Automall.com, LLC v. Ross LeBel
Claim Number: FA0204000110794
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.
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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