposition to this application on March 29, 2006, arguing that the LATINO TRADER mark was “highly similar to Opposer’s family of TRADER marks in sound, appearance, and overall commercial impression” and was likely to cause confusion. On December 11, 2007, the USPTO Trademark Trial and Appeal Board granted the Complainant’s motion for discovery sanctions as “conceded” and “accordingly” sustained the opposition and entered judgment against Latino Trader, Inc. The USPTO database shows the current status of the application as “Abandoned after an inter partes decision by the Trademark Trial and Appeal Board.”

On January 30, 2008, counsel for the Complainant sent a cease-and-desist letter to the attorney who had represented Latino Trader, Inc. in the trademark proceeding. This ultimately resulted in the Respondent contacting the Complainant by telephone on February 20, 2008. According to the Complainant, the Respondent stated that Latino Trader, Inc. was no longer advertising automobiles. In a subsequent telephone conversation, again according to the Complainant, the Respondent said that he would be willing to accept US $50,000 for the Domain Name. He also indicated that the Domain Name no longer resolved to the website headed “LatinoTrader.com” at “www.detodousa.net”. By that time, the Domain Name resolved to a Spanish-language website at “www.merkalink.com”, which facilitates online purchases of products in the United States of America and delivery to addresses in Mexico. The parties did not agree on a resolution of the dispute, and this proceeding followed.

Neither the Domain Name nor <detodousa.net> currently resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is confusingly similar to what it terms its TRADER family of marks, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent was not making a bona fide commercial use of the Domain Name because it knowingly registered a confusingly similar Domain Name and imitated the Complainant’s business model, selling substantially identical products and services in print publications and online.

The Complainant points out that both the Complainant and the Respondent are located in the Atlanta, Georgia metropolitan area and asserts that the Respondent “knew or should have known” of the Complainant’s “famous TRADER Family of Marks”. The Complainant finds evidence of bad faith in the Respondent’s purported attempt to mislead consumers, in the Respondent’s unsolicited offer to sell the Domain Name to the Complainant for US $50,000, and in the Respondent’s move to change the content of the website associated with the Domain Name following the Complainant’s cease-and-desist letter.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Identical or Confusingly Similar

The Complainant unquestionably has rights in the registered AUTO TRADER and AUTOTRADER.COM marks, as well as in numerous other marks adding generic or descriptive English words to the generic word “trader”. These are not identical to the Domain Name, but they share the word “trader” as a component.

The Complainant cites Morgan Stanley v. Dov Loker, NAF Claim No. FA0584859 for the common proposition that the addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of a disputed domain name. In such cases, however, the registered mark is typically much more distinctive -- <morganstanleyjewelry.com>, for example, in the case cited by the Complainant. Here, the Complainant’s marks consist of a generic word added to other generic or descriptive words, which is less likely to produce a “confusing” similarity.

The similarity in this instance is limited to the generic word “trader”. “Latino” is not similar to any of the words found in the Complainant’s various “TRADER” marks. The Complainant’s marks generally describe the nature of the products advertised (cars, trucks, etc.). The Domain Name describes an intended demographic market (Hispanic), unlike any of the Complainant’s marks.

The test of confusing similarity under the first UDRP element is an objective comparison between the Domain Name and the Complainant’s trademark, in appearance, sound, meaning, and overall impression to at least a part of the Internet public. See, e.g., Hertz System, Inc. v. Jeff Park, WIPO Case No. D2007-1120 (and cases cited therein); Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231. For purposes of this element of the Complaint, the contents of the Respondent’s website are immaterial; the concern is solely whether the Domain Name itself is confusingly similar to the Complainant’s marks.

The appearance, sound, and meaning of the Domain Name and the Complainant’s marks are dissimilar except for the common word “trader”. The Complainant asserts that its “TRADER Family of Marks” is famous, although the record contains little evidence that any of the marks other than AUTO TRADER and AUTOTRADER.COM are well-known to large numbers of people. Still, it must be considered whether some part of the Internet public would find the Domain Name confusingly similar to the Complainant’s marks in overall impression.

“Trader” is itself a common, dictionary word in English denoting “one that trades”, i.e., engages in “buying and selling for a profit”. See American Heritage Dictionary of the English Language (4^th ed. 2000), entries for “trader” and “trade”. An online search engine query produces numerous examples of websites, apparently not associated with the Complainant, using domain names combining the word “trader” with a descriptive word or name, such as <traders.com>, <thevehicletrader.com>, <leasetrader.com>, <cartrucktrader.com>, <cycletrader.com>, <boattrader.com>, <machinerytrader.com>,<traderonline.com>, <traderjoes.com>, <traderdaily.com>, <elitetrader.com>, <eqtraders.com>, <tradersvillage.com>, <thetradersden.org>, <titletrader.com>, and <musictrader.com>. The website associated with <traderonline.com> also advertises “photo advertising” magazines or other periodicals using the word “trader” in the title, many of them having to do with vehicles. These include RV Trader, Cycle Trader, Commercial Truck Trader, Equipment Trader, Boat Trader, and Aero Trader.

Furthermore, given the abundance of descriptive domain names and commercial periodicals incorporating the common word “trader”, it is hardly self-evident that even a portion of the Internet public – users already familiar with the Complainant’s website or publications – would assume that the Domain Name was affiliated with the Complainant.

The Complainant argues that the judgment of the USPTO Trademark Trial and Appeal Board on the application for registration of a LATINO TRADER mark supports the Complainant’s contention that LATINO TRADER is confusingly similar to “the TRADER Family of Marks”. There is no evidence in the record, however, that USPTO recognized a “TRADER Family of Marks” or ruled on the merits of the Complainant’s Opposition. Rather, the USPTO ruling appears to be in the nature of a default judgment against an applicant that failed to contest the Complainant’s motion for discovery sanctions, and the application is officially characterized as “abandoned”.

The Panel finds that the Complainant has not established that the Domain Name <latinotrader.com> is confusingly similar to AUTO TRADER or other marks owned by the Complainant.

As the Complainant has not established the first element of the Complaint, it is unnecessary to consider the Complainant’s arguments under the second and third elements.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Dated: May 23, 2008