Chrome Systems Corporation fka Chrome Data Corporation v Premiere Media Group dba Dealer Select
Claim Number: FA0202000104591
Complainant is Chrome Systems Corporation fka Chrome Data Corporation, Portland, OR (“Complainant”) represented by Stephanie M. Burns. Respondent is Premiere Media Group dba Dealer Select, League City, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chromedata.net>, <chromedata.org>, <webcarbook.net>, and <webcarbook.org>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 12, 2002; the Forum received a hard copy of the Complaint on February 15, 2002.
On February 14, 2002, Network Solutions confirmed by e-mail to the Forum that the domain names <chromedata.net>, <chromedata.org>, <webcarbook.net>, and <webcarbook.org> are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was not initially received from Respondent; however, upon Respondent’s request for extension of time, Respondent was given additional time to file a Response. Respondent then timely filed a Response. The record was determined to be complete on March 27, 2002.
On March 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant. Respondent requests that Complainant’s domain name <webcarbook.com> be transferred to Respondent.
Chrome requests that the Panel order that the domain name registrations for <chromedata.org>, <chromedata.net>, <webcarbook.org> and <webcarbook.net> be transferred to Chrome on two independent grounds: (1) Respondent’s continued use of the domain names is likely to cause confusion, mistake or deception as to an affiliation, connection, or association of Respondent with Chrome in violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)); and, (2) Respondent registered the Domain Names in bad faith in violation of The Anticyberpiracy Act as codified in Section 43(d) of the Lanham Act (15 U.S.C. § 1125(d)).
Respondent raises numerous challenges to the ICANN process that are beyond the scope of this proceeding and, therefore will not be considered. Respondent makes numerous factual assertions, the resolution of such are unnecessary to a determination of this matter. Relevant, however, is Respondent’s challenge to the right of Complainant to exclusive use of the marks “PC Carbook”, “Chrome Carbook”, and “Chrome”.
C. Additional Submissions
The parties have submitted additional submissions that contribute little to their respective positions.
Complainant is Chrome Systems Corporation, fka Chrome Data Corporation (“Chrome”). Complainant’s Second Amended Complaint is based on Chrome’s federal registrations and prior use of the marks “PC Carbook”, “Chrome Carbook” and “Chrome” in commerce, and Chrome’s prior use of the marks “Chrome Data” and “Web Carbook” in commerce.
Chrome was originally founded as an Oregon corporation in 1986. Since 1989, Chrome used “Chrome Data” as its corporate name and in connection with various automobile industry-related goods and services until it re-incorporated in Delaware in 2001. Chrome develops, owns and licenses proprietary PC and web-based computer software programs used for configuring, pricing, tracking the availability of, and determining loan and lease payments for new and used automobiles. Chrome licenses this technology, along with vehicle pricing and configuration data, to automobile dealers, financial and lending institutions, internet web portals, and other businesses and individuals, all of whom are able to offer their services to consumers via the Internet through the use of Chrome’s technology and data.
Chrome owns federal registration number 2,459,440 for the mark “Chrome” for use in connection with “providing temporary use of on-line non-downloadable interactive software accessed via a global computer network for use in configuring, receiving, and sending requests for vehicle quotes and quotes for automobiles, ordering, pricing, and purchasing of vehicles.” The U.S. Patent and Trademark Office (“PTO”) registered the mark on June 19, 2001. Chrome has used the mark “Chrome” in commerce since 1989. Further, it has used the mark in connection with its web-based services, as described in its federal registration for the mark, since at least November 9, 1998.
Chrome owns federal registration number 1,617,404 for the mark “PC Carbook” for use in connection with “computer programs containing information about automobiles.” The PTO registered the mark on October 16, 1990 and issued a renewal on March 17, 2001. Further, on March 17, 2001, Chrome’s federal registration of the mark “PC Carbook” became incontestable under Section 15 of the Lanham Act (see 15 U.S.C. § 1065). Chrome has used the mark “PC Carbook” in connection with its vehicle configuration software program since at least October 15, 1986. Chrome also owns application serial number 76/148,418 for the mark “PC Carbook” in word form. The PTO approved the mark for publication on December 4, 2001.
In 1998, Chrome launched a web-based version of its vehicle configurator product under the mark “Web Carbook.” Chrome subsequently adopted the mark “Chrome Carbook” for use in connection with this product. On October 30, 2001, the PTO issued federal registration number 2,503,037 to Chrome for the mark “Chrome Carbook” for use in connection with “providing temporary use of on-line non-downloadable interactive software accessed via a global computer network for use in configuring, ordering, pricing, and purchasing of vehicles.” Chrome has used the mark Chrome Carbook in connection with its web-based vehicle configurator since at least July 25, 2000.
Chrome has pioneered technology behind electronic vehicle configuration. For over 15 years, Chrome has been engaged in the business of providing new and used vehicle pricing data, desktop configuration software, and on-line services used to price, compare, locate, calculate loan and lease payments for, purchase, and sell automotive vehicles over the Internet. Since its inception, Chrome has collected, analyzed, and enhanced “raw” automotive data from all manufacturers. With more than 12,000 clients, Chrome provides configuration data, software and professional services to produce complete enterprise solutions for all segments of the retail automotive industry. Chrome provides solutions to automotive manufacturers, fleet companies, dealers, financial institutions and lenders, and Internet portal sites. Such customers make their products and services available to consumers over the Internet through the use of Chrome’s technology and automotive data. Chrome serves 15 of the 17 largest fleet leasing companies. Chrome currently provides the on-line vehicle configuration and ordering system for all GM dealers in North America. Chrome has built considerable goodwill and brand name recognition in its products and services.
Not only are Chrome’s products widely used and widely known in the automotive industry, but they have a solid reputation for: (1) data accuracy (which results in pricing accuracy); and (2) configuration and order logic accuracy (which enables users to configure vehicles that are actually orderable). For the past two years, Chrome was rated “the automotive industry’s most accurate and orderable provider of vehicle specification and pricing data” by a study conducted by an independent marketing research firm, CNW Marketing/Research (“CNW”). In 2000, CNW ranked Chrome “first in data accuracy with an average pricing accuracy of 99.64%” and confirmed that Chrome Carbook “delivers the most accurate automotive data on the internet”. In 2001, CNW concluded that Chrome “continues to be the leading provider of the most accurate vehicle pricing information, with 100% orderable configuration.”
Chrome uses its mark “PC Carbook” in connection with a PC-based software program that allows configuration of all makes (foreign and domestic) and models (new and used) sold in the U.S. down to the trim and option level. In 1998, Chrome launched its next generation product, a web-based configurator, under the mark “Web Carbook.” Chrome’s web-based configurator enables dealers, Internet portals, financial institutions and lenders, and insurance and warranty companies to provide visitors to their websites with a tool to research, price, configure, compare, calculate loan and lease payments for, and request a quote for new and used cars online. The web-based configurator was designed to enable consumers to quickly and easily configure and obtain an accurate price quote for any automobile sold in the United States that a manufacturer could actually build. Chrome subsequently commenced use of the mark “Chrome Carbook” in connection with its web-based configurator in commerce in June of 2000, and a federal registration for the mark issued on October 30, 2001.
Chrome registered the domain names <pccarbook.com>, <chromedata.com>, and <webcarbook.com> on March 12, 1997, May 6, 1997, and March 13, 1998, respectively. Respondent registered <pccarbook.org>, <pccarbook.net>, <chromedata.org>, <chromedata.net>, <webcarbook.org> and <webcarbook.net> on March 20, 2001.
The services available through Respondent’s website, obtained via the disputed domain names, are similar to Chrome’s automotive data and vehicle configurator.
On November 13, 2001, Chrome sent a cease and desist letter to Respondent demanding that respondent transfer the following six domain names to Chrome: <pccarbook.net> and <pccarbook.org>, <chromedata.net> and <chromedata.org>, and <webcarbook.net> and <webcarbook.org>. Respondent had been using all of these domain names to direct web traffic to the web site operations for a business known as Dealer Select and <123car.com>. The Dealer Select website allowed consumers to research, price-compare, and obtain a quote for a vehicle over the Internet. In response to Chrome’s demand letter, Respondent transferred the domain names <pccarbook.net> and <pccarbook.org> to Chrome on November 27, 2001. Transfer was completed with Verisign, Inc. on December 3, 2001. However, Respondent did not transfer the <webcarbook.net> and <webcarbook.org> or the <chromedata.net> and <chromedata.org> to Chrome.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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.
Identical and/or Confusingly Similar
Complainant contends that <chromedata.net> and <chromedata.org> are confusingly similar to Complainant’s federally registered mark “Chrome.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term). Although the domain names <chromedata.net> and <chromedata.org> contain Complainant’s registered “Chrome” mark, Complainant does not have exclusive rights to “chrome data.” See Donald J. Trump and Trump Hotel & Casino Resorts, Inc. v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”). As Complainant has failed to meet the first Policy element as to the domain names <chromedata.net> and <chromedata.org>, discussion of the second and third elements is unnecessary in respect to these domain names.
The Panel finds that the disputed domain names <webcarbook.net>, and <webcarbook.org> are confusingly similar to Complainant’s registered trademark PC Carbook. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). The domain names <webcarbook.net> and <webcarbook.org> incorporate the term “carbook” registered by Chrome as part of its PC Carbook trademark registration. The fact that the term “web” precedes the term “carbook” is irrelevant, as that term is descriptive.
Rights or Legitimate Interests
Respondent uses the confusingly similar domain names in connection with a website that offers services that are similar to Complainant’s services. Such use is not a demonstration of a bona fide offering of goods or services in connection with the disputed domain names pursuant to Policy ¶ (c)(i). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
Respondent’s use of the domain names, <webcarbook.net>, or <webcarbook.org> which are confusingly similar to Complainant’s mark, to divert users to a website that offers competing goods and services is not a legitimate noncommercial or fair use of the disputed domain names and thus, Respondent fails to satisfy Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Respondent is not commonly known as <webcarbook.net>, or <webcarbook.org> and therefore cannot satisfy Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name).
Registration and Use in Bad Faith
Since Respondent uses confusingly similar domain names to divert Internet users to a website that offers goods and services similar to Complainant’s business, Respondent has registered and used the disputed domain names in bad faith. See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); See also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
Respondent requests that Complainant’s domain name <webcarbook.com> be transferred to Respondent. Respondent’s request exceeds the scope of this proceeding and is denied.
Based upon the above findings and conclusions, the relief requested by Complainant pursuant to Paragraph 4.(i) of the Policy is Granted as to the domain names <webcarbook.net> and <webcarbook.org> and Respondent shall be required to transfer to Complainant these domain names. The relief requested by Complainant is Denied as to the domain names <chromedata.net> and <chromedata.org> and Respondent shall not be required to transfer to Complainant these domain names.
Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 10, 2002
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