DealerMiles
LLC v. Automobile Buyers Consultants
Claim
Number: FA0207000114760
Complainant
is DealerMiles LLC, Denver, CO (“Complainant”). Respondent is Automobile Buyers
Consultants, Oak Brook, IL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dealermile.com>, registered with IHoldings.com,
Inc. d/b/a Dotregistrar.com.
PANEL
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.
William
H. Andrews as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 2, 2002; the Forum received a hard copy of the Complaint
on July 3, 2002.
On
July 8, 2002, IHoldings.com, Inc d/b/a Dotregistrar.com confirmed by e-mail to
the Forum that the domain name <dealermile.com> is registered with
IHoldings.com, Inc d/b/a Dotregistrar.com and that Respondent is the current
registrant of the name. IHoldings.com,
Inc d/b/a Dotregistrar.com has verified that Respondent is bound by the
IHoldings.com, Inc d/b/a Dotregistrar.com 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
July 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 5,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent. A timely
Response was submitted by Respondent and Complainant subsequently submitted a
timely additional Response on August 10.
On
August 22, 2002, the Forum appointed
William H. Andrews as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
Respondent
requests that the relief sought by Complainant be denied, and that the Panel
enter a finding that Complainant has engaged in Reverse Domain Name Hijacking.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent’s registration and use of the domain name
violates
ICANN Policy par. 4 (a). Specifically,
Complainant alleges that the domain name: 1) is identical or confusingly
similar to a trademark or service mark in which the Complainant has
rights; 2) that Respondent should be
considered as having no rights or legitimate interests with respect to the
domain name that is the subject of the complaint; and 3) that the name was registered and is being used in bad faith.
B.
Respondent
Respondent
makes no argument that the domain name it has registered is not confusingly
similar to the domain name of Complainant.
Instead, Respondent contends, that Complainant has no rights, either
through registration of a mark or by common law to the term “dealermile” or
“dealermiles”, and, as a threshold determination, the Panel need look no
further. Respondent further contends
that even if Complainant has established rights to the term, it still has
failed to prove the elements necessary to obtain the relief it now seeks under
the Policy. Specifically, Respondent
argues that it has legitimate rights to the domain name <dealermile.com>
and that such name was not registered nor is it currently being used in bad
faith. Finally, Respondent argues that
Complainant’s filing of a Complaint in this matter constitutes Reverse Domain
Name Hijacking due to Complainant’s lack of evidence to support its allegations. Accordingly, Respondent requests that the
Panel deny the relief sought by Complainant and to enter a finding of Reverse
Domain Hijacking against Complainant.
FINDINGS
This Complaint is based on the mark
DEALERMILES. DealerMiles is the only company
in the country that gives car dealers the ability to award frequent flyer
miles, on a choice of major airlines, to their customers and employees in
voucher form. Evidence submitted by
Complainant shows that the domain name, <dealermiles.com> was purchased
by the company’s CEO on February 9, 2001.
The company registered with the Colorado Secretary of State on March 12,
2001 and first used the mark in commerce on May 15, 2001. Complainant applied for a service mark to
the US Patent and Trademark Office on January 23, 2002. Every public usage of the mark or logo
prior to the application with the USPTO has been accompanied by the “SM”
service mark.
Respondent registered the <dealermile.com>domain
name on January 18, 2002.
DISCUSSION
Paragraph
15(a) of 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; and
(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 under Policy Par. 4(a)(I):
Respondent
contends that Complainant has submitted no evidence to support a finding that
it has legitimate rights in the DEALERMILES mark. As support, Respondent argues that Complainant has no registered
trademark and has only an application pending.
The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the Complainant has rights’ means that ownership of a
registered mark is not required-unregistered or common law trademark or service
mark rights will suffice” to support a domain name Complaint under the policy. See
McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see
also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the Complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist. Rights in the mark can be established by pending trademark
applications).
Respondent
also alleges that Complainant has established no common law right to the
mark. The Panel concludes, however,
that sufficient evidence has been designated by Complainant to establish common
law rights in the mark. Complainant
purchased the <dealermiles.com> domain name on February 9, 2001, the
domain was established in April, 2001, Complainant registered Dealermiles, LLC
with the Colorado Secretary of State on March 12, 2001 and first used the mark
in commerce in May, 2001. Complainant
continues to operate its business under the Dealermile name. The ‘SM’ service
mark is denoted on Complainant’s letterhead and in its logo and has been since
before Respondent registered the domain name <dealermile.com>. This designation put the public on notice
of Complainant’s claim to the mark even before its application to the
USPTO. The designated evidence
indicates that Respondent himself was actually aware of Dealermiles as shown,
in part, by his allegation that he registered the domain name <dealermile.com>
in an attempt to forge a relationship with the Complainant.
Respondent
argues that even if Complainant had an established mark, it still has no
protectible interest under the Policy because “dealer” and “mile” are generic
words that are non-descriptive of Complainant’s business. Standing alone the words may be
generic. As Complainant notes, however,
the conjunctive term “dealermiles” is unique.
Since Complainant was doing business under the name “Dealermiles”, has
used the DEALERMILES mark and logo with the ‘SM’ mark in commerce and
correspondence, and has used the term at events such as the National Automobile
Dealer’s Association Convention, among other things, it has established rights
in the mark.
Finding
that Complainant has established rights in the DEALERMILES mark, the Panel next
must decide whether Respondent’s registered domain name is confusingly similar
to Complainant’s mark. Respondent has
made no argument as to whether the domain names at issue are confusingly similar. Precedent has consistently held that the
elimination of one letter, particularly ‘s’, which is a common variation, does
not overcome a confusingly similar claim under Policy ¶ 4(a)(i). See Nat’l
Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to Complainant’s “National Geographic” mark); see also
Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5,
2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL
STUDIOS STORE mark did not change the overall impression of the mark and thus
made the disputed domain name confusingly similar to it); see also Blue
Cross & Blue Shield Ass’n v. InterActive Communications, Inc.,
D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds
the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to
cause a likelihood of confusion among the users of Complainant’s services and
those who were to view a web site provided by Respondent accessed through the
contested domain name). Accordingly,
the Panel concludes that the domain name registered by Respondent is
confusingly similar to Complainant’s mark.
Rights
or Legitimate Interests
There
are several factors that the Panel may consider in determining whether
Respondent has rights or legitimate interests in using the domain name despite
its similarity to Complainant’s mark.
Among those factors are:
I. Whether, before any notice to
Respondent of the dispute, Respondent’s use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name is in
connection with a bona-fide offering of goods or services; or
II. Whether Respondent has been commonly
known by the domain name, even if Respondent has not acquired trademark or
service mark rights; or
III. Whether Respondent is making a
legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.
Respondent
contends it has rights or legitimate interests in using the domain name based
on the first two grounds set forth above.
Complainant has proffered evidence showing that Respondent’s alleged
business, Automobile Buyer’s Consultants, is not registered with the Illinois
Secretary of State, which is Respondent’s place of domicile. Moreover, Complainant notes that a search
for the term “dealermile” failed to yield any results. There is no indication whatsoever that
Respondent is commonly known by the dealermile name or that Respondent used the
domain name for a legitimate purpose before notice of a dispute. To the contrary, the designated evidence
shows only that the <dealermile.com> website established by
Respondent links to another domain name, <dealerprofit.com>. This suggests that Respondent attempted to
divert Internet users to a different website having nothing to do with
DEALERMILE but using the Complainant’s mark and insinuating that there may be
some relationship between the parties.
Such does not constitute a bona fide offering of goods or services in
connection with the domain name. See
Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum
Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to
confuse and divert Internet traffic is not a legitimate use of the domain
name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110,
114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in
selecting the domain names was to cause confusion with Complainant's website
and marks, it's use of the names was not in connection with the offering of
goods or services or any other fair use); see also MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to profit using
Complainant’s mark by redirecting Internet traffic to its own website).
Registration
and Use in Bad Faith
The
Panel may consider a number of factors in reaching a determination on the
question of bad faith including, but not limited to, those factors enunciated
by Paragraph 4(b) of the ICANN Policy.
As Respondent indicates, the Complainant has the burden of showing that
Respondent acted in bad faith in both the registration and use of the domain
name.
The
Panel finds that Respondent acted in bad faith in its registration and use of
the domain name. The evidence suggests
that Respondent has no affiliation with Complainant and has never been commonly
known by the DEALERMILE mark.
Accordingly, no legitimate purpose is evident from Respondent’s usage of
the mark. The <dealermile.com>
website links to the <dealerprofit.com> website of Respondent which makes
no reference to ‘dealermile’. Moreover,
Respondent’s website, <dealerprofit.com> seeks to attract car dealers and
provide services to them. Car dealers also comprise Complainant’s
clientele. The conclusion is
inescapable that Respondent was aware of Complainant’s business prior to its
registration of the site and used the site solely to re-route users to a separate site. Accordingly, the Panel finds that Respondent has registered the
site to attract internet users searching for Complainant’s website to
Respondent’s <dealerprofit.com> site for Respondent’s monetary benefit. See Am. Online, Inc. v. Tencent Comm.
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where
Respondent registered and used an infringing domain name to attract users to a
website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
Complainant’s
submission indicates that Respondent had knowledge of Complainant’s mark before
it registered the similar domain name in January, 2002. Complainant registered its name and posted
information about its company in a “virtual trade show” sponsored by the
National Automobile Dealers Association (NADA) prior to its convention at the
end of January, 2002. This information
was accessible to the public as part of the NADA website and was advertised to
potential attendees. Respondent later
attended the NADA convention, the largest of its type for the country’s car
dealers, and spoke with Complainant about selling the <dealermile.com>
domain name after he had registered it in January, 2002. Respondent registered the domain name at
issue after DealerMiles was listed in the virtual trade show and only eight
days before the convention.
Respondent’s
apparent prior knowledge of Complainant’s mark supports a finding of bad faith.
See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
Other evidence also supports a finding of bad faith. Complainant provided affidavits showing that
Respondent contacted Complainants’ employees in order to sell his rights in
dealermile.com to Complainant and there was additional evidence that Respondent
misrepresented his identity at the convention and at the time he registered the
dealermile name. The timing of
Respondent’s registration, so close to the time of the convention, seems to
support Complainant’s version of events regarding a prospective sale of the
domain name. Additionally, the case of Toyota
Motor Sales USA v. Rafi Hamid indicates that Respondent has engaged in bad
faith appropriation of domain names in the past, which factor can also be
pertinent to the determination of bad faith under the Policy, where a party has
registered an identical or similar domain name of another. Therefore, based on
the totality of circumstances, the Panel finds that Respondent acted in bad
faith in its registration and use of the domain name.
DECISION
For the foregoing reasons,
the Panel finds that the domain name used by the Respondent is confusingly
similar to the mark in which Complainant has rights; that Respondent has no
rights or legitimate interests in respect to the domain name; and that
registration of the domain name by Respondent was done in bad faith. Accordingly, the relief sought by
Complainant shall be GRANTED and the domain name <dealermile.com>
shall be TRANSFERRED to Complainant.
Because the Panel finds for Complainant, Respondent’s claim that
Complainant has engaged in Reverse Domain Name Hijacking is hereby
DENIED.
William H. Andrews, Panelist
Dated: September 5, 2002
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