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.
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.
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.
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.
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.
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.
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.
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.
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
William H. Andrews, Panelist
Dated: September 5, 2002
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