Automall.com, LLC v. Ross LeBel
Claim Number: FA0204000110794
PARTIES
Complainant
is Automall.com, LLC, Salt Lake
City, UT (“Complainant”) represented by Scott
M. Hervey, of Weintraub, Genshlea,
Chediak, Sproul. Respondent is Ross LeBel, Blaine, WA (“Respondent”)
represented by Stephen L. Anderson, of Anderson & Shippey.
The
domain name at issue is <automall.biz>,
registered with Tucows, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 23, 2002; the Forum
received a hard copy of the Complaint on April 24, 2002.
On
April 26, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 16,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 20, 2002.
Respondent’s
Additional Submission was received after the established deadline, therefore
the Forum does not consider this Additional Submission to be in compliance with
STOP Rule 7.
On June 4, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
as the single Panelist.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations:
The
<automall.biz> domain name
registered by Respondent is identical to Complainant’s automall.com
mark. Complainant urges that Respondent has no rights or legitimate interest in
Complainant’s mark that is contained in its entirety in the <automall.biz>
domain name. Complainant further urges that Respondent registered the <automall.biz>
domain name in bad faith.
B. Respondent notes the following in
response:
Respondent
urges that Complainant does not have exclusive rights to the term automall. Respondent urges that Respondent has rights
through Respondent’s intent to provide a bona fide offering of goods and
services in the area described by the domain name and without intent to
infringe on any rights owned by Complainant.
Further, Respondent claims no intent to disrupt Complainant’s business
or attract for commercial gain Internet users seeking Complainant’s site.
Complainant used its mark in operating a website at
<automall.com> featuring information on new and used cars and advertising
services for others. Complainant’s website allows users to search for new or
used vehicles nationwide, obtain auto insurance quotes, obtain financing
information, research manufacturer invoice pricing on new vehicles, obtain
recall notices and access other consumer resources.
Complainant’s predecessor created <automall.com>
in 1995 and Complainant as successor in interest has operated the site since
1998.
Approximately
500,000 unique users access the site annually and the estimated use for 2001
was in excess of one million users.
While
some evidence suggests that Complainant abandoned efforts to obtain legal
rights through the United States Patent and Trademark office, Complainant has
common law rights to the <automall.com> mark at issue in this proceeding.
Respondent
registered CyberVision-Network.com January 20, 1996, which then, in turn,
registered <automall.biz> on March 27, 2002. Respondent has registered numerous domain
names using Cyber Vision Network.
Respondent urges that it has an intended bona fide
offering that Respondent described as: “…a commercial website for the
automotive industry, namely for new and used auto dealers, auto insurance
brokers and automalls with[in the] United States and Canada.”
Respondent
states that Respondent registered <automall.biz> “without the
Complainant in mind;” however, Respondent submits a Better-Whois.com notice
that states: “There are now alternatives to .COM names. Check availability for…automall.biz…”,
which, in turn, identified the Registrant of <AUTOMALL.COM> as this
Complainant.
Respondent
correctly notes that numerous domain names contain a form of automall but
Respondent’s submission shows that those usages are in conjunction with other
words or indicators.
Paragraph 15(a) of the STOP 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 STOP Policy requires that Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name is identical to a
trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established in this proceeding that it has common law rights to the automall.com
mark through continuous, consistent and widespread use since 1995 that has
attracted a considerable following, all of which occurred seven years prior to
Respondent’s 2002 registration of the domain name in issue. A Complainant may establish rights in its
mark at common law. See Crazy Creek
Prods., Inc. v. Siemen’s Bus. Servs., FA 102795 (Nat. Arb. Forum Feb. 12,
2002) (finding that the Complainant satisfied STOP Policy ¶ 4(a)(i) by
demonstrating its common law rights in the CRAZY CREEK mark).
Here,
Respondent notes Complainant’s abandonment of attempts to patent its mark with
the U.S. Patent and Trademark Office as evidence that Complainant has no rights
to the mark because it is generic. However, Respondent made no showing that the
U.S.P.T.O. made such a finding. This
Complainant demonstrated provision of goods and services over time and
recognition among Internet users such as would identify those goods and
services to the Complainant. See Vietnam Venture Group v. cosmos consulting
gmbh, FA 102601 (Nat. Arb. Forum Feb. 6, 2002) (dismissing the Complaint
because (1) the Complainant did not hold a registered trademark in VVG, and (2)
the Complainant did not demonstrate sufficiently strong identification of its
mark such that there would be recognition among Internet users that the VVG
mark identified goods or services unique to the Complainant).
The
domain name is identical. The generic
top-level domain (“gTLD”) “.biz” is irrelevant when determining whether a
domain name and mark are identical, just as gTLDs such as “.com” and “.net” are
disregarded in UDRP cases. See
Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA
102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a
disputed domain name is not a factor, and hence to be ignored, when determining
whether the domain name is identical to a mark in which the Complainant has
asserted rights).
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent
may demonstrate its rights or interests by proving:
i.
Respondent
is the owner or beneficiary of a trade or service mark that is identical to the
domain name; or
ii.
Before any
notice to the Respondent of the dispute, its use of or
demonstrable preparations to us, the
domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
been
commonly known by the domain name, even though it has acquired no trademark or
service mark rights.
Respondent’s
submission in this proceeding establishes that Respondent cannot satisfy even
one prong of the three options above.
Owner or
beneficiary of a trade or service mark that is identical to the domain name; or
Respondent has not claimed to have a
trademark and has not made a showing that Respondent is protecting any
trademark. See High Speed Prods. v. Blanco, FA 102951 (Nat. Arb. Forum
Mar. 6, 2002) (noting that, although the result might have been different had
the Complainant’s case been brought under the UDRP, the Respondent’s trademarks
in THRASHER MAGAZINE, registered in Spain, sufficiently demonstrate its rights
and interests under STOP Policy ¶ 4(a)(ii) in the <thrashermagazine.biz>
domain name).
Demonstrable
preparations to use in connection with a bona fide offering of goods or
services; or
Respondent
had notice of Complainant’s domain name. (R. Ex. 8). Respondent’s “unsupported,
self-serving allegations alone are insufficient to establish that [the]
Respondent has rights or legitimate interests in respect to the domain name at
issue.” Twentieth Century Fox Film
Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the
Respondent’s assertion that she registered the domain name
<foxstudios.biz> in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that she
had rights or interests in respect to the domain name at issue).
Respondent
has shown no use of or demonstrable preparations to use the domain name for a
bona fide offering of goods or services.
STOP Policy ¶ 4(c)(ii).
Respondent has not operated a website at a virtually identical domain
name although such use may fulfill the “use of, or demonstrable preparations to
use” test of STOP Policy ¶ 4(c)(ii). See
Am. Airlines Inc. v. Webtoast Internet Servs. Inc., FA 102954 (Nat. Arb.
Forum Feb. 24, 2002) (finding that, where the Respondent continuously operated
a website at <americanway.com> for over five years in connection with the
sale of its video series “The American Way of Training Hunters & Jumpers,”
such activity satisfied the requirements of STOP Policy ¶ 4(c)(ii) in regard to
the identical domain name <americanway.biz>).
And
Respondent’s representations of intent to use the domain name for a commercial
purpose, Respondent’s use of Complainant’s name to carry out the same offerings
as Complainant does at that name do not satisfy the need to show a bona fide
offering of goods or services.
Registration of an infringing domain name in order to opportunistically
trade on the goodwill of the Complainant’s mark does not constitute a bona fide
offering of goods or services. See
William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum
March 21, 2002) (finding the
Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated the Respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii)”); see also Peachtree Software v.
Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding that
Respondent’s intended use of the <peachtree.biz> domain name to provide
information and services related to Complainant’s PEACHTREE product, but
without Complainant’s authorization, would cause customer confusion and was not
a bona fide offering of goods or services).
Respondent
is not commonly known by the domain name and it is not enough that a Respondent
claims to have registered the disputed domain name in anticipation of being
known by the name. Respondent must
provide some proof that it is commonly known by the domain name to establish rights
under STOP Policy ¶ 4(c)(iii). See
Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o
establish rights or legitimate interests in a name or a mark, the Respondent
must do more than state that he considered using it in the past, along
with other names he actually used”) (emphasis in original). Indeed, while the burden is initially placed
on the Complainant to show that a Respondent does not have rights or legitimate
interests in a domain name, after such a showing is made, the burden then
shifts to the Respondent “to explain by valid evidence a course of business
under the name, or at least significant preparation for use of the name prior
to learning of the possibility of a conflict.”
Gene Logic Inc., supra.
The
Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Complainant
urges that Respondent acted in bad faith. STOP Policy ¶ 4(b) provides four
examples of circumstances that, if proven, will satisfy the bad faith
requirement of STOP Policy ¶ 4(a)(iii).
Paragraph 4(b) makes clear that these are not the exclusive determinants
of bad faith. Complainant only need
prove either registration or use of the domain name in bad faith.
Under
STOP, a registrant (Respondent), who registers a domain name for which an IP
Claim was previously filed, is notified of the potential for trademark
infringement before being allowed to proceed with the registration. Registration of a domain name despite such
notice, in appropriate circumstances, could “almost preclude any possibility of
registration in good faith of a domain name . . . .” Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar.
4, 2002) (finding bad faith where Respondent registered the
<genelogic.biz> domain name “with full knowledge that his intended
business use of this domain name was in direct conflict with a registered
trademark of a known competitor in exactly the same field of business”).
Complainant
also may demonstrate Respondent’s bad faith by showing that Respondent
registered the domain name for the purpose of preventing Complainant from
registering domain names that reflect its mark(s). No pattern of such conduct
is required under STOP Policy ¶ 4(b)(ii). Complainant may similarly prove bad
faith by showing the Respondent registered the domain name for the purpose of
preventing Complainant from registering domain names reflecting its mark(s) and
no ‘pattern’ of such conduct is required.
Under STOP Policy ¶ 4(b)(ii) one domain name that infringes on the
trademark of another supports a finding of bad faith. See Peachtree Software v. Scarponi, FA 102781
(Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶
4(b)(ii), noting that it was reasonable to conclude Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge
of Complainant's mark and Respondent's lack of rights or interests in the
mark).
The
same is true for a domain name registered “primarily for the purpose of
disrupting the business of a competitor.”
STOP Policy ¶ 4(b)(iii). Moreover, “competitor” is broadly
interpreted to encompass claims by entities that might not traditionally be
viewed as competing. See Tufts Univ.
v. Creation Research, FA 102787 (Nat. Arb. Forum Jan. 18, 2002) (finding
bad faith under STOP Policy ¶ 4(b)(iii) where Complainant was a university and
Respondent was a research company); see also Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000)
(defining “competitor” under the UDRP as "one who acts in opposition to
another and the context does not imply or demand any restricted meaning such as
commercial or business competitor”).
Additionally,
the relationship between Complainant and Respondent need not be one of direct
competition. See Franpin SA v. Paint Tools S.L.,
D2000-0052 (WIPO May 25, 2000) (finding bad faith under the UDRP where the
Respondent, a company financially linked to the Complainant’s main competitor,
registered and used the domain name in question to disrupt the Complainant’s business);
but c.f. Gorstew Ltd. v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under
UDRP ¶ 4(b)(iii) because Respondent and Complainant were not truly competitors,
but were in fact business partners where Respondent was Complainant’s agent and
was acting in good faith on behalf of Complainant).
Under
STOP Policy ¶ 4(b)(iv) bad faith is established when a Respondent, by using the
domain name, intentionally seeks to attract, for commercial gain, Internet
users to its website or other on-line location, by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the website or location or of a product or
service on the website or location. STOP
Policy ¶ 4(b)(iv).
Further,
bad faith under STOP Policy ¶ 4(b)(iv) may be based on the confusion that will
inevitably arise when the Respondent finally uses the name. See Fluor Corp. v. Song, FA 102757
(Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s
<fluor.biz> domain name was identical to the Complainant’s FLUOR mark,
Internet users would likely believe an affiliation between the Respondent and
Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA
102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name
identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv)
when use of the domain name would likely cause confusion as to the affiliation
between Respondent and Complainant); but c.f. Twentieth Century Fox Film
Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding no
evidence of bad faith registration or use, despite Complainant’s claim that
Respondent’s use of the <foxstudios.biz> domain name would create
“initial interest confusion” for Internet users as well as result in dilution
of Complainant’s famous FOX marks); see also STMicroelectronics, NV
v. Tower Entertainment GdbR, FA 102731 (Nat. Arb. Forum Feb. 11, 2002)
(finding no bad faith despite Complainant’s assertion that “Internet users will
inherently expect Complainant’s website to be hosted at the disputed domain
name”).
Here,
Respondent knowingly registered a domain name that used a mark that had been
used for the same purpose by Complainant for seven years prior to Respondent’s
registration and then Respondent stated an intent to engage in the same
business that the Complainant has engaged in for seven years, attracting
approximately 500,000 people each year to its website. Without some showing
beyond Respondent’s subjective manifestations, the Panel infers a bad faith
intent to disrupt the Complainant’s business operations.
The
Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under
the Start-up Trademark Opposition Policy, the Panel finds that the requested
relief shall be hereby GRANTED.
Accordingly, it is ORDERED that the domain
name <automall.biz> be TRANSFERRED from Respondent
to Complainant and that subsequent challenges under the STOP Policy against
this domain name SHALL NOT be permitted.
Hon. Carolyn Marks Johnson, Panelist
Dated:
June 18, 2002.
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